[gnso-rpm-wg] nvitation to participate in RPM TMCH Questions sub-team

[Phil Corwin]

Thanks to those who have volunteered so far. For the record, I will be participating in this group as well.

The aim is to get a work product back for full WG review by our next meeting on October 19th – ICANN’s technical capabilities, while impressive, do not include time travel back to October 5th.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
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Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: David Tait [mailto:david.tait at icann.org]
Sent: Sunday, October 09, 2016 9:10 AM
To: gnso-rpm-wg at icann.org
Cc: Mary Wong; Kathy Kleiman; Phil Corwin; J. Scott Evans
Subject: nvitation to participate in RPM TMCH Questions sub-team

The email below is sent on behalf of RPMs Working Group co-chairs.

Dear Working Group members,

At the most recent meeting of the RPMs Working Group (WG) held on Monday 5 October 2016, it was determined to establish a small sub-team to undertake a review of the questions (from the WG Charter and various consultations including the Cross-Community session at ICANN56) relating to the Trademark Clearing House. The purpose of this review is to consider combining questions which are redundant or related, ensuring the neutrality of inquiries, and recommending questions that should be accorded low priority or not pursued.

This group will be co-chaired by Kathy Kleiman and J Scott Evans. Two volunteers have kindly made themselves known already, Christine Farley and Paul Tattersfield. We would like to invited further participants (up to a maximum of 2 persons) to join this group.

It is intended that this group will work to turn the questions around before the next meeting which is taking place on Wednesday, 5 October 2016.

To assist you in deciding whether to participate the questions under review are listed below.

Kind regards

Phil Corwin, Kathy Kleiman and J Scott Evans

Questions on the TMCH:

From the Charter

1. Should further guidance on verification guidelines for different categories of marks be
considered?
2. Is the protection of the TMCH too broad? Is the TMCH providing too much protection
for those with a trademark on a generic or descriptive dictionary word?
3. Should TM+50 be reversed?
4. Are legitimate noncommercial, commercial and individual registrants losing legitimate
opportunities to register domain names in New gTLDs?
5. Should the TMCH scope be limited to apply to only the categories of goods and
services in which the generic terms in a trademark are protected? If so, how?
6. Should the TMCH matching rules be expanded, e.g. to include plurals, ‘marks contained’
or ‘mark+keyword’, and/or common typos of a mark?
7. Should there be an additional or a different recourse mechanism to challenge rejected
trademarks?
8. How quickly can a cancelled trademark be removed from the TMCH?
9. How can TMCH services be much more transparent in terms of what is offered pursuant
to ICANN contracts and policies vs. what is offered to private New gTLD registries
pursuant to private contracts?
10. Should there be a review on accessibility to TMCH for individuals, private trademark
holders and trademark agents in developing countries? (Could this question be recast to also focus on small businesses/holders of limited numbers of mark holders. Could this may be a matter for the new gTLDs WG?)
11. How can the TMCH provide education services not only for trademark owners, but for
the registrants and potential registrants who are equally impacted by their services?

From the community in Helsinki:

1. Does the TMCH provide avenues that are procedurally and substantively fair to
effectively balance the rights of rights holders versus normal Internet users?
2. Does the TMCH create a tendency to perpetuate the status quo?
3. How accessible is the TMCH to reviewing accessibility for trademark agents in
developing countries?
4. Should the TMCH remain a single provider or should we open it to different providers,
of course with a central database that should be accessed by the different providers? Would it be practical to have more than one provider?
5. Are the costs of the TMCH, for rights holders, for ICANN, for the community,
proportionate to the benefits it provides?
6. How do we determine what is “good chilling effect” and “bad chilling effect” in relation
to RPMs?
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