[gnso-rpm-wg] Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group

Wed Apr 12 18:18:58 UTC 2017

Dear All,

Please find the attendance of the call attached to this email. The MP3,
Adobe Connect recording and Adobe Connect chat below for the Review of all
Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held
on Wednesday, 12 April 2017 at 16:00 UTC. Attendance of the call is posted
on agenda wiki page: https://community.icann.org/x/E8zRAw

MP3:   https://audio.icann.org/gnso/gnso-rpm-review-12apr17-en.mp3 

Adobe Connect recording:
<https://participate.icann.org/p2rltvqowvg/?OWASP_CSRFTOKEN=436763efcaabf56f
d0227f108d44d3c705d81ed2dd669eac5ee8f7b29a7d3189>
https://participate.icann.org/p2rltvqowvg/

The recordings and transcriptions of the calls are posted on the GNSO Master
Calendar page: http://gnso.icann.org/en/group-activities/calendar

** Please let me know if your name has been left off the list **

Mailing list archives:  <http://mm.icann.org/pipermail/gnso-rpm-wg/>
http://mm.icann.org/pipermail/gnso-rpm-wg/

Wiki page: https://community.icann.org/x/wCWAAw

Thank you.

Kind regards,

Terri Agnew

Adobe Connect chat transcript for 12 April 2017:     

         Terri Agnew:Welcome to the Review of all Rights Protection
Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 12 April 2017
at 16:00 UTC for 90 minute duration

  Terri Agnew:agenda wiki page:
https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_E
8zRAw
<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_
E8zRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC
IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr
4&s=e7ZLBblIokCsStKkwQyyQsgaNi3WbizucE4GMfu4F3Q&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=e7
ZLBblIokCsStKkwQyyQsgaNi3WbizucE4GMfu4F3Q&e= 

  George Kirikos:Hi folks.

  George Kirikos:bbiab

  Martin Silva:Hi all

  George Kirikos:Welcome, Martin.

  Paul Tattersfield:Hi everyone

  Paul Tattersfield:On a mailing list matter before we get started: Would it
be possible for the mailing list software to strip of the ATTnnnn.txt files
as they don't seem to contain anything useful?

  Paul Tattersfield:Seems to be just a bit of repeated text about the
mailing list: gnso-rpm-wg mailing list - gnso-rpm-wg at icann.org
<mailto:gnso-rpm-wg at icann.org>  -
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg etc

  Paul Tattersfield:If the mailing list software could not add this text to
out going emails this would be really helpful as it would make it much
easier to spot emails with 'real document attachments'

  Paul Tattersfield:Here is a link to the source of an example email
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.gpm.info_msg.txt
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.gpm.info_msg.txt&d=
DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL
7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=eviX7
7twWWJ55bbLJ_8xXWCYtwNgFiAlNDX90sTrAFI&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=ev
iX77twWWJ55bbLJ_8xXWCYtwNgFiAlNDX90sTrAFI&e=  if you scroll to the bottom
you can see where the problem text is added, which causes [some] email
software packages treat as an attachment. 

  George Kirikos:There had been an .eml attachment forwarded today, too.

  Paul Tattersfield:Yes I saw that George I think that is a certificate

  George Kirikos:I don't know if ICANN is virus-scanning all the
attachments.

  George Kirikos:No, the .eml was someone forwarding an actual email.

  George Kirikos:I opened it with a text editor, and then copied/pasted the
BASE64 text to a website, to read it safely.

  George Kirikos:But, the same email turned out to be within the body of the
email that Brian sent. So, it was superfluous.

  Paul Tattersfield:ah sorry I was thinking of the .p7s that came today too

  Philip Corwin:Hello all. We will start in one minute.

  Marie Pattullo:Bless you, Phil :-).

  Steve Levy:G'day all

  Michael R Graham:Attending without audio for a few minutes.

  Maxim Alzoba (FAITID):Hello All

  Steve Levy:Thank you for reminding us of these critical core principles,
Phil. If we cannot achieve consensus on any issues, all of the hours and
energy we've spent on this WG will be for naught

  Mary Wong:@Phil, yes - please accept our apologies for mistakenly
including Question 15 on this agenda and in this document.

  George Kirikos:Has Deloitte provided answers to any of the data requests
yet?

  Mary Wong:@George, we have no further input from Deloitte at this time.
Which specific data points were you interested in?

  George Kirikos:(e.g. top 500, also how they handle all those marks, e.g.
CARS, etc.)

