[GNSO-RPM-WG] Proposal re Q8.

Wed Oct 2 16:46:03 UTC 2019

"Marks protected by statute or treaty" is meant to cover the relatively
limited instance where the rights to a specified mark are established in a
statute or treaty and not (initially, at least) in a trademark office.  The
key is that the specific mark must be stated in the statute or treaty
itself and not in a list or registry established by the statute or treaty,
and that it must be a "mark" (trademark, service mark, certification mark
or collective mark).

This was never meant to create trademark rights for non-trademarks.  6ter
is a textbook example of what this provision does *not* cover.  GIs as a
general class is another example of what this provision does *not* cover.

If we need to we can go back to the original deliberations that produced
this category.

Right now, it's in danger of becoming a runaway train.

Unfortunately, I have a business meeting in conflict with today's call and
my ability to attend will be very limited at best.  I would really, really,
really like to put this genie back in the bottle.

It may (or may not) be desirable to offer Sunrise and Claims protection to
national emblems or geographic indications or book titles or surnames or
culturally significant words or common-law marks or works of art.  But this
is not the way to get there.

Greg

On Wed, Oct 2, 2019 at 11:46 AM claudio di gangi <ipcdigangi at gmail.com>
wrote:

> Paul T., all,
>
> I like how you think - this is an original/creative idea.
>
> It would appear to work well for U.S, but I’m unclear on status re every
> jurisdiction worldwide. Do we know whether every jurisdiction handles marks
> protected by statute or treaty in the same way as the PTO in the States, or
> may there be some exceptions?
>
> I agree with your point about the heavy lifting being done elsewhere, i.e.
> by staff or by the Implementation Recommendation Team (IRT) that will
> follow this PDP.
>
> In fact, I was thinking along the same lines (on the heavy lifting point)
> which led me to rely upon Mary’s suggested text for 3.2.3 (which she
> included in an email to the full WG a few weeks ago).
>
> Other solutions include keeping the existing text for 3.2.3 (as it
> currently appears in the AGB) or the text that Mary drafted (as contained
> in my proposal), with an added ‘disclaimer’ - “marks that constitute GIs or
> Appellations of Origin do not qualify under 3.2.3” or “marks that
> constitute GIs or Appellations of Origin do not qualify under this
> provision”.
>
> We can add that language in 3.2.3 itself, or in the Section that is below
> 3.2.1-3.2.4 in the AGB. I say this because if you look in the AGB, directly
> below 3.2.1-3.2.4, there are a set of provisions or rules that apply to the
> system overall. So we can add the ‘disclaimer’ there and not worry so much
> about the exact wording in 3.2.3, because that Section is applicable and
> governing. In both proposals, we have  made modifications to clarify or
> change some provisions in this Section, so we wouldn’t be breaking any new
> ground.
>
> In my personal view, this latter approach - of adding the disclaimer
> accomplishes the objective on Q#8.
>
> Cheers,
> Claudio
>
>
>
> On Wednesday, October 2, 2019, Paul Tattersfield <gpmgroup at gmail.com>
> wrote:
>
>> Perhaps the heavy lifting could be done elsewhere?
>>
>> 3.2.3 Any word mark notified to a national trademark office as protected
>> by a statute or treaty in effect at the time the mark is submitted to the
>> Clearinghouse for inclusion
>>
>> On Wed, Oct 2, 2019 at 2:14 AM Tushnet, Rebecca <rtushnet at law.harvard.edu>
>> wrote:
>>
>>> In GI-world, they distinguish between levels of GI-ness.  Some
>>> geographic terms merely identify the geographic "source" of a product,
>>> while others indicate more in the way of specific qualities.  So "source
>>> indicator" is in fact widely used to describe GIs (though many GIs are said
>>> to be source-plus-some-other-quality).  Some examples
>>>
>>> https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical_indications.pdf
>>>
>>> https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf
>>> Geographical Indication Protection in the United States United States
>>> Patent and Trademark Office - uspto.gov
>>> <https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf>
>>> Geographical Indication Protection in the United States United States
>>> Patent and Trademark Office What Are “Geographical Indications”?
>>> “Geographical indications” (“GIs”) are defined at Article 22(1) of the
