[GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks

Mike Rodenbaugh mike at rodenbaugh.com
Wed Sep 11 16:18:26 UTC 2019 

I think we should also agree on #5.  Not only in spirit of compromise but
also because one-letter TM owners should not get Sunrise priority.  It is
not fair.  On the other hand, not a real issue as all TLDs make single
letters premium or reserved anyway.

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com

On Wed, Sep 11, 2019, 9:06 AM Lori Schulman <lschulman at inta.org> wrote:

> Dear All,
>
>
>
> We have had some side line conversations regarding the proposal below.  I
> informed Zak separately and wish to conveny that this is where the IPC
> currently stands:
>
>    1. As per Greg’s proposal, where a design mark with words disclaims
>    >>all<< words, it *does not* enter TMCH. – IPC agrees.
>
>
>    1. As per Greg’s proposal, where a design mark with words disclaims
>    >>some but not all words<< it *does *enters the TMCH.  – IPC agrees.
>
>
>    1. Where a design mark with words is permitted into the TMCH, it
>    entitles the mark holder to a Claims Notice, but not a Sunrise priority. – The
>    IPC disagrees as this would undermine the purