Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg Best regards, Elisa
Two initial questions re Spec 13: 1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless. 1. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBAF97.1657FFF0] From: Elisa Busetto via SubPro-IRT <subpro-irt@icann.org> Sent: Thursday, April 17, 2025 8:27 AM To: subpro-irt@icann.org Subject: [SubPro-IRT] Redline Specs 7 and 13 *EXTERNAL TO GT* Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!EL2Chl3j143-VkVUC4FQcYvTKYCir5HIAAVpUivMXvy13uJBCBNiQUx1EzFj60WaWi5mXuA7kJECo0zNRXituKI$> Best regards, Elisa
Mark, I have to disagree with you here. For #1, the Trademark Clearinghouse grants no rights; it is a repository and a closed one. Of course, ICANN will want to see the accurate and complete copy of the trademark registration. For #2, ICANN does not contract with individuals as ROs, right? Best, Kathy 4/17/2025 1:49 PM, trachtenbergm--- via SubPro-IRT wrote:
Two initial questions re Spec 13:
1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless.
2. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
Greenberg Traurig Logo
*From:*Elisa Busetto via SubPro-IRT <subpro-irt@icann.org> *Sent:* Thursday, April 17, 2025 8:27 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Redline Specs 7 and 13
**EXTERNAL TO GT**
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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For #1, the TMCH validates trademark registration, which is the reason that the Spec 13 RO needs to register with them in the first place. If the TMCH registration is not sufficient to validate a trademark registration from an ICANN perspective, then what purpose does the TMCH serve and why should a Spec 13 RO have to register with them in the first place? For #2, it doesn’t matter who ICANN contracts with. #2 has to do with who it makes sense for a brand owner / spec 13 RO to be able to permit to register domain names in their TLD. If there are individuals like real estate or other brokers who use the trademark in the regular course of their business to signify their affiliation with or certification by the brand owner, then they should be able to register domain names in the .BRAND TLD. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB08D.3A1343E0] From: Kathy Kleiman <Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:04 PM To: subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 Mark, I have to disagree with you here. For #1, the Trademark Clearinghouse grants no rights; it is a repository and a closed one. Of course, ICANN will want to see the accurate and complete copy of the trademark registration. For #2, ICANN does not contract with individuals as ROs, right? Best, Kathy 4/17/2025 1:49 PM, trachtenbergm--- via SubPro-IRT wrote: Two initial questions re Spec 13: 1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless. 1. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB08D.3A1343E0] From: Elisa Busetto via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Thursday, April 17, 2025 8:27 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Redline Specs 7 and 13 *EXTERNAL TO GT* Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!EL2Chl3j143-VkVUC4FQcYvTKYCir5HIAAVpUivMXvy13uJBCBNiQUx1EzFj60WaWi5mXuA7kJECo0zNRXituKI$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_Ewuf_CG1w$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_EwUg8BahA$>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi Mark, With my hat on as former co-chair of the Rights Protection Mechanisms PDP Working Group, I have to share that you anticipate uses of the Trademark Clearinghouse (TMCH) far beyond any envisioned by the RPM WG. It was only set up, and we only reviewed it for, the limited purposes of second-level domain name work of Sunrise and Trademark Claims Notices. There is no authority, mandate or review for using it for approving or mandating a particular version of a trademark that ICANN itself /*must accept*/*, *and in fact, if you are read the RPM WG Final Report closely, you will see that the TMCH is already being used for /gaming /in a variety of ways, including de minimis use of trademarks -- just barely enough to gain entry into the database and then register marks during Sunrise. ICANN, of course, has its own review and processes at the top level, has never delegated them, and has no mandate to do so. Best, Kathy On 4/18/2025 7:10 PM, trachtenbergm@gtlaw.com wrote:
For #1, the TMCH *_validates_* trademark registration, which is the reason that the Spec 13 RO needs to register with them in the first place. If the TMCH registration is not sufficient to validate a trademark registration from an ICANN perspective, then what purpose does the TMCH serve and why should a Spec 13 RO have to register with them in the first place?
For #2, it doesn’t matter who ICANN contracts with. #2 has to do with who it makes sense for a brand owner / spec 13 RO to be able to permit to register domain names in their TLD. If there are individuals like real estate or other brokers who use the trademark in the regular course of their business to signify their affiliation with or certification by the brand owner, then they should be able to register domain names in the .BRAND TLD.
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
Greenberg Traurig Logo
*From:*Kathy Kleiman <Kathy@KathyKleiman.com> *Sent:* Friday, April 18, 2025 6:04 PM *To:* subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> *Subject:* Re: [SubPro-IRT] Re: Redline Specs 7 and 13
Mark,
I have to disagree with you here. For #1, the Trademark Clearinghouse grants no rights; it is a repository and a closed one. Of course, ICANN will want to see the accurate and complete copy of the trademark registration.
For #2, ICANN does not contract with individuals as ROs, right?
Best, Kathy
4/17/2025 1:49 PM, trachtenbergm--- via SubPro-IRT wrote:
Two initial questions re Spec 13:
1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless.
2. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
Greenberg Traurig Logo
*From:*Elisa Busetto via SubPro-IRT <subpro-irt@icann.org> <mailto:subpro-irt@icann.org> *Sent:* Thursday, April 17, 2025 8:27 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Redline Specs 7 and 13
**EXTERNAL TO GT**
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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To unsubscribe send an email tosubpro-irt-leave@icann.org
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By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPx...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
So then why require a Spec 13 applicant to register with the TMCH? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Kathy Kleiman <Kathy@KathyKleiman.com> Sent: Monday, April 21, 2025 5:35 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 Hi Mark, With my hat on as former co-chair of the Rights Protection Mechanisms PDP Working Group, I have to share that you anticipate uses of the Trademark Clearinghouse (TMCH) far beyond any envisioned by the RPM WG. It was only set up, and we only reviewed it for, the limited purposes of second-level domain name work of Sunrise and Trademark Claims Notices. There is no authority, mandate or review for using it for approving or mandating a particular version of a trademark that ICANN itself must accept, and in fact, if you are read the RPM WG Final Report closely, you will see that the TMCH is already being used for gaming in a variety of ways, including de minimis use of trademarks -- just barely enough to gain entry into the database and then register marks during Sunrise. ICANN, of course, has its own review and processes at the top level, has never delegated them, and has no mandate to do so. Best, Kathy On 4/18/2025 7:10 PM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: For #1, the TMCH validates trademark registration, which is the reason that the Spec 13 RO needs to register with them in the first place. If the TMCH registration is not sufficient to validate a trademark registration from an ICANN perspective, then what purpose does the TMCH serve and why should a Spec 13 RO have to register with them in the first place? For #2, it doesn’t matter who ICANN contracts with. #2 has to do with who it makes sense for a brand owner / spec 13 RO to be able to permit to register domain names in their TLD. If there are individuals like real estate or other brokers who use the trademark in the regular course of their business to signify their affiliation with or certification by the brand owner, then they should be able to register domain names in the .BRAND TLD. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:04 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 Mark, I have to disagree with you here. For #1, the Trademark Clearinghouse grants no rights; it is a repository and a closed one. Of course, ICANN will want to see the accurate and complete copy of the trademark registration. For #2, ICANN does not contract with individuals as ROs, right? Best, Kathy 4/17/2025 1:49 PM, trachtenbergm--- via SubPro-IRT wrote: Two initial questions re Spec 13: 1. Section 9.3(i)(a) requires that for a .BRAND, the applicant must have a registered trademark that “is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN.” If the trademark registration is already validated then why does the applicant also have to provide ICANN with an accurate and complete copy of the trademark registration pursuant to Section 9.3(iii)? His seems redundant and to make the registration with the TMCH meaningless. 1. Section 9.5 defines “Trademark Licensee” as “any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator…”. Why should individuals be excluded? I am guessing the concern is to avoid ROs from claiming Spec 13 status and then offering registrations to anyone. But that does not seem to be a valid concern because there is also the requirement that the rademark license “is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD.” There are a number of brands where individual persons might be legitimate trademark licensees and need to use the trademark (and a domain name in the .brand TLD) as par of their regular business. For example, Realtors or individual insurance or other brokers working for a large company. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB2E5.76518330] From: Elisa Busetto via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Thursday, April 17, 2025 8:27 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Redline Specs 7 and 13 *EXTERNAL TO GT* Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!EL2Chl3j143-VkVUC4FQcYvTKYCir5HIAAVpUivMXvy13uJBCBNiQUx1EzFj60WaWi5mXuA7kJECo0zNRXituKI$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_Ewuf_CG1w$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!BfJ1rrU_-Ley3Bzhv1G9PCgBB5ICOlTGL_Nms2sHaEk295sNH93VYVGIbhz6Ybp3GC0i8u5ofHu5_EwUg8BahA$>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [/Alternative/ *Section 9.3(i) */text for String Change .BRAND TLDs/:*//* (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law,of a registered trademark valid under applicable law,and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#_msocom_1>[K2] <#_msocom_2>, in the trademark registration for such registered trademark, which registered trademark:] ------------------------------------------------------------------------ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Because this is a hill I will die on, let me propose a compromise: (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark Thus, if to Jeff's concern, "automobile" is too long or old-fashioned, "auto" would be fair and fine. But allowing GM to broadly propose any other type of gTLD addition, with no guidelines other than "equivalence" opens floodgates and is a far cry from the narrowly-tailored language we adopted in SubPro for goods and service /actually identified in the trademark registration./ / / Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg
Best regards,
Elisa
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Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB071.3B118AC0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote:
Kathy,
I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that *_exactly_* match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
Greenberg Traurig Logo
*From:*Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> *Sent:* Friday, April 18, 2025 11:46 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
**EXTERNAL TO GT**
Hi All,
The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it.
[/Alternative/ *Section 9.3(i) */text for String Change .BRAND TLDs/:*//*
(i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law,of a registered trademark valid under applicable law,and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#_msocom_1> [K1]<#_msocom_1>[K2]<#_msocom_2>, in the trademark registration for such registered trademark, which registered trademark:]
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It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean.
Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro.
Best, Kathy
On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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/ /[K1] <#_msoanchor_1>
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I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB11E.B1676480] From: Kathy Kleiman <Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB11E.B1676480] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!H4jCFJCMiKz4lRaBN_9BG2E325XmgWJaTKAWCkA1i3i2TaXCQLUS4SEswQy8ktEmTZ2nOCzDgbp-j7OLAcLtsg$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!H4jCFJCMiKz4lRaBN_9BG2E325XmgWJaTKAWCkA1i3i2TaXCQLUS4SEswQy8ktEmTZ2nOCzDgbp-j7MfNEj1Gg$>). 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I am with Marc on this one for the reasons Marc states and for which we argued previously. It is such a narrow niche case where a brand is in contention with another and agrees to add a descriptive work as a substitute to avoid contention. I cannot imagine in Kathy’s example how going from “wireless” in the trademark description to “mobile” which is viewed as an equivalent blows everything wide open. And I agree with Marc on his example: The US Trademark Office for whatever reason requires you to use the term “Footwear” instead of “Shoes” or “Sneakers”. Do we really believe Nike using “.nikeshoes” instead of “.nikefootwear” blows everything wide open? I don’t. Take another example. Both Stanley Logistics and Pacific Market International apply for .Stanley. - PMI’s trademark for Stanley states: “Vacuum bottles, mugs and jars for food or beverage; insulated [ and non-insulated ] food jars; flasks; mugs; cups; water bottles sold empty; portable household containers for storing and transporting food or beverages; carrying cases specially adapted for transporting vacuum bottles, mugs and jars, insulated and non-insulated food jars, flasks, mugs, cups, and water bottles sold empty” - Stanley Logistics Trademark states, “Non-Power Operated Hand Tools for Industrial and Professional Tradesman and Consumers” What if they agree that PMI change to “.stanleytumblers” and Stanley Logistics changes to “.stanleytools.” Stanley Logistics is covered because the term “tools” is in the description of the trademark. But PMI without the “equivalent” language would not be able to get “tumblers” because that is NOT in the trademark description. In short, I do not see any issue with this and it is in line with the Board’s desire to avoid contention sets wherever possible. Sincerely, Jeff *From:* trachtenbergm--- via SubPro-IRT <subpro-irt@icann.org> *Sent:* Saturday, April 19, 2025 12:32 PM *To:* Kathy@KathyKleiman.com; subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. *Marc H. Trachtenberg * Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com <trachtenbergm@gtlaw.com> | www.gtlaw.com | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [image: Greenberg Traurig Logo] *From:* Kathy Kleiman <Kathy@KathyKleiman.com> *Sent:* Friday, April 18, 2025 6:13 PM *To:* subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) < trachtenbergm@gtlaw.com> *Subject:* Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that *exactly* match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, *Marc H. Trachtenberg * Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com <trachtenbergm@gtlaw.com> | www.gtlaw.com | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [image: Greenberg Traurig Logo] *From:* Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> <subpro-irt@icann.org> *Sent:* Friday, April 18, 2025 11:46 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent **EXTERNAL TO GT** Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [*Alternative* *Section 9.3(i) **text for String Change .BRAND TLDs*: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#_msocom_1> [K1] <#_msocom_1>[K2] <#_msocom_2>, in the trademark registration for such registered trademark, which registered trademark:] ------------------------------ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org To unsubscribe send an email to subpro-irt-leave@icann.org _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPx...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org To unsubscribe send an email to subpro-irt-leave@icann.org _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPx...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!...>). 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Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. /Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history./ Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote:
I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide.
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
Greenberg Traurig Logo
*From:*Kathy Kleiman <Kathy@KathyKleiman.com> *Sent:* Friday, April 18, 2025 6:13 PM *To:* subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> *Subject:* Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
Hi Marc,
These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG.
Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.)
Best, Kathy
On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote:
Kathy,
I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that *_exactly_* match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h>
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*From:*Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> <mailto:subpro-irt@icann.org> *Sent:* Friday, April 18, 2025 11:46 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
**EXTERNAL TO GT**
Hi All,
The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it.
[/Alternative/ *Section 9.3(i) */text for String Change .BRAND TLDs/:*//*
(i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law,of a registered trademark valid under applicable law,and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#_msocom_1> [K1]<#_msocom_1>[K2]<#_msocom_2>, in the trademark registration for such registered trademark, which registered trademark:]
------------------------------------------------------------------------
It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean.
Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro.
Best, Kathy
On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org" <subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB37F.265254F0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB37F.265254F0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!H4jCFJCMiKz4lRaBN_9BG2E325XmgWJaTKAWCkA1i3i2TaXCQLUS4SEswQy8ktEmTZ2nOCzDgbp-j7OLAcLtsg$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!H4jCFJCMiKz4lRaBN_9BG2E325XmgWJaTKAWCkA1i3i2TaXCQLUS4SEswQy8ktEmTZ2nOCzDgbp-j7MfNEj1Gg$>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). 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Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote:
Dear IRT members,
I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified,or an equivalent substring fromthe trademark registration for such registered trademark”
This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration.
Best wishes,
Lars
*From: *Kathy Kleiman <Kathy@KathyKleiman.com> *Date: *Monday, 21 April 2025 at 02:06 *To: *"subpro-irt@icann.org" <subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org> *Subject: *[Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro
Hi Lars, Jared, and Elisa,
The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording.
/Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history./
Many thanks,
Kathy
On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote:
I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide.
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com] <https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com] <https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...>
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*From:*Kathy Kleiman <Kathy@KathyKleiman.com> <mailto:Kathy@KathyKleiman.com> *Sent:* Friday, April 18, 2025 6:13 PM *To:* subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> <mailto:trachtenbergm@gtlaw.com> *Subject:* Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
Hi Marc,
These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG.
Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.)