  George Kirikos:(the 5 or 6 examples of figurative/stylized marks that
Rebecca prepared)

  Mary Wong:THanks, George. We have followed up with them and hope to
receive some feedback ASAP.

  Mary Wong:@Kathy, yes

  Mary Wong:We've asked.

  George Kirikos:Only standard character claim word marks, yes.

  George Kirikos:Proposals only for Q7,8 and 10, though.

  Michael R Graham:Do we have a description from TMCH provider answering the
charter question?

  Mary Wong:@Michael, do you mean these questions? If so, Deloitte has
descibed how they deal witht these types of marks when submitted.

  J. Scott Evans:I believe that all proposals would be presented equally.

  Steve Levy:Perhaps we need a sub-team to try and harmonize the various
proposals on a given topic (similar to how it's handled by legislators)?

  Michael R Graham:@Mary -- Yes.  And thanks.  I'll look back in the record
for the answer.

  J. Scott Evans:The question, however, has been answered by Deloitte.

  Greg Shatan:it's a fact question.

  Greg Shatan:I""

  George Kirikos:Yes, 7 and 8 are fact questions.

  George Kirikos:10 is more open ended.

  George Kirikos:"Should"

  bradley silver:+1 @J. Scott

  Lori Schulman:Agree with J Scott.  A deadline is more fair I think.

  Paul McGrady:Hello all.  Sorry to be late.

  Lori Schulman:We should field all proposals.

  Colin O'Brien:All proposals would be better

Paul McGrady:+1 Lori

  George Kirikos:I'd like to see all the Deloitte results, to be able to
identify problems, before presenting proposed solutions.

  Greg Shatan:George, I agree with your reading of the questions.

  Kathy Kleiman:+1 J. Scott - Council was quite upset

  Georges Nahitchevansky:I agree all proposals shoud be considered at the
same time and that we should have teh Deloitte info before proceeding

  George Kirikos:@Greg: I agree with your agreement. :-)

  J. Scott Evans:agreed.

  J. Scott Evans:with Mary

  Michael R Graham:Agree with George/Greg/Mary.  Very agreeable this
morning.

  J. Scott Evans:It also needs to be clearly labelled as a proposal for
consideration.

  Lori Schulman:Yes, all proposals should be marked as proposals and
reviewed at once so as to not unduly favor one over the other

  Lori Schulman:Although we may all be coming from different viewpoints, we
need to be objective and methodically in how we manage proposals and answers
to questions that are provided to the group by 3rd parties

  Michael R Graham:@Mary: Without looking -- I understand Charter calls for
review, identification of issues, and proposals for change consideration.
Does Charter also give us the task of proposing specific changes?

  George Kirikos:For #10, I've been in favour of allowing "Fuzzy" matching
for the ongoing notifications, instead of fees for every variation as per
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing
house.com_content_ongoing-2Dnotifications
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin
ghouse.com_content_ongoing-2Dnotifications&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVz
gfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lv
O5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=HriQl0AtqhneOCX78ArvY9FhdMtG1Yj49Sqc
FJNGU4Y&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Hr
iQl0AtqhneOCX78ArvY9FhdMtG1Yj49SqcFJNGU4Y&e=  . But, not for TM Claims
Notices or for Sunrises.

  Paul Tattersfield:Agree we should Phil

  Mary Wong:@Michael, generally yes as long as the specific policy
recommendations don't wander too much into implementation details. For
example, a policy recommendation could say "a reasonable time frame" and
then it will be for the Implementation Review Team (if the policy is
adopted) to work out, operationally and technically, what that time period
will be. Does that help?

  George Kirikos:Checkmark to agree, hand to queue.

  Paul McGrady:Why not do a green check mar kv red check mark instead of
raising hands

  Michael R Graham:Set deadline for all proposals -- only then discuss
towards decision.

  Michael R Graham:Paul +1 

  Lori Schulman:Yes, we should use red and green symbols as provided by
Adobe chat

  Georges Nahitchevansky:Agree should vote agree or disagree with re d and
green symbols

  George Kirikos:Here's Kathy's proposal, for easy reading outside Adobe:
http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001320.html

  Paul McGrady:@Phil - when will the other positions to Kathy's be
available?

  Michael R Graham:@Mary -- Okay, so directing specific changes of policy
practices are part of Charter.  Implementation of policy practice change not
part.

  Lori Schulman:Yes, clarification on scope is key

  Georges Nahitchevansky:Discussing one proposal before seeing the other
proposals colors the entire process and starts an intial mental framework,
so I urge that a date be set as has been suggested and then all proposals
considered

  Greg Shatan:Agree with Georges.

