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

Thu Feb 23 15:59:19 UTC 2017

Brian,

Thanks for asking that.  I'm sure it's "somewhere" we could find it
eventually, but having it in this thread would be very helpful.

Greg

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

On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> 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> <gnso-rpm-wg-bounces at icann.org>
> on behalf of Paul Keating <paul at law.es> <paul at law.es>
> *Date: *Wednesday, February 22, 2017 at 12:10 AM
> *To: *Mary Wong <mary.wong at icann.org> <mary.wong at icann.org>
> *Cc: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg 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)
>
>
>
> 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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