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

Wed Feb 22 18:00:59 UTC 2017

A few observations:

Rebecca's examples do not include the registration information that would
normally be submitted to the TMCH.  It would probably be more helpful to
include that, or at least ask how that's taken into account in the overall
process.

I'm not in favor of an ICANN Working Group reverse engineering all or any
part of the TMCH database, which would be counter to the restrictions on
availability of TMCH data as specified by ICANN.

I think it would be more fruitful to ask for the reasons why the TMCH
accepted certain "design marks" and rejected others.

We should also find out whether and how disclaimers are taken into
consideration.  The last mark on Rebecca's list can be used for that -- the
CARS Plus Design mark was registered for clothing (by Disney) without a
disclaimer.

I share the concerns brought up by J Scott, Lori and Brian in this thread.

Finally, I note that the term "design marks" at least as we are using it,
covers a number of different concepts.

In the examples, the PARENTS mark is a stylized or "special form" mark,
which is different from the word plus design marks in the other two
examples.  Stylized marks consist of the word in a particular font or style
but without other design elements.  Some might not consider a special form
mark a design mark at all.

Word plus design marks are different, and even those may be broken down
into composite marks (made up of separable elements) and others.

In any event, the bottom line should be that the TMCH does not second guess
a national trademark registry with regard to validity of the mark.

I'll also observe that there still seems to be some different
understandings of what we are trying to accomplish here.  That should be
clarified before we proceed.

Greg

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Wed, Feb 22, 2017 at 12:19 PM, Paul Keating <Paul at law.es> wrote:

