[Gnso-rpm-trademark] TM Claims Rewrite (sample) by AU WCL

Sun Apr 7 17:45:20 UTC 2019

On the last call, I thought we discussed (with significant approval)
starting with specifications or an outline of what should be in the Notice,
before moving to drafting actual text.  I recall some participants
suggesting that drafting the actual notice was an IRT/implementation task.
I tend to agree with the first point.  However, if we can come up with an
agreed outline (or term sheet or whatever) for the Notice, I'm interested
to see if we can draft the actual notice.  In my experience, it's much
easier to draft from agreed terms/concepts than it is to negotiate the
terms and draft the language simultaneously.

So my suggestion would be to step away from the draft Notice as a drafting
notice, but to use it as an input to the discussion of the potential
contents of Notice 2.0.  Brian's response falls into this category, in my
view, and should largely be viewed as a conceptual comment even if happens
to quote text.

Best regards,

Greg

On Sat, Apr 6, 2019 at 9:34 PM Martin Pablo Silva Valent <
mpsilvavalent at gmail.com> wrote:

> Well, if the option is to start from scratch, I am ok with starting to
> work on this model, unless all chairs prefer to have a blank page. I
> personally feel ok working on top of what seems a well thought text. We can
> change everything, but having a text that allows us to say, we want this
> and we don’t want that would speed up the process a lot.
>
> Martin Silva Valent
>
> mpsilvavalent at gmail.com
>
>
> *Partner | Silva.legal*martin at silva.legal
>
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> On Apr 5, 2019, at 11:57 AM, BECKHAM, Brian <brian.beckham at wipo.int>
> wrote:
>
> Thanks Kathy (and WCL students),
>
> I don’t think it’s going out on any kind of a limb to say that it has been
> clear from the very beginning of our work that a rewrite would be necessary.
>
> Not so much because the WCL students are not members of the WG, it is not
> clear that we should work directly off of their model vs treating it as one
> example to identify possible areas (whether in drafting/substance, or
> graphic/presentation terms) that could benefit from refinement.
>
> For example, and merely one example on a quick skim, I am not sure we
> would want to say:  “however if your domain name is used in a similar way
> to one of the marks listed and there is a significant overlap you may not
> be able to register your domain name.”
>
> This seems to go against the FCFS “represent and warrant” model by
> suggesting the possibility of a preemptive registration block.  This may
> not be the drafting intent, but at least it raises a question as to whether
> this language mirrors the current TMCH-notice-registration path.
>
> That said, thanks for mentioning this as it could be useful to identify
> areas of the current Claims Notice that could benefit from a rewrite.
>
> Brian
>
> *From:* Gnso-rpm-trademark <gnso-rpm-trademark-bounces at icann.org> *On
> Behalf Of *Kathy Kleiman
> *Sent:* Friday, April 5, 2019 5:18 PM
> *To:* gnso-rpm-trademark at icann.org
> *Subject:* [Gnso-rpm-trademark] TM Claims Rewrite (sample) by AU WCL
>
>
> Hi All,
>
> As a member of the Subteam (not as a co-chair), and in furtherance of our
> excellent discussion of TM Claims Notice revisions, I know we are striving
> to provide some clear guidelines for the next version of the Notice. To
> that end, let me share a sample. I understand this is a TM Claims Notice
> rewrite by advanced trademark students at American University Washington
> College of Law (WCL). My understanding is that these students were also
> part of the WCL IP clinic and involved in providing trademark counseling
> and other IP services to entrepreneurs and small businesses.
>
> It is an interesting rewrite and may be useful to our thinking about
> changes, approaches, etc. (I note it was timely submitted to our
> "additional data".) Below and attached (attached is the original
> formatting).
>
> Best, Kathy
>
> ___________________________________________________________________________________________
>
> *TRADEMARK NOTICE *
>
> Thank you for registering a new domain name! Before your domain name is
> finalized, please consider all of the following information below:
>
>
> *Why am I receiving this notice?*You are receiving this notice because
> your domain name application matches at least one trademark record
> submitted to the Trademark Clearinghouse.
>
>
> *What is a trademark and what is the Trademark Clearinghouse?*A trademark
> includes any word, name, symbol, device, or any combination that has been
> protected by the owner to identify their brand, business, goods, and/or
> services.
>
> The Trademark Clearinghouse system is a database of trademarks that have
> been registered, are protected by statute, or court validated in any
> country around the world. To get into the database rights holders must
> apply by sending their registration information to the Trademark
> Clearinghouse, which is currently administered and maintained by Deloitte.
> Information is authenticated from rights holders and once approved it is
> put into the database and provided to registries (Godaddy.com
> <http://godaddy.com/>) and registrars (.book, .movie, .parts,
> .bike…..etc.).
>
>
> *Does this mean I can’t register my new domain name?*This notice does not
> prevent you from registering your domain name nor does it prevent you from
> using it. It is merely being used to inform you, the registrant, that there
> is a chance that someone else owns the rights to the use of your domain
> name based on the trademarks listed below in the Clearinghouse.
>
>
> *How do I know if my Domain Name is problematic?*The trademark(s) listed
> below appear because your domain name matches, either completely or
> partially, to the mark(s) in the Clearinghouse. A match does not
> necessarily indicate a problem, however if your domain name is used in a
> similar way to one of the marks listed and there is a significant overlap
> you may not be able to register your domain name.
>
>
> *Does my Domain Name significantly overlap?*When looking to see if your
> domain names significantly overlaps with one of the listed trademarks
> please consider the following . . .
> l Are the goods and services listed for the mark the same or similar to
> the goods and services surrounding your domain name?
>   Example: Registering microsoftstuff.tech for a blog about Microsoft
> products would be a significant overlap with the Microsoft trademark
> because a consumer could be confused.
>   Example: Registering ilovecars.auto for a website showcasing photographs
> taken of cars would not be a significant overlap with the Cars trademark
> for the animated Pixar film.
>
> If you have any further questions please go to the ICANN website or if you
> think your matter would cause a significant amount of trouble, please
> consider consulting an intellectual property attorney.
>
> After reading this notice you are now aware of your rights as well as the
> rights of other trademark owners, and by continuing to proceed with
> registration you know to the best of your knowledge that you will not
> infringe on the trademark rights of others.
>
> Trademarks are listed in the Trademark Clearinghouse:
> 1. Trademark ABC
> 2. Trademark DEF
>   [image: Banner in the theme of World Intellectual Property Day 2019,
> “Reach for Gold: IP and Sports”. World IP Day is celebrated each year on
> April 26. Find out more at www.wipo.int/ipday]
> <https://www.wipo.int/ip-outreach/en/ipday/?utm_source=wipomail&utm_medium=signature&utm_campaign=ipday2019>
>
> REACH FOR GOLD: IP AND SPORTS
> World Intellectual Property Day 2019
> April 26
> wipo.int/ipday
> <https://www.wipo.int/ip-outreach/en/ipday/?utm_source=wipomail&utm_medium=signature&utm_campaign=ipday2019>
> #worldipday
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