  Paul McGrady:@Phil - hard to vote without information - when will the
other positions to Kathy's be available

  Mary Wong:@Paul, the suggested deadline is 7 days from now (19 April)

  George Kirikos:We can jump to #3 on our agenda, perhaps?

  Paul Tattersfield:I think it would be a helpful guide for others looking
to submit a proposal

  George Kirikos:CCT-RT

  Michael R Graham:Proposal: Hold off discussion of any proposal until after
receipt of all proosals with deadline.

  Mary Wong:From a quick count, looks almost even on the vote

  Mary Wong:Sorry, NOT vote - straw poll!

  John McElwaine:@Greg +1

  George Kirikos:Let's go for sound marks. :-)

  Mary Wong:Staff supports a consistent usage that the Working Group can
define or clearly explain, without only relying on one jurisdictional
definition.

  George Kirikos:*6 to mute

  Lori Schulman:There is no consensus to entertain proposal.

  George Kirikos:"private chat is disabled by host"??

  George Kirikos:(couldn't reply to a private message)

  Kathy Kleiman: In that case, let's use this time on Statute and Treaty
marks as wel.

  Kathy Kleiman:as well.

  Mary Wong:@George, that's happened before - normally logging off and on
fixes that.

  Greg Shatan:I'm on tablet, so when I stop talking it echoes until i turn
off the microphone.

  Paul Tattersfield:Kathy +1

  Paul McGrady:@Kathy, Statute and Treaty marks bleeds into the next
question and I don't think it is good to spring that one us.

  Paul Keating:Sorry for being late

  George Kirikos:Right, the IGO Article 6ter stuff, for example.

  David McAuley:also sorry for being late

  Kathy Kleiman:We've been in the murky waters!

  Colin O'Brien:+1 Paul

  Lori Schulman:I think that discussing GI's should have Massimo Vittori on
the call.

  Kathy Kleiman:Qusetions 7 and 8 are before us!

  Lori Schulman:He is part of the working group I believe.

  Greg Shatan:Digital archery practice?

  Marie Pattullo:+1 to Lori

  Greg Shatan:(as a use of our time).

  Paul McGrady:@Phil - thanks.

  Mary Wong:All, please note that Deloitte has told us how they handle
non-word marks (Q7) and "marks protected by statute or treaty" (which may
cover Q8). The staff question for the WG after Copenhagen had been, what is
the policy intent for the TMCH scope and does what is being accepted now
into the TMCH go beyond that? We understood Phil's proposal was to discuss
this.

  Martin Silva:This is very usfeull, since different jurisdiction have
different ways of addrssing this

  Martin Silva:for what I know, desing marks in the civil law tradition
countries are usually called mixed marks

  Martin Silva:which are text marks that are represented in an specific
figurative way (form+color)

  Martin Silva:and are only protected in those desings

  Martin Silva:correct me if anyone knows better

  Michael R Graham:@Mary:  With apologies for being late to the "party" --
can you point me to materials/transcript where Deloitte describes their
handling?

  Paul McGrady:I would like to speak to the economic efficiency of design
marks and the need not to presume that the text portion of a design mark is
always indistinct (to the exclusion of smaller businesses).

  George Kirikos:I read an article yesterday about China becoming the
dominant jurisdiction for IP soon. It'd be interesting to get their
perspective, given they accounted for more than 50% of new gTLD
registrations.

  Michael R Graham:@Martin --  Word and alphanumeric figures contained in
mixed marks are also granted protection beyond the stylization unless
"disclaimed"

  Lori Schulman:Martin: the answer to you questions is "it depends".  The
words and the stylization are protected.

  George
Kirikos:https://techcrunch.com/2017/04/11/the-surprising-rise-of-china-as-ip
-powerhouse/

  Lori Schulman:Marks are always looked at on the whole.  However some
elements dominate others.  

  Mary Wong:@Michael, I will need to look up the dates of the meetings but
will do so.

  Mary Wong:Deloitte's TMCH Guidelines describe how they handle marks that
are not exclusively comprised of letters, numerals or words.

  Paul McGrady:+1 Greg - would be good to develop a definitions list to
harmonize all the ways that various trademark offices refer to design marks

  Martin Silva:so if I register "Martinish" in a certain font and in red I
can exclude other to use "Martinish" regarldes of the desing they are using?

  Michael R Graham:@Paul  Please do address this point.  Most small
businesses that develop a logo with words in the US are counseled that
registraiton of a design mark/logo containing the words will protect both
the Design Mark and the Words.  If the words are not STRONG trademarks on
their own, they receive proportional protection.