> As George has noted there are many work-arounds to any potential issue.
>
> However, none of the concerns I have heard weigh in favor of not asking
> for the information.
>
> Sincerely,
>
> Paul Raynor Keating, Esq.
>
> Law.es <http://law.es/>
>
> Tel. +34 93 368 0247 <+34%20933%2068%2002%2047> (Spain)
>
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>
> Skype: Prk-Spain
>
> email:  Paul at law.es
>
>
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> HEREIN SHALL CONSTITUTE LEGAL ADVICE
>
>
>
> From: "J. Scott Evans" <jsevans at adobe.com>
> Date: Wednesday, February 22, 2017 at 5:56 PM
> To: Lori Schulman <lschulman at inta.org>
> Cc: Paul Keating <paul at law.es>, "gnso-rpm-wg at icann.org" <
> 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)
>
> Exactly
>
> Sent from my iPhone
>
> On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman at inta.org> wrote:
>
> Paul,
>
>
>
> Before J Scott weighs in, I would imagine that any disclosure of any
> registrations would be a violation of confidentiality between the
> Clearinghouse and the Registrant.  It’s been a while since I have
> personally registered anything in the TMCH but my understanding is that
> there is a promise of nondisclosure except in instances where claims
> notices would be generated to potential registrants of conflicting names.
>
>
>
> Lori
>
>
>
> Lori S. Schulman
>
> Senior Director, Internet Policy
>
> *International Trademark Association (INTA)*
>
> +1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
>
>
>
> <image001.jpg>
>
>
>
> *From:*gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Paul Keating
> *Sent:* Wednesday, February 22, 2017 4:58 PM
> *To:* J. Scott Evans <jsevans at adobe.com>
> *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)
>
>
>
> J. Scott,
>
>
>
> I see no reason why we cannot ask for this information.  It is a discreet
> set of data points that is of material importance.
>
>
>
> Can you please provide an explanation for your opposition?
>
>
>
> Paul
>
>
>
>
>
> *From: *"J. Scott Evans" <jsevans at adobe.com>
> *Date: *Wednesday, February 22, 2017 at 3:32 PM
> *To: *Paul Keating <paul at law.es>
> *Cc: *Georges Nahitchevansky <ghn at kilpatricktownsend.com>, Mary Wong <
> mary.wong at icann.org>, "gnso-rpm-wg at icann.org" <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)
>
>
>
> I am not in favor of asking the TMCH to disclose any marks that are
> registered. I am not opposed to asking the TMCH if there are marks
> fundamentally similar to our examples that registered.
>
> Sent from my iPhone
>
>
> On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul at law.es> wrote:
>
> Then I s suggest we do both?
>
>
>
> Send the examples AND ask for the list.
>
>
>
> Paul
>
>
>
> *From: *Georges Nahitchevansky <ghn at kilpatricktownsend.com>
> *Date: *Wednesday, February 22, 2017 at 2:00 PM
> *To: *"J. Scott Evans via gnso-rpm-wg" <jsevans at adobe.com>, Paul Keating <
> paul at law.es>, Mary Wong <mary.wong at icann.org>
> *Cc: *"gnso-rpm-wg at icann.org" <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)
>
>
>
> +1
>
>
>
> *From: *J. Scott Evans via gnso-rpm-wg
>
> *Sent: *Wednesday, February 22, 2017 5:48 AM
>
> *To: *Paul Keating; Mary Wong
>
> *Reply To: *J. Scott Evans
>
> *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)
>
>
>
> Team:
>
>
>
> I disagree with Paul. I think asking Deloitte to tell us if the textual
> elements of Rebecca’s examples and for an explanation of their analysis
> would be very enlightening and helpful.
>
>
>
> J. Scott Evans
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <
> paul at law.es>
> *Date: *Wednesday, February 22, 2017 at 12:10 AM
> *To: *Mary Wong <mary.wong at icann.org>
> *Cc: *"gnso-rpm-wg at icann.org" <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)
>
>
>
> While a laudable effort imho this will not likely receive a useful
> response. It might be more productive to simply request a list of those
>
> Figurative marks that have been accepted.
>
>
>
> Alternatively ask what rules are applied in practice to determine the
> "prominent" textual aspects of a figurative mark.
>
>
>
> 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.
>
> Sincerely,
>
> Paul Keating, Esq.
>
>
> On Feb 22, 2017, at 7:47 AM, Mary Wong <mary.wong at icann.org> wrote:
>
> Dear all,
>
>
>
> I’m sending this message on behalf of Rebecca Tushnet in relation to one
> Action Item from the 15 February Working Group call. This was for her to
> take the lead in suggesting some examples of design marks that we can send
> to Deloitte for their opinion on whether the examples will or will not
> likely be accepted into the TMCH.
>
>
>
> Please review the attached examples and send your comments to this list.
> Thank you.
>
>
>
> Cheers
>
> Mary
>
>
>
> *From: *Mary Wong <mary.wong at icann.org>
> *Date: *Monday, February 20, 2017 at 12:23
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Re: Action items and updated documents from Working Group call
> of 15 February
>
>
>
> Dear all,
>
>
>
> This is just a gentle reminder to circulate your suggestions *this week*
> for follow up questions and clarifications for Deloitte, based on the
> Working Group’s discussions to date of the tables for Categories 1 – 6.
>
>
>
> To assist those who were not able to attend both sessions where the tables
> were discussed:
>
> ·         Wiki page containing call recording, transcript and updated
> table from 15 February (discussion of Categories 3 – 6):
> https://community.icann.org/x/TZ3DAw
>
> ·         Wiki page containing call recording, transcript, AC chat,
> updated table from 8 February (last discussion of Categories 1 -2), and
> compilation of TMCH Dispute Resolution Procedures:
> https://community.icann.org/x/Q53DAw.
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
> *From: *Mary Wong <mary.wong at icann.org>
> *Date: *Thursday, February 16, 2017 at 18:37
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Action items and updated documents from Working Group call of
> 15 February
>
>
>
> Dear all,
>
>
>
> Please find attached the updated Tabular Summary for Categories 3-6 for
> your review (also posted to the Working Group wiki page with notes and
> recordings for this call, at https://community.icann.org/x/TZ3DAw).
> Please also note the following action items, which are also reflected in
> the updated table.
>
>
>
> *Action Items*:
>
>
>
> ·         On Q7 (design marks) – Rebecca Tushnet to take the lead in
> developing a few examples of hypothetical design marks for sending to
> Deloitte for their views
>
>
>
> ·         On Q8 (Geographical Indicators) – Staff to confirm with OriGIn
> who may be able to submit G.I.s.
>
>
>
> ·         On Q9 (TM+50) – Working Group to review questions submitted by
> the Registries Stakeholder Group with a view toward agreement on whether to
> send them on to Deloitte
>
>
>
> ·         On Q14 (Accessibility) – Working Group to consider if there are
> additional/alternative sources that can provide us with more information.
>
>
>
> ·         [From last week] – please review the updated Tabular Summary
> for Categories 1 & 2 from last week and submit any follow up questions or
> suggestions for Deloitte to this mailing list. The updated document is
> available under Follow Up Notes from the wiki page notes of the call last
> week: https://community.icann.org/x/Q53DAw.
>
>
>
> ·         [From last week] – please review the TMCH Dispute Resolution
> Procedures and suggest areas for discussion or follow up to this mailing
> list. The updated document is available under Follow Up Notes from the wiki
> page notes of the call last week: https://community.icann.org/x/Q53DAw.
>
>
>
> *Next Steps*:
>
>
>
> ·         Staff will compile additional suggestions received from Working
> Group members on possible questions and requests for follow up with
> Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week)
> and for Categories 3-6. *Please try to submit your feedback by close of
> business in your time zone on Tuesday 21 February at the latest* so that
> we can have a full list ready as soon as possible.
>
>
>
> Thank you.
>
>
>
> Cheers
>
> Mary
>
>
>
> *From: *Mary Wong <mary.wong at icann.org>
> *Date: *Tuesday, February 14, 2017 at 11:08
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Proposed agenda and documents for RPM Working Group call on 15
> February
>
>
>
> Dear all,
>
>
>
> The proposed agenda for the next Working Group call, scheduled for 15
> February 2017 at 1700 UTC, is as follows:
>
>
>
> 1.       Roll call (via Adobe Connect and phone bridge only); updates to
> Statements of Interest
>
> 2.       Review table for Categories 3-6, with view to developing
> additional questions for Deloitte or that require further information
>
> 3.       Next steps/next meeting
>
>
>
> Please note that the table for Agenda Item #2 had been circulated
> previously, on 6 February, and is also available on our Working Group wiki
> space here: https://community.icann.org/x/_pHRAw.
>
>
>
> Please note also the Action Items from the meeting last week, which were
> as follows:
>
>
>
> ·         Over the next week, WG members to review the table for
> Categories 1 & 2 and the discussions to date, in order for staff to compile
> and send all follow up questions to Deloitte before ICANN58 so as to have
> an informed discussion with them at ICANN58 (updated table was circulated
> on 10 February and is also available here: https://community.icann.org/x/
> _pHRAw)
>
> ·         WG members to also review the TMCH Dispute Resolution
> Procedures and agree on any follow up questions for Deloitte (the
> Procedures were circulated on 10 February and are also available here:
> http://trademark-clearinghouse.com/dispute).
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
> <List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb
> 2017.docx>
>
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