[GNSO-RPM-WG] Proposal re Q8.

Wed Oct 2 16:52:19 UTC 2019

Greg,

Regarding Statute or Treaty,  this is jurisdictionally based.  Statutes are not global by definition.  Treaties are not signed by all and in many cases allow for objections by individual nation states.

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan <gregshatanipc at gmail.com>
Date: Wednesday, October 2, 2019 at 6:47 PM
To: claudio di gangi <ipcdigangi at gmail.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Proposal re Q8.

"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
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.

  Michael R. Graham
Senior Counsel and Global Director,Intellectual Property, Expedia Group
T +1 425 679 4330 | M +1 425 241 1459333 108th Ave. NE | Bellevue | WA 98004
Email: migraham at expediagroup.com

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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