[gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

Lori Schulman lschulman at inta.org
Wed Feb 22 15:16:35 UTC 2017


I agree with George on this one. I, too, believe that we are talking about figures that have words that would not otherwise register.


Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman

[cid:image005.jpg at 01D270D2.1801CD20]

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, February 22, 2017 3:00 PM
To: Paul Keating <paul at law.es>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

Hi folks,

On Wed, Feb 22, 2017 at 3:10 AM, Paul Keating <paul at law.es><mailto:paul at law.es%3e> wrote:
> The issue I feel is not the figurative containing textual elements otherwise
> registrable. Rather we are really after a figurative mark used to protect a
> textual element not otherwise protectable as a trademark. E.g. "Fast Cars"
> with a green squiggly mark to claim rights in fast cars to sell automobiles.

It should be easy to come up with additional examples of those, to
supplement the 2 examples already listed (I came up with the CARS one
in 2 minutes).

Here's a live one for "MUSIC" in the USA:


although, it has 2 parallel lines, instead of a "green squiggly mark".
:-) The mark in this case expressly disclaims "MUSIC" apart from the
figurative mark. Its goods and services include: "Arranging,
organizing, conducting, and hosting social entertainment events; Film
and video production; Music production services; Providing a website
featuring information in the field of music and entertainment."

It might be nice to find some quality examples that don't expressly
disclaim the term (to see if that makes a difference to the
TMCH).....I'm sure they're out there --- anyone have a quick example
of that? Perhaps the following one is the kind Paul Keating is looking

DEALHUNTER: https://euipo.europa.eu/eSearch/#details/trademarks/011340593

That figurative mark was used in a UDRP case, see:


and in that case, the complainant *was* able to satisfy the 1st prong
of the UDRP test, but lost in a reverse domain name hijacking ruling.

As an aside, there's another group of examples that might be of
interest, namely stylized marks for individual letters of the alphabet
(or other short terms). Here's an example of a registered TM for a
stylized version of the letter "A":


(there are many examples of these worldwide, which could correspond to
short and very valuable domain names in a sunrise) Would these kinds
of registered TMs be sufficient to get first dibs on every
single-letter domain name, through a recordal in the TMCH?


George Kirikos
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>

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