  Paul McGrady:@Phil - the mark may be older

  Lori Schulman:Martin, in the US you can.

  Martin Silva:@graham

  Lori Schulman:as long as Martinish doesn't have any other meaning

  Vinzenz Heussler:I may be able to protect a stylised mark but not the
letters on its own

  Martin Silva:thkns Lori

  J. Scott Evans:adias is a bad example. this is usually a problem from
small to medium enterprises.

  Lori Schulman:or I should says as long as Martinish is distinctive on its
own

  Paul McGrady:@Phil - the mark may be older

  Lori Schulman:if Martinish is a common term that describes your goods or
services that is a different story

  Rebecca L Tushnet:Are there a lot more small businesses in the TMCH than
big ones?

  Marina Lewis:@Phil - a lot of brand owners, especially small businesses or
individuals, can only budget for one application - and they choose the
design form to try to protect both words and design.

  George Kirikos:But, the "standard character claim" would be marked "yes"
for those, right?

  Michael R Graham:@Marina -- Exactly.

  Lori Schulman:Even big trademark owners may opt to register distinctive
words with designs if they are registering in mutliple jurisdictions or
multiple classes to reduce cost

  Marina Lewis:@Rebecca - the TMCH was designed to protect all businesses,
not just large ones.

  Mary Wong:@Rebecca, there is no way to tell even if you saw all the TM
records in the TMCH.

  Marina Lewis:@Rebecca - not sure why that question is relevant?

  Greg Shatan:I have certainly put smaller clients' marks in the TMCH.

  Greg Shatan:Not that the question is relevant....

  Greg Shatan:But nothing wrong with being informative.

  Lori Schulman:I represented a small business that had several TMCH filings

  Lori Schulman:Charities also use the TMCH

  Lori Schulman:it depends on the reach of the market and the challenge a
particular business or charity has with squatting

  Michael R Graham:@Rebecca: Would it matter whether there were more small
businesses or large in the TMCH?  Across the board, smaller businesses that
wish to protect their trademarks have a higher proportional cost than large
companies.  But  consumers need to be protected regardless.

  Mary Wong:Is there agreement that a mark comprised of text (words,
letters, numerals, punctuation, keyboard signs) may be a mark, but is not a
"design mark" even if it is a stylized version of the word?

  Paul McGrady:+1 J Scott.  We need to have clear definitions.

  Michael R Graham:@Mary: I would agree with you.  My practice is even to
refer to them as "WORD and Design" marks.

  George Kirikos:We want to protect the Stronger marks. But, we don't have a
clear definition of "strong" marks (and some want to squeak weak marks into
the database).

  Marie Pattullo:Thanks for this Michael - "Across the board, smaller
businesses that wish to protect their trademarks have a higher proportional
cost than large companies.  But  consumers need to be protected regardless".
+ as many 1s as permitted.

  Martin Silva:I think we deffintly need deloiite deffinition on this, we
can't really discuss if each one has a different understanding. I don0t care
which is the meanaing as log as we all know what it is.

  Michael R Graham:@Martin -- +1

  Martin Silva:is not bad faith

  Martin Silva:on the contrary, I am traying to build good faith!

  Paul McGrady:"Stylized" is being conflated with "Design"  Its not the same

  Kathy Kleiman:Tx you, J. Scott. History and background are important.

  Lori Schulman:Correct Phil.  Words are protected.

  Marina Lewis:+1 Paul

  Monica Mitchell:sorry

  Terri Agnew:@Monica, I don't see your mic active or on the telephone

  Mary Wong:@Paul, yes, it is not the same thing as we (staff) understood
this discussion. A stylized word is still a text mark - I think that's what
Deloitte goes by as well. By "design mark" they/we mean devices and logos
and the like (not stylized text).

  Terri Agnew:to activate your mic, top tool bar select the telephone icon
and follow the prompts. To join on the telephone let me know if a dial out
is needed

  Monica Mitchell:just found the answer ... sorry 

  Amr Elsadr:@Martin: Deloitte's TMCH Guidelines can be found here:
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing
house.com_sites_default_files_files_downloads_TMCH-2520guidelines-2520v1.0-2
520-5F1.pdf
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin
ghouse.com_sites_default_files_files_downloads_TMCH-2520guidelines-2520v1.0-
2520-5F1.pdf&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dX
AvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6
ywxjhr4&s=L03PIKl0v4RlDkfjHtVioSvnyGThtArdMePuLxSzamc&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=L0
3PIKl0v4RlDkfjHtVioSvnyGThtArdMePuLxSzamc&e= 

  Susan Payne:aplogies for joining late - overrunning prior meeting

  Michael R Graham:One of the most important things the Policy &
Implementation Working Group did to aid its deliberations -- and it carried
through to our proposals -- was to identify TERMs we were using in our
discussion and the develop and agree to specific DEFINITIONS that we stuck
to in our discussions and proposals.  

