[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
Thu Feb 23 19:31:56 UTC 2017


3.2.4 Other marks that constitute intellectual property.


I confess to not having read the document in a long time (Mary could you
provide a link?).  However, the above seems to include virtually any type of
mark including the figurative element/design marks we have been discussing.

PRK
From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Mary Wong
<mary.wong at icann.org>
Date:  Thursday, February 23, 2017 at 8:12 PM
To:  Greg Shatan <gregshatanipc at gmail.com>, "Beckham, Brian"
<brian.beckham at wipo.int>
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)

> Hello all – in response to Brian and Greg, I’m forwarding the message below on
> behalf of Rebecca Tushnet, as her email does not seem to have reached the full
> mailing list. 
>  
> In addition, Working Group members may wish to review the final TMCH framework
> document that was published in the final version of the Applicant Guidebook
> (AGB) in June 2012, following previous versions that had appeared in earlier
> iterations (AGB v4 through 9) based on ICANN staff implementation of the STI
> recommendations. The final TMCH framework notes that the standards for
> inclusion into the TMCH are:
> 3.2.1 Nationally or regionally registered word marks from all jurisdictions.
> 3.2.2 Any word mark that has been validated through a court of law or other
> judicial proceeding.
> 3.2.3 Any word mark protected by a statute or treaty in effect at the time the
> mark is submitted to the Clearinghouse for inclusion.
> 3.2.4 Other marks that constitute intellectual property.
>  
> Here is Rebecca’s email, in full:
>  
> As I'm still having trouble posting to the list, I'd appreciate it if someone
> would forward this.  From the Recommendations of the Special TM Issues Review
> Team, 2009, reflecting both the rough consensus and the business constituency
> minority:
>  
> The TC Database should be
> required to include nationally
> or multinationally registered “text mark” trademarks, from
> all jurisdictions, (including
> countries where there is no substantive review). (The
> trademarks to be included in
> the TC are text marks because
> “design marks” provide
> protection for letters and
> words only within the context
> of their design or logo and the
> STI was under a mandate not
> to expand existing trademark
> rights.)
>  
> Many members of this working group believe that the TMCH shouldn't make
> "judgment calls" limiting registrants' entitlements under the TMCH system.
> This is an understandable conclusion, and one I'm inclined to endorse for ease
> of implementation, but one that has the practical effect of expanding the
> ability of registrants to control domain names beyond the goods and services
> for which their marks are registered.  At the very least, the same modesty of
> judgment counsels against the TMCH making judgments about what the important
> parts of a registered mark are, given the mandate not to expand rights.  If
> someone does have a registration for a word mark without design elements, they
> can submit it. 
>  
> In response to Greg Shatan’s note, I’m happy to add in additional information
> that would help Deloitte evaluate the registration, though I doubt I want to
> shell out for verified copies of the registrations at issue.  I have added in
> a question at the beginning of my list to ask for clarification of what
> qualifies as “prominent” in Deloitte’s inquiry.
>  
>  
> In response to Brian Winterfeldt’s specific concerns, I don’t think the issue
> the Working Group is concerned with is simply with “generic” terms—though
> given the TMCH’s coverage of domain names regardless of the underlying goods
> and services, the fact that PARENTS might not be generic for a magazine about
> parenting is not particularly significant, as our previous discussions of
> registrations for “and,” “the,” etc. indicate.
>  
>  
> I used “parents” because of Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d
> 1072, 1077 (2d Cir. 1993) (“[T]he district court ... properly distinguished
> between the strength of the trademark PARENTS and the weak, descriptive nature
> of what it called the ‘mere word “parents”.’ … [T]he trademark registration of
> the title PARENTS in its distinctive typeface did not confer an exclusive
> right to plaintiff on variations of the word ‘parent,’ such term being more
> generic than descriptive.”). I thought CARS was a strong additional suggestion
> because of the clear limit on Disney’s rights to the term with associated
> image.  I added FRUIT OF THE LOOM at J. Scott’s suggestion.  It seems to me
> that FRUIT OF THE LOOM makes a good test case precisely because of the issue
> Brian W. identifies: by using the graphic version we can see whether Deloitte
> is in fact making judgments about what’s “important” in the registration
> submitted to it. The question is not whether textual matter standing alone is
> registrable; the question is whether it is registered.  My understanding is
> that this was an important limit on the TMCH, which by consensus does not
> cover common-law rights that may exist in variants on a registered mark.  So
