[gnso-rpm-wg] Updated table of TMCH proposals and glossary of terms

Kathy Kleiman kathy at kathykleiman.com
Wed May 3 13:50:05 UTC 2017

Re: the trademark side of the table:

Under Composite Mark definition, in the USA section, there are two case 
quotes, but the rule itself is not present, and I would ask that it be 
added: *"However, the fundamental rule in this situation is that the 
marks must be considered in their entireties." 
*http://www.bitlaw.com/source/tmep/1207_01_c_ii.html, USPTO Trademark of 
Examining Procedure.

Further, as Mary notes under "stylized mark," the Trademark Office 
confides that its definitions between stylized marks and marks with 
design elements are distinctions without difference: [from Mary's 
table]***USA: "No clear distinction, for definitional purposes at least, 
between a mark comprising stylized text only and a mark comprising 
stylized text with a design element."

The key difference, of course, is the *"**registration of a standard 
character mark would entitle you to use and protect the mark in any font 
style, size, or color"* and the others don't. I look forward to our 
discussion today and note again that it is this clear distinction that 
original rules captured when they created the TMCH Database, TM Claims 
and Sunrise period.

Best, Kathy

On 5/2/2017 1:01 AM, Mary Wong wrote:
> Dear all,
> Staff has updated the table of open TMCH questions (on design marks, 
> GIs and TMCH matching rules) with the new proposal on GIs submitted on 
> Friday by Jonathan Agmon (see attached document). Given the ongoing 
> Working Group discussions on the mailing list on some of these topics, 
> we have not attempted to summarize the specific discussion items and 
> sub-topics, but we will be happy to do so if this will be helpful.
> Also attached is the staff-prepared glossary of terms relating to 
> design marks and GIs, which we have updated slightly to note the new 
> Amending Regulation in the EU concerning the definition of a 
> trademark. We hope the glossary is helpful to everyone in 
> distinguishing and/or defining many of the terms and usages around 
> design/device/composite/figurative marks, collective and certification 
> marks, GIs and appellations of origin, etc.
> You may also wish to note that WIPO maintains a searchable database of 
> the IP laws of many countries, which you can specify the country of 
> search as well as the type of IP right (e.g. copyright, GIs, 
> industrial design, patents, trademarks etc.) for which you are seeking 
> the applicable legislation or treaty: http://www.wipo.int/wipolex/en/.
> Thanks and cheers
> Mary
> _______________________________________________
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> gnso-rpm-wg at icann.org
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