  George
Kirikos:https://www.uspto.gov/trademarks-getting-started/trademark-basics/re
presentation-mark

  Michael R Graham:Can I propose that we establish a continuing working team
to do that for this PDP going forward?

  Marie Pattullo:Fully support Paul's comments re SMEs.

  Martin Silva:thnks Amr

  Martin Silva:!

  Kristine Dorrain - Amazon Registry Services:Lots of active participation
this week.  I have to drop for a conflict but will pick up on the rest of
the call later.  See you all next week.

  Mary Wong:The TMCH Guidelines specifically address the topic of a mark
that is not entirely text. Deloitte's rule is that it is considered
identical to the TM record if the words/numerals/letters/signs are
predominant in the mark AND are clearly separable and distinguishable from
the design element.

  Martin Silva:doesn0t that gives too much power to delloite? 

  Greg Shatan:Thanks, Mary. That seems appropriate.

  Georges Nahitchevansky:Here is USPTO link on standard, stylized and design
marks:
https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_trademark
s-2Dgetting-2Dstarted_trademark-2Dbasics_representation-2Dmark
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_trademar
ks-2Dgetting-2Dstarted_trademark-2Dbasics_representation-2Dmark&d=DwIFaQ&c=F
mY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0A
Ign-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=-Di6r8jig1apTU-
VL70XJqzNWmaKog0cyWoLCgw37Lw&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=-D
i6r8jig1apTU-VL70XJqzNWmaKog0cyWoLCgw37Lw&e= 

  Martin Silva:it might create broader domain name protectio that ana
trademark gives

  J. Scott Evans:Agree Paul.

  Paul Keating:That exact problem arises  often in a UDRP context.

  Lori Schulman:Martin: It shouldn't.

  Susan Payne:There has also been at least one UK TM decision which said you
must regiser in the form that you use - ie not as plan text.  Further, the
advice I routinely received from Chinese TM attorneys is that this is a
requirement in China.  So we must acknowlede the fact that not every
country's law and practice is the same as that of the US.  Something which
is perpetually forgotten in ICANN land

  Greg Shatan:Martin, I think that treatment is consistent with the current
state of TM protection. (Putting aside the disclaimer issue.)

  Lori Schulman:In a UDRP , the panelist will review the TM registration or
the common law claim and make a determination based on the totality of the
circumstances 

  Kathy Kleiman:With great respect, I don't agree Paul.

  George Kirikos:TMCH costs $120/yr. Over 10 years, that's $1200. So, it's
NOT small businesses signing up for the TMCH, given they paid less than that
at the USPTO.

  Michael R Graham:@Mary -- Useful, but the wording "if the
words/numerals/letters/signs are predominant in the mark AND are clearly
separable and distinguishable from the design element." needs to be
clarified I think.

  Marina Lewis:I think the key point is whether a trademark includes
"literal elements", regardless of font, stylization, color, or additional
design.  ("Literal elements" is the term employed by the USPTO in this
context.)  Since the TMCH is designed to match to a literal element, this
would seem to be where I focus should lie.

  Kathy Kleiman:Small businesses, and especially entrepreneurs, will be
hurt.

  Lori Schulman:Excellent Points from Susan Payne.

  Greg Shatan:With great respect, I agree with Paul.

  George Kirikos:USPTO TM Fees:
https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_learning-
2Dand-2Dresources_fees-2Dand-2Dpayment_uspto-2Dfee-2Dschedule-23Trademark
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_learning
-2Dand-2Dresources_fees-2Dand-2Dpayment_uspto-2Dfee-2Dschedule-23Trademark&d
=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFz
L7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=SrXv
KJ_c6ROp4rH4-yjojeN1hxZIQPHppIvkAUx6j4I&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Sr
XvKJ_c6ROp4rH4-yjojeN1hxZIQPHppIvkAUx6j4I&e=  Fees

  Mary Wong:Thanks for reading that into the record, Phil. Staff hopes
that's a helpful guide to this discussion.

  Michael R Graham:@Phil/Mary -- Problem for me is what is "predominant"?

  Steve Levy:Sorry but I've got to jump onto the audio-only line for the
remainder of this call

  Paul McGrady:@Michael G - agree - sounds like Deloitte is re-examining
marks.  Yikes

  Michael R Graham:@Marina -- Good point.  Would be useful to check INTA or
other Global Rules listings to see what variants there may be.

  Greg Shatan:There are a vast number of USPTO TM registrations owned by
SMBs and individuals.

  Greg Shatan:Yes, "predominant" could be a fuzzy concept.

  Mary Wong:@Michael, if it helps, Deloitte has a Dispute Resolution Process
where incorrect acceptances into the TMCH can be challenged:
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing
house.com_dispute
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin
ghouse.com_dispute&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=
DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXV
mW_un6ywxjhr4&s=SHzgbgUvCEUwXsHtiBIv815XK16Xd9v2QSsxf6vuSDg&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=SH
zgbgUvCEUwXsHtiBIv815XK16Xd9v2QSsxf6vuSDg&e=  

  Michael R Graham:@Paul -- That's my concern as well -- my understanding is
that Deloitte wanted rules that avoided it examining these.

  J. Scott Evans:Have we asked Deloitee if any chanllegnes habve been filed?
And, if so, how many?

  Martin Silva:4.2 in the Deloitte Guidelines

  Mary Wong:@J Scott, if I recall correctly, Deloitte's written response to
the WG's initial questions was no. As of Jan 2017, the only disputes they
had received was about TM owners not agreeing with Deloitte's verification. 

  Michael R Graham:@Mary -- I presume our goal in this regard would be to
ensure that challenges are the exception since the rules are appropriate to
"real world" practice.

  J. Scott Evans:Kathy. You need to review Susan Payne's email.

  J. Scott Evans:Kathy. That is a huge assumption.

  Paul McGrady:@Kathy - we do a lot of pro bono work for non-profits and
small entrepreneurs who will not be able to get coverage for their designs
if they have to choose to spend their money on text alone marks in order to
be allowed to participate in ICANN

  J. Scott Evans:I practiced for 13 yaars and routinely advised clients that
were cost-concious to file one application for a design or composite mark.

  Greg Shatan:I'm with J Scott. That is not the advice that I have learned
to give in 30 years of trademark practice.

  Mary Wong:So it seems that 2 basic questions for the Working Group are:
(1) is a mark comprised entirely of stylized text considered a word mark?
(2) does the concept of "word mark only" exclude all marks that are
device/logo plus text (even where the text part is disclaimed)?

  George Kirikos:You can pick "Clear Status" to remove the hand/checkmark.

  Maxim Alzoba (FAITID):colours ... are used sometimes (in case of Russia,
few Telcos from one holding registered same image with different colours as
different trademarks, for example), but I wonder how it should be reflected
in TMCH ?

  Paul McGrady:@Rebecca - the same thing was happening to me.  I think we
have to "clear status" first to get rid of the green checkmark and then the
hand being raised will work

  John McElwaine:Many countries apparently require "a depiction" of the mark
with no distinction between text, stylization or included designs.  I repeat
that we are being too U.S. centric in this analysis.

  George Kirikos:+1 Rebecca

  Martin Silva:exactly!

  J. Scott Evans:@rebecca. that is not true. You are misstating the law in
the US at least.

  George Kirikos:This is basic stuff.

  Maxim Alzoba (FAITID):how to reflect RGB palette in TMCH?

  Martin Silva:+1

  Maxim Alzoba (FAITID):to properly reflect the colour?

  Michael R Graham:@Rebecca -- Please provide cases supporting "weaker"
protection statement for stylized word registered marks.  I'll take a look
for protection of both in the US.

  George Kirikos:@Maxim: combine it with the TLD, e.g. mark.red, mark.black,
etc. :-)

  Mary Wong:What if the registered trademark is "logo plus word" and the
word is not disclaimed, i.e. it is protected as part of the whole mark?
Should that be accepted or rejected by the TMCH?

  Georges Nahitchevansky:Rebecca you are wrong on the scope of protection
afforded in the US on stylized marks

  J. Scott Evans:@rebecca. Second, also. The same argument cand be made to
small or medium enterprises or civil liberatarians. Go get a cheap trademark
and register it in the clearinghous.

  George Kirikos:(Afilias has a bunch of colour TLDs)

  John McElwaine:@mary good point

  Greg Shatan:Rebecca, that's wrong about PARENTS unless the word has been
disclaimed (which in that case, it was).'

