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

Paul Keating Paul at law.es
Wed Feb 22 16:04:55 UTC 2017


Very well stated.  These were exactly the issues I was trying to identify.

This is why I am suggesting that we obtain a list from TMCH.

I would also like the WG to obtain information regarding the processes
applied by Deloitte in accepting such marks for inclusion within TMCH.
For example, in the MUSIC example would the disclaimer result in rejection
for TMCH purposes?

I am also interested in learning more about Deloite¹s process relative to
the evidence of use requirement.

Again, the issue is not to make life unbearable for trademark holders (or
Deloitte).  Rather it is to determine if the TMCH is being applied in a
balanced manner so as to reflect the legitimate rights of non-trademark
holders relative to domain name registration.


On 2/22/17, 3:00 PM, "George Kirikos" <icann at leap.com> wrote:

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

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