Best, Kathy
On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote:
Kathy,
I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that *_exactly_* match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com] <https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com] <https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...>
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*From:*Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> <mailto:subpro-irt@icann.org> *Sent:* Friday, April 18, 2025 11:46 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
**EXTERNAL TO GT**
Hi All,
The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it.
[/Alternative/ *Section 9.3(i) */text for String Change .BRAND TLDs/:*//*
(i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law,of a registered trademark valid under applicable law,and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#_msocom_1> [K1]<#_msocom_1>[K2]<#_msocom_2>, in the trademark registration for such registered trademark, which registered trademark:]
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It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean.
Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro.
Best, Kathy
On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT < subpro-irt@icann.org> wrote:
Hi Lars,
I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved!
==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation.
Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote:
Dear IRT members,
I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark”
This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration.
Best wishes,
Lars
*From: *Kathy Kleiman <Kathy@KathyKleiman.com> <Kathy@KathyKleiman.com> *Date: *Monday, 21 April 2025 at 02:06 *To: *"subpro-irt@icann.org" <subpro-irt@icann.org> <subpro-irt@icann.org> <subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org> <lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org> <jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org> <elisa.busetto@icann.org> *Subject: *[Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro
Hi Lars, Jared, and Elisa,
The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording.
*Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history.*
Many thanks,
Kathy
On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote:
I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide.
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com] <https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com] <https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...>
[image: Greenberg Traurig Logo]
*From:* Kathy Kleiman <Kathy@KathyKleiman.com> <Kathy@KathyKleiman.com> *Sent:* Friday, April 18, 2025 6:13 PM *To:* subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com> *Subject:* Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
Hi Marc,
These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG.
Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.)
Best, Kathy
On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote:
Kathy,
I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that *exactly* match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on.
Best regards,
*Marc H. Trachtenberg * Shareholder
Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020
M +1 773.677.3305 trac@gtlaw.com <trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com] <https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com] <https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...>
[image: Greenberg Traurig Logo]
*From:* Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> <subpro-irt@icann.org> *Sent:* Friday, April 18, 2025 11:46 AM *To:* subpro-irt@icann.org *Subject:* [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
**EXTERNAL TO GT**
Hi All,
The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it.
[*Alternative* *Section 9.3(i) **text for String Change .BRAND TLDs*:
(i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] <#m_26779136413984591__msocom_1> [K1] <#m_26779136413984591__msocom_1> [K2] <#m_26779136413984591__msocom_2>, in the trademark registration for such registered trademark, which registered trademark:] ------------------------------
It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean.
Jeff, I understand what you want,but this language is not acceptable as *it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. *For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro.
Best, Kathy
On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:
Dear IRT members,
The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg <https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmw...>
Best regards,
Elisa
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I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image002.png@01DBB36C.C929EED0] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com>; Lars Hoffmann <lars.hoffmann@icann.org> Cc: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB36C.C810B6A0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB36C.C810B6A0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com" <justine.chew.icann@gmail.com>, "Kathy@kathykleiman.com" <Kathy@kathykleiman.com>, Lars Hoffmann <lars.hoffmann@icann.org> Cc: "subpro-irt@icann.org" <subpro-irt@icann.org> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB3A9.867D38C0] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com>; Lars Hoffmann <lars.hoffmann@icann.org> Cc: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB3A9.867D38C0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB3A9.867D38C0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image001.png@01DBB37E.A77A8F80] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image008.png@01DBB37E.A7650BB0] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB37E.A7650BB0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB37E.A7650BB0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. 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Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB... Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB3C1.2BE157D0] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB3C1.2BE157D0] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image006.png@01DBB3C1.2BE157D0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image006.png@01DBB3C1.2BE157D0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. 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Lars, When did the IRT “sign off” on this? There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image001.png@01DBB387.58D5B900] From: Lars Hoffmann <lars.hoffmann@icann.org> Sent: Tuesday, April 22, 2025 1:00 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A<https://urldefense.com/v3/__https:/docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A__;!!DUT_TFPxUQ!ECFc5yXUHBv1O6bOjrV7QUUm-vmy_OT4W0iV6lizLlwxW_zq7b6vSkmEf3yw55DZ_VFr8STaeKOtYQtaKTHJOBrU4Oo$> Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB387.573A7F90] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image012.png@01DBB387.573A7F90] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image014.png@01DBB387.573A7F90] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image014.png@01DBB387.573A7F90] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. 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Thanks, Mark. I appreciate that. If helpful, and, if I recall correctly, you and others had voiced concerns about the originally proposed language, which had the second bullet below ending with “[…] for Brand/Specification 13 designation.” In response to these concerns, we added the following to the language: “Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.“ On 5 November 2024<https://icann-community.atlassian.net/wiki/x/mw_wBg>, we proposed the shorter language (please see the PPT deck<https://icann-community.atlassian.net/wiki/spaces/SPIR/pages/112201627/2024-...> for the language and of course the recording<https://icann.zoom.us/rec/share/Of9SfOCaRiEHZwxOa9dfplQertVOH0LnUE32wDZOE-6m...>) On 5 February 2025<https://icann-community.atlassian.net/wiki/spaces/SPIR/pages/112202769/2025-...>, we updated the language to accommodate IRT feedback. Best. Lars From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com> Date: Tuesday, 22 April 2025 at 20:06 To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, When did the IRT “sign off” on this? There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!9wbrOE0ogtDp5CE...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB3C6.837E9890] From: Lars Hoffmann <lars.hoffmann@icann.org> Sent: Tuesday, April 22, 2025 1:00 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A<https://urldefense.com/v3/__https:/docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A__;!!DUT_TFPxUQ!ECFc5yXUHBv1O6bOjrV7QUUm-vmy_OT4W0iV6lizLlwxW_zq7b6vSkmEf3yw55DZ_VFr8STaeKOtYQtaKTHJOBrU4Oo$> Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB3C6.837E9890] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image006.png@01DBB3C6.837E9890] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image008.png@01DBB3C6.837E9890] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image008.png@01DBB3C6.837E9890] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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Lars, As an initial matter, for clarity this language means that the .brand applicant can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration in the alternate string? Regardless, I see the language from the PDF from 5 February 2025. But how was it decided that this was final and that words that are equivalent to the identification of goods and services cannot be acceptable? Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> | View GT Biography <https://www.gtlaw.com/en/professionals/t/trachtenberg-marc-h> [Greenberg Traurig Logo] [cid:image001.png@01DBB3CB.AE5E9A10] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 1:39 PM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. I appreciate that. If helpful, and, if I recall correctly, you and others had voiced concerns about the originally proposed language, which had the second bullet below ending with “[…] for Brand/Specification 13 designation.” In response to these concerns, we added the following to the language: “Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.“ On 5 November 2024<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/mw_w...>, we proposed the shorter language (please see the PPT deck<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...> for the language and of course the recording<https://icann.zoom.us/rec/share/Of9SfOCaRiEHZwxOa9dfplQertVOH0LnUE32wDZOE-6m...>) On 5 February 2025<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...>, we updated the language to accommodate IRT feedback. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 20:06 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, When did the IRT “sign off” on this? There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!9wbrOE0ogtDp5CE...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image012.png@01DBB3CB.70355D00] From: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Sent: Tuesday, April 22, 2025 1:00 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A<https://urldefense.com/v3/__https:/docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A__;!!DUT_TFPxUQ!ECFc5yXUHBv1O6bOjrV7QUUm-vmy_OT4W0iV6lizLlwxW_zq7b6vSkmEf3yw55DZ_VFr8STaeKOtYQtaKTHJOBrU4Oo$> Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image014.png@01DBB3CB.70355D00] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image016.png@01DBB3CB.70355D00] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image018.png@01DBB3CB.70355D00] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image018.png@01DBB3CB.70355D00] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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Hi Marc, Thank you for the questions. On the first, yes, the .brand applicants can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration when requesting a string change. I am sorry for being pedantic on the term, but wanted to stress again that the replacement string is a different concept to the .brand string change (see my previous message). On your second questions, as with all topics, we presented the language to the IRT and reviewed it on the 5 February call. As no concerns were raised and it had addressed pervious IRT concerns that (to your point above),.brand applicants be able to supply a different trademark registration, other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration when requesting a string change, we then posted the document for final IRT input and on 14 February for public comment. This aligns with the IRT’s methodology for all topics and documents prior to all four public comment proceedings. As to your question that “words that are equivalent to the identification of goods and services cannot be acceptable”, this is based on the recommendation 20.8 (p.92<https://gnso.icann.org/sites/default/files/file/field-file-attach/final-repo...