  J. Scott Evans:Tradearmarks are communicted by word of mouth. So, sound
alike is very important -- even in design marks and stylized marks.

  Maxim Alzoba (FAITID):@George ... the wors thing is green ... most
browsers use green when proper TLS, SSL used .. so all owners of proper
certificates will be violate it ... :)

  Maxim Alzoba (FAITID):*worst

  Michael R Graham:@Phil -- Good point as to different jurisdictional
practices.

  Paul McGrady:@Rebecca - I didn't understand your comment about needing to
file all over the world.  Even filing in 1 jurisdiction for multiple marks
can be daunting to a small business or non-profit

  Kathy Kleiman:@Phil, we have seen no examples of this issue. It would be
good to do so.

  George Kirikos:Otherwise, there's massive jurisdiction shopping.

  Maxim Alzoba (FAITID):@George +1 ... 

  George Kirikos:Google with their Tonga TM, to get priority date for
"Alphabet", so even the big companies do it.

  Rebecca L Tushnet:PARENTS--the word was not in fact disclaimed.

  George Kirikos:(Instafile jurisdictions)

  Rebecca L Tushnet:Because disclaimer is optional.

  J. Scott Evans:@Rebecca. I agree with you earlier comment that disclaimer
practice is inconsitent. Sometimes it is optional, but not always. Making an
absoute statement is incorrect.

  Maxim Alzoba (FAITID):@Mary  Is it possible not to use small size of the
chat history?

  Paul Tattersfield:Given domains are worldwide should there be a
requirement for TM registrations in a minimum number of different
jurisdictions to gain entry into the TMCH? 

  Rebecca L Tushnet:In re National Data Corp.United States Court of Appeals,
Federal Circuit.January 30, 1985 753 F.2d 1056The absence of a disclaimer
does not, however, mean that a word or phrase in a registration is, or has
become, distinctive in the registered mark, so that that part of the mark
must be treated the same as an arbitrary feature. The power of the PTO to
accept or require disclaimers is discretionary under the statute, supra note
5, and its practice over the years has been far from consistent.

  Michael R Graham:Words subject to disclaimer in Stylized or Design marks
should not be registrable in TMCH -- Agree.

  Marina Lewis:@Rebecca - I don't understand your comments on disclaimers
being optional.  Yes, an applicant has the option of proactively entering a
disclaimer before being required to do so during examination - but once an
Examining Attorney refuses registration unless a term is disclaimed, that
would seem to eliminate the "optional" aspect of disclaimer practice.  Can
you please clarify?

  George Kirikos:Cross-talk.

  Terri Agnew:finding the line

  Rebecca L Tushnet:Optional for the PTO, you're right, not for the
registrant when demanded by the PTO if not argued out of it.

  J. Scott Evans:I don't see why we talkiing about disclaimers since the
EUTM doesn't use them and many other jurisdictions do not.

  Mary Wong:Again, if staff may summarize, perhaps where there IS a
disclaimer for the text part of a device mark then that text/word shouldn't
go into the TMCH (per Susan Payne), but we cannot draw the same conclusion
the other way when there is no disclaimer?

  George Kirikos:Perhaps instead of a black/white binary 0-1, there needs to
be a scoring system from 0-100, e.g. 100 equals Verizon, Exxon, 0 =
figurative mark for "CARS", and develop a points system.

  George Kirikos:Kind of like the Canadian immigration points system. :-)

  Lori Schulman:How do you make the "score" objective?

  Michael R Graham:@Mary -- I would agree with your distinction.

  George Kirikos:(or the points system for Community Applications for new
gTLDs, as a precedent)

  Maxim Alzoba (FAITID):fruit companies might object

  George Kirikos:@Lori: right, it'd be a tough job, but avoid the "binary"
choices.

  George Kirikos:Just thinking out loud, outside the box.

  Lori Schulman:that seems like re-examination to me but I get your point
George.

  Maxim Alzoba (FAITID):unfortunately community eveluation failed ... ony
rich communities prevailed :)

  Paul Tattersfield:only a re-examinination in some jurisictions 

  George Kirikos:It'd need to be mechanical, some robotic algorithm. (that
would also lower the cost). Feed it into an AI system. :-)

  Greg Shatan:A valid mark is a valid mark, so strength is not particularly
germane in our discussions.