>>> World Trade
>>> www.uspto.gov
>>>
>>>
>>>
>>>
>>> Rebecca Tushnet
>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>> 703 593 6759
>>> ------------------------------
>>> *From:* Michael Graham (ELCA) <migraham at expediagroup.com>
>>> *Sent:* Tuesday, October 1, 2019 8:31 PM
>>> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; claudio di gangi <
>>> ipcdigangi at gmail.com>; Paul Tattersfield <gpmgroup at gmail.com>
>>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> *Subject:* RE: [GNSO-RPM-WG] Proposal re Q8.
>>>
>>>
>>> Wondering out loud whether GIs are necessarily “source identifiers”.  My
>>> understanding is that they are identifiers of particular geographic
>>> locations, whereas trademarks are source identifiers.  GIs may be source
>>> identifiers, but to the extent they are then they would be considered
>>> trademarks.  So . . . am I missing something in the terminology?
>>>
>>>
>>>
>>> Michael R.
>>>
>>>
>>>
>>> [image: cid:image001.png at 01D49D39.23E390C0]
>>>
>>>
>>>
>>>
>>>
>>> *Michael R. Graham*
>>>
>>> Senior Counsel and Global Director,
>>>
>>> Intellectual Property, *Expedia Group*
>>>
>>> T +1 425 679 4330 | M +1 425 241 1459
>>>
>>> 333 108th Ave. NE | Bellevue | WA 98004
>>>
>>> Email: *migraham at expediagroup.com <migraham at expediagroup.com>*
>>>
>>>
>>>
>>>
>>>
>>> [image: cid:image002.png at 01D49D39.23E390C0]
>>>
>>>
>>>
>>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> * On Behalf Of *Tushnet,
>>> Rebecca
>>> *Sent:* Tuesday, October 1, 2019 1:50 PM
>>> *To:* claudio di gangi <ipcdigangi at gmail.com>; Paul Tattersfield <
>>> gpmgroup at gmail.com>
>>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>>
>>>
>>>
>>> From my perspective, the key problem is that "source identifier"
>>> describes, among other things, GIs.  We can engage in special pleading
>>> against GIs and just carve them out, but I admit that leaves me a bit
>>> sour.  I also would note that the relevant statutes I've seen don't use the
>>> words "source identifier" either, so we are still shuffling off the
>>> interpretive weight to Deloitte.  (E.g., although the Red Cross also has TM
>>> registrations, the Red Cross US statute that has been mentioned in this
>>> discussion uses the word "use" to define one prohibited act, and "wears
>>> or displays ... for the fraudulent purpose of inducing the belief that he
>>> is a member of or an agent for the American National Red Cross" to define
>>> the other prohibited act.)
>>>
>>>
>>>
>>> For these reasons, I have come around to not wanting to add "source
>>> identifier" to the definition--I don't think it actually solves the problem
>>> and it might make things even less clear.  Other than that, I do think we
>>> have gotten a lot closer.
>>>
>>>
>>>
>>> 
>>>
>>>
>>>
>>>
>>>
>>> Rebecca Tushnet
>>>
>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>> 703 593 6759
>>> ------------------------------
>>>
>>> *From:* claudio di gangi <ipcdigangi at gmail.com>
>>> *Sent:* Tuesday, October 1, 2019 4:11 PM
>>> *To:* Paul Tattersfield <gpmgroup at gmail.com>
>>> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; gnso-rpm-wg <
>>> gnso-rpm-wg at icann.org>
>>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>>
>>>
>>>
>>> Paul,
>>>
>>>
>>>
>>> I agree with you; and you have spotted one of the areas of divergence
>>> between my proposal and Rebecca's.
>>>
>>>
>>>
>>> My proposal includes alternative language on this provision - that I
>>> believe addresses your point, but I am interested in your perspective.
>>>
>>> Best regards,
>>> Claudio
>>>
>>>
>>>
>>>
>>>
>>> On Tue, Oct 1, 2019 at 4:00 PM Paul Tattersfield <gpmgroup at gmail.com>
>>> wrote:
>>>
>>> Rebecca, I believe in 3.2.3 you should not add the words "as trademarks"
>>> as the marks concerned are not trademarks. For example once such 6ter marks
>>> are communicated to the USPTO and are accepted it is not possible for any
>>> organization to register a trademark containing the mark and importantly
>>> that includes the originating entity itself. Instead an 89 serial is
>>> created so the mark turns up in an examining attorney’s search etc.
>>>
>>> Best regards, Paul
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> On Tue, Oct 1, 2019 at 8:04 PM Tushnet, Rebecca <
>>> rtushnet at law.harvard.edu> wrote:
>>>
>>> This is the same text but with the subject line proper.
>>>
>>>
>>>
>>>
>>>
>>> Rebecca Tushnet
>>>
>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>> 703 593 6759
>>>
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