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

Thu Feb 23 11:44:45 UTC 2017

Kathy, all, particularly further to Greg's concluding question (re different understandings of what we are trying to achieve), would you be so kind as to remind us what it was the GNSO said on this? Did the recommendations e.g. bar all marks with stylized text or design elements (which would seem in trademark law terms to be a somewhat misguided overcorrection) or was the recommendation concerned with marks in which the entire textual element was disclaimed? It seems that much of the discussion here on generic vs dictionary terms at least is rightly focused on the latter, but clarity would be welcome.
Thanks!

Brian

On 22 February 2017 at 18:39:58 GMT, Kathy Kleiman <kathy at kathykleiman.com> wrote:

I agree with J. Scott that 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." It is good to wrestle with real world issues through real world examples. Tx you, Rebecca, for providing this input.

Re: Paul's suggestion, why not add to our questions for Deloitte the one he has shared: "what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark?" These seems quite relevant to our work.

Frankly, I think we have to wrestle too with the question of why Deloitte is accepting figurative marks at all -- particularly when the GNSO Policy Recommendations (as adopted by the GNSO Council and then the Board) appear to bar them in favor of text marks/word marks only. But that's a question for a different time...

Best, Kathy

On 2/22/2017 5:48 AM, J. Scott Evans via gnso-rpm-wg wrote:

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><mailto:gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <paul at law.es><mailto:paul at law.es>
Date: Wednesday, February 22, 2017 at 12:10 AM
To: Mary Wong <mary.wong at icann.org><mailto:mary.wong at icann.org>
Cc: "gnso-rpm-wg at icann.org"<mailto:gnso-rpm-wg at icann.org> <gnso-rpm-wg at icann.org><mailto: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<mailto: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<mailto:mary.wong at icann.org>>
Date: Monday, February 20, 2017 at 12:23
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto: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<mailto:mary.wong at icann.org>>
Date: Thursday, February 16, 2017 at 18:37
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto: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)<https://community.icann.org/x/TZ3DAw%29>. 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<mailto:mary.wong at icann.org>>
Date: Tuesday, February 14, 2017 at 11:08
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto: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)<https://community.icann.org/x/_pHRAw%29>

·         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)<http://trademark-clearinghouse.com/dispute%29>.

Thanks and cheers

Mary

<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>

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