[gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions

[Winterfeldt, Brian J.]

Dear all:

We wanted to quickly point out a potential issue with the survey with respect to disclaimers.

The survey does not appear to distinguish between stylized and composite marks where all textual elements are disclaimed, versus the same marks where only a part of the textual elements are disclaimed.  We have consistently asserted in this working group that only marks where all textual elements are disclaimed should be excluded from the Clearinghouse.

Exclusion of all stylized and composite marks that include any disclaimer would undoubtedly and improperly exclude trademark registrations corresponding to numerous well-known brands.  See e.g. WHOLE FOODS MARKET and Design (U.S. Reg. No. 1,557,320) for retail grocery store services, in-store restaurant services, and in-store bakery services in health foods and natural foods (no claim is made to the exclusive right to use ‘FOODS MARKET’ apart from the mark as shown).

Thank you,

Brian

Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt at mayerbrown.com<mailto:bwinterfeldt at mayerbrown.com>
1999 K Street, NW
Washington, DC  20006-1101
202.263.3284 direct dial
202.830.0330 fax

1221 Avenue of the Americas
New York, New York  10020-1001
212.506.2345 direct dial

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Mary Wong
Sent: Wednesday, June 21, 2017 11:20 PM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions

Dear all,

Please be informed that the poll to assess the sense of all members of the Working Group, in relation to certain types of design marks (i.e. stylized and composite marks) and to treatment of geographical indications, is now open. Please be sure to fill in your response by 23.59 UTC on Monday 10 July: https://www.surveymonkey.com/r/WV26DQK<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.surveymonkey.com%2Fr%2FWV26DQK&data=01%7C01%7CPMarano%40mayerbrown.com%7C1644f23ca53046bdef9c08d4b91d8a76%7C09131022b7854e6d8d42916975e51262%7C0&sdata=m38nRjLnR78ZVb4LNz1KslNaNAiSMKiAJjb6r17iqhM%3D&reserved=0>.

IMPORTANT NOTE:

  *   The Working Group co-chairs, assisted by staff, have developed a Reference Guide containing relevant definitions (i.e. of “stylized marks” and “composite marks”) as well as of relevant examples. This Reference Guide is attached for your convenience, and it should be consulted as Working Group members go through the survey, which consists of 11 substantive questions and we believe ought not to take too much time to fill in.

Finally, please also note – the poll should be taken only by Working Group members, and not observers.

Thanks and cheers
Mary



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