[gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Tue Dec 6 10:53:58 UTC 2016

Dear All

At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.

Kind regards,

David

From: Kathy Kleiman <kathy at kathykleiman.com>
Date: Sunday, 4 December 2016 at 19:40
To: Kiran Malancharuvil <Kiran.Malancharuvil at markmonitor.com>, David Tait <david.tait at icann.org>
Cc: Mary Wong <mary.wong at icann.org>, Susan Payne <susan.payne at valideus.com>, Edward Morris <edward.morris at alumni.usc.edu>, Phil Corwin <psc at vlaw-dc.com>, "Sarahliannec at gmail.com" <Sarahliannec at gmail.com>, Paul Keating <paul at law.es>, "kurt at kjpritz.com" <kurt at kjpritz.com>, "gpmgroup at gmail.com" <gpmgroup at gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va at bladebrains.com>, Sarah Clayton <Sarahliannec at gmail.com>
Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.  

One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: 

        => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]

So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. 

Besides, there were numerous charter questions on this issue. We can't simply delete it.  But if you would like to offer a clearer way to phrase the question, please do.

Best, Kathy

On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,

I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?

Thanks,

Kiran

Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)

Sent from my mobile, please excuse any typos.

On Dec 4, 2016, at 9:26 AM, David Tait <david.tait at icann.org<mailto:david.tait at icann.org>> wrote:

Dear All

Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.

The notes and outcomes are as follows:

*         Q10 - Should be marked green for accepted.

*         Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"

Proposal to keep question in but report findings to SubPro WG.

*         Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"

*         Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"

Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.

Should there be regional service desks if not regional providers?

*         Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"

I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday.  Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).

Kind regards,

David

David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)

Mobile: + 44-7864-793776
Email:  david.tait at icann.org<mailto:david.tait at icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]

<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>

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