  Lori Schulman:+1 Greg

  Marina Lewis:+1 Greg

  Mary Wong:Public comments to the CCT Review Team Draft Report closes on 27
April:
https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_public-2D
comments_cct-2Drt-2Ddraft-2Dreport-2D2017-2D03-2D07-2Den
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_public-2
Dcomments_cct-2Drt-2Ddraft-2Dreport-2D2017-2D03-2D07-2Den&d=DwIFaQ&c=FmY1u3P
Jp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4
xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Z3SGcjmQeXCcjlvUa5nIq
x78HFdXWLxx9sqrbQYYsyQ&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Z3
SGcjmQeXCcjlvUa5nIqx78HFdXWLxx9sqrbQYYsyQ&e=  

  Paul McGrady:Thanks Phil!

  Lori Schulman:Yes, INTA has completed the study and  is compiling the data
now.

  George Kirikos:For CCT-RT #10, a simple/obvious solution would be to
charge less (say 50% off registry fees) if the domain name is registered,
but has no nameservers. Defensive domains could then be removed from the
zone file, not resolving. This should apply to all (including .com, legacy
TLDs).

  Mary Wong:Column 1 is the recommendation, Column 2 the rationale provided
by the CCT-RT

 George Kirikos:But, not just for "large brandowners" -- do it for everyone.

  George Kirikos:But, if the name resolves (e.g. wwwbrand.com redirects to
www.brand.com <http://www.brand.com> ), that is in the zone file, and would
be charged a normal price.

  George Kirikos:(its defensive, but delivering value to the owner)

  Mary Wong:So next WG meeting will be 26 April; no meeting on 19 April

  J. Scott Evans:I am going to need to jump soon. Thanks to everyone for
their great participation today.

  George Kirikos:If we can get Deloitte's answers before the 19th, it'll
inform our proposals.

  Marie Pattullo:Would still advocate any proposal being sent to the full
list, please.

  George Kirikos:Not sure what to propose, until seeing that.

  J. Scott Evans:@Paul. We have co-chairs call on 4/21 and that should
result in an agenda for the WG by the end of that day for our 4/26 call.

  Amr Elsadr:UTC 14:00 for sunrise and UTC 16:00 for claims.

  Greg Shatan:Do we have lists of who is in both sub teams (or all 3)?

  Paul McGrady:Could we all get calendar invites for all of these subgroups?
It would be good to know who is meeting when.

  Amr Elsadr:@Greg: yes, they've been posted on the wiki pages for the Sub
Teams. Please check the 3 pages. Links coming up.

  Mary Wong:Thursday 27 April 0300 UTC (Weds night for North America)

  Amr Elsadr:Members of Sunrise ST:
https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_n
MrRAw
<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_
nMrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC
IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr
4&s=L9vPjMKkLkl0Uhu9qQiMYRgG0BFuenqmsn5J2sGolxs&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=L9
vPjMKkLkl0Uhu9qQiMYRgG0BFuenqmsn5J2sGolxs&e= 

  George Kirikos:Bye folks.

  Amr Elsadr:Members of Claims ST:
https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_q
MrRAw
<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_
qMrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC
IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr
4&s=Y5sH1sJZJBxLu30Wly4PJDTLKMJoR_KHfmG3RjIfcF8&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=Y5
sH1sJZJBxLu30Wly4PJDTLKMJoR_KHfmG3RjIfcF8&e= 

  Paul Tattersfield:howmany APAC people responded to the poll?

  Paul McGrady:Thanks all!  Great call.

  Greg Shatan:Bye all!

  J. Scott Evans:ciao

  Mary Wong:@Paul T, I can't recall off hand but there were a few

  Maxim Alzoba (FAITID):bye all

  Elizabeth Featherman:Thank you!

  Amr Elsadr:Members of AVPMs:
https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_t
crRAw
<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_
tcrRAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC
IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr
4&s=sb6befKntFNKHDoH3NozTJ_qXAmaLFhThD9KsBY5_m4&e>
&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh
FzL7ar9Qfqa0AIgn-H4xR2EBk&m=4TB9lvO5J7iGvk_BLj09acfAyTBXXVmW_un6ywxjhr4&s=sb
6befKntFNKHDoH3NozTJ_qXAmaLFhThD9KsBY5_m4&e= 

  Michael R Graham:Thanks@

  Paul Tattersfield:thnaks Mary, bye all

  Amr Elsadr:Thanks all. Bye.

  Monica Mitchell:thank you

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170412/502ce140/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: attendance RPM 12 April 2017.pdf
Type: application/pdf
Size: 340794 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170412/502ce140/attendanceRPM12April2017-0001.pdf>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 5018 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170412/502ce140/smime-0001.p7s>