>) which states: “The Working Group recommends allowing .Brand TLDs to change the applied-for string as a result of a contention set where (a) the change adds descriptive word to the string, (b) the descriptive word is in the description of goods and services of the Trademark Registration [bold added for emphasis], (c) such a change does not create a new contention set or expand an existing contention set, (d) the change triggers a new operational comment period and opportunity for objection and, (e) the new string complies with all New gTLD Program requirements.” Thank you and best wishes, Lars From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com> Date: Wednesday, 23 April 2025 at 04:16 To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, As an initial matter, for clarity this language means that the .brand applicant can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration in the alternate string? Regardless, I see the language from the PDF from 5 February 2025. But how was it decided that this was final and that words that are equivalent to the identification of goods and services cannot be acceptable? Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!8x8V1Xn8iIE9-OB...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB429.5038CC40] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 1:39 PM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. I appreciate that. If helpful, and, if I recall correctly, you and others had voiced concerns about the originally proposed language, which had the second bullet below ending with “[…] for Brand/Specification 13 designation.” In response to these concerns, we added the following to the language: “Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.“ On 5 November 2024<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/mw_w...>, we proposed the shorter language (please see the PPT deck<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...> for the language and of course the recording [icann.zoom.us]<https://urldefense.com/v3/__https:/icann.zoom.us/rec/share/Of9SfOCaRiEHZwxOa...>) On 5 February 2025<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...>, we updated the language to accommodate IRT feedback. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 20:06 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, When did the IRT “sign off” on this? There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!9wbrOE0ogtDp5CE...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB429.5038CC40] From: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Sent: Tuesday, April 22, 2025 1:00 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A<https://urldefense.com/v3/__https:/docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A__;!!DUT_TFPxUQ!ECFc5yXUHBv1O6bOjrV7QUUm-vmy_OT4W0iV6lizLlwxW_zq7b6vSkmEf3yw55DZ_VFr8STaeKOtYQtaKTHJOBrU4Oo$> Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image006.png@01DBB429.5038CC40] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image008.png@01DBB429.5038CC40] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB429.5038CC40] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB429.5038CC40] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. 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Lars, Thanks for the detailed response. Best regards, Marc Trachtenberg Chair, Internet, Domain Name, eCommerce, and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive Chicago,IL 60613 (O) +1.312.456.1020 (M) +1.773.677.3305 Trac@gtlaw.com ________________________________ From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Wednesday, April 23, 2025 1:25:50 AM To: subpro-irt@icann.org <subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Hi Marc, Thank you for the questions. On the first, yes, the .brand applicants can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration when requesting a string change. I am sorry for being pedantic on the term, but wanted to stress again that the replacement string is a different concept to the .brand string change (see my previous message). On your second questions, as with all topics, we presented the language to the IRT and reviewed it on the 5 February call. As no concerns were raised and it had addressed pervious IRT concerns that (to your point above),.brand applicants be able to supply a different trademark registration, other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration when requesting a string change, we then posted the document for final IRT input and on 14 February for public comment. This aligns with the IRT’s methodology for all topics and documents prior to all four public comment proceedings. As to your question that “words that are equivalent to the identification of goods and services cannot be acceptable”, this is based on the recommendation 20.8 (p.92<https://urldefense.com/v3/__https://gnso.icann.org/sites/default/files/file/...>) which states: “The Working Group recommends allowing .Brand TLDs to change the applied-for string as a result of a contention set where (a) the change adds descriptive word to the string, (b) the descriptive word is in the description of goods and services of the Trademark Registration [bold added for emphasis], (c) such a change does not create a new contention set or expand an existing contention set, (d) the change triggers a new operational comment period and opportunity for objection and, (e) the new string complies with all New gTLD Program requirements.” Thank you and best wishes, Lars From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com> Date: Wednesday, 23 April 2025 at 04:16 To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, As an initial matter, for clarity this language means that the .brand applicant can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration in the alternate string? Regardless, I see the language from the PDF from 5 February 2025. But how was it decided that this was final and that words that are equivalent to the identification of goods and services cannot be acceptable? Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!8x8V1Xn8iIE9-OB...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB429.5038CC40] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org> Sent: Tuesday, April 22, 2025 1:39 PM To: subpro-irt@icann.org Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. I appreciate that. If helpful, and, if I recall correctly, you and others had voiced concerns about the originally proposed language, which had the second bullet below ending with “[…] for Brand/Specification 13 designation.” In response to these concerns, we added the following to the language: “Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.“ On 5 November 2024<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/mw_w...>, we proposed the shorter language (please see the PPT deck<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...> for the language and of course the recording [icann.zoom.us]<https://urldefense.com/v3/__https:/icann.zoom.us/rec/share/Of9SfOCaRiEHZwxOa...>) On 5 February 2025<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/spaces...>, we updated the language to accommodate IRT feedback. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 20:06 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Lars, When did the IRT “sign off” on this? There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!9wbrOE0ogtDp5CE...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image004.png@01DBB429.5038CC40] From: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Sent: Tuesday, April 22, 2025 1:00 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks, Mark. The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day. As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside). I hope this covers your question. Very best. Lars Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A<https://urldefense.com/v3/__https:/docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A__;!!DUT_TFPxUQ!ECFc5yXUHBv1O6bOjrV7QUUm-vmy_OT4W0iV6lizLlwxW_zq7b6vSkmEf3yw55DZ_VFr8STaeKOtYQtaKTHJOBrU4Oo$> Brand String Change Request must satisfy the following requirements to be accepted by ICANN: * The change must add one or more words to the applied-for string, subject to the following conditions: * The additional word or words must be added to the original string. * The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant. * No translations of words contained in the Trademark Registration will be accepted. * The new string with the added word or words must not create or expand a contention set. From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 19:04 To: Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>>, "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Thanks Lars. But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!7e40nCeF3tQS73n...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image006.png@01DBB429.5038CC40] From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 10:11 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 My apologies, Marc. And thank you for the follow up! What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context. Best. Lars From: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Date: Tuesday, 22 April 2025 at 16:56 To: "justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>" <justine.chew.icann@gmail.com<mailto:justine.chew.icann@gmail.com>>, "Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>" <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>, Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: "subpro-irt@icann.org<mailto:subpro-irt@icann.org>" <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated. I remember this issue being discussed in SubPro but when was it “officially” decided? Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!_vZEISvQ8HhJw6H...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image008.png@01DBB429.5038CC40] From: Justine Chew via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> Sent: Tuesday, April 22, 2025 9:02 AM To: Kathy Kleiman <Kathy@kathykleiman.com<mailto:Kathy@kathykleiman.com>>; Lars Hoffmann <lars.hoffmann@icann.org<mailto:lars.hoffmann@icann.org>> Cc: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2 Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity. Kind regards, Justine On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org<mailto:subpro-irt@icann.org>> wrote: Hi Lars, I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution 4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved! ==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Best, Kathy On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote: Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org"<mailto:subpro-irt@icann.org> <subpro-irt@icann.org><mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org><mailto:lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org><mailto:jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org><mailto:elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB429.5038CC40] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image010.png@01DBB429.5038CC40] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. 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participants (6)
-
Elisa Busetto -
Jeff Neuman -
Justine Chew -
Kathy Kleiman -
Lars Hoffmann -
trachtenbergm＠gtlaw.com