> this is a mark that could help us understand what Deloitte is doing.
>  
>  
> A small point about Brian W's statement that “our preliminary search did not
> yield a basic word mark for CARS owned by the same entity as the listed CARS
> design mark (Disney), this is likely because they only use the design mark in
> commerce and would not be able to show actual use in commerce of the basic
> word mark, a fundamental requirement of trademark registration in the US”: In
> fact, where a word mark is used only in one font or with one design, it can
> still be registered as a word mark (in standard character form) as long as the
> word standing alone is registrable.  Thus, use in commerce of a stylized
> version of a word constitutes “use in commerce” of the associated word. The
> barrier to Disney’s registration of CARS as a standard character mark is
> assuredly not “use in commerce”; it is the more fundamental issue of whether
> CARS can serve as a trademark without its recognizable stylization indicating
> the Disney franchise.  See Citigroup Inc. v. Capital City Bank Group, Inc.,
> 637 F.3d 1344 (Fed. Cir. 2011) (explaining the scope of a standard character
> mark).
>  
>  
> I think it’s a great idea to add an example of “marks where the underlying
> word element is expressly disclaimed in the registration.” MUSIC has been
> suggested, which I think is a very good example, as well as stylized letters
> such as A.  The recently litigated OWN YOUR POWER case, where the Second
> Circuit noted that there was no claim to the words apart from their stylized
> presentation, says instead “[t]he color(s) light blue is/are claimed as a
> feature of the mark,” and so it is probably also worth adding.
>  
>  
> 
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan
> <gregshatanipc at gmail.com>
> Date: Thursday, February 23, 2017 at 10:59
> To: "Beckham, Brian" <brian.beckham at wipo.int>
> 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)
> 
>  
> 
> 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 <mailto: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>
>>>> <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> 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[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_TZ3DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-
>>>>> idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZ
>>>>> A5x2FgQ&s=Qt2QTRs25jH_1CnKMQDKf2F7trz_uimEoIfoKfebP5s&e=>
>>>>> 
>>>>> ·        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[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-
>>>>> idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZ
>>>>> A5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=> .
>>>>> 
>>>>>  
>>>>> 
>>>>> 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)[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_TZ3DAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ6
>>>>> 9mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_
>>>>> r6xvZA5x2FgQ&s=025Rt5ujT8eWdaiBWLQaAk3-xDpzR24t1l4DlLC9YGo&e=> . 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[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-
>>>>> idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZ
>>>>> A5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=> .
>>>>> 
>>>>>  
>>>>> 
>>>>> ·        [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[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-
>>>>> idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZ
>>>>> A5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=> .
>>>>> 
>>>>>  
>>>>> 
>>>>> 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[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_-5FpHRAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mA
>>>>> e-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6x
>>>>> vZA5x2FgQ&s=49rZxYXNglwZKhpVIrqQP4kKxD0f3M2LZaxSUlV7W_Q&e=> .
>>>>> 
>>>>>  
>>>>> 
>>>>> 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)[community.icann.org]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_
>>>>> x_-5FpHRAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=D
>>>>> J69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmb
>>>>> p_r6xvZA5x2FgQ&s=_a59DAF6e_16_FbV-1zCG7E6SSf_itKWaJZFpbRTEh0&e=>
>>>>> 
>>>>> ·        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)[trademark-clearinghouse.com]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearingh
>>>>> ouse.com_dispute-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5
>>>>> cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWy
>>>>> vmgOmbp_r6xvZA5x2FgQ&s=LHthSya6UTxD7UfKK5pOd0VfPW-Aatgp2_M2QycIEUE&e=> .
>>>>> 
>>>>>  
>>>>> 
>>>>> Thanks and cheers
>>>>> 
>>>>> Mary
>>>>> 
>>>>>  
>>>>> 
>>>>>  
>>>>> 
>>>>> <List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb
>>>>> 2017.docx>
>>>>> 
>>>>> _______________________________________________
>>>>> gnso-rpm-wg mailing list
>>>>> gnso-rpm-wg at icann.org
>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>> 
>>>> 
>>>> 
>>>> _______________________________________________
>>>> gnso-rpm-wg mailing list
>>>> gnso-rpm-wg at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>  
>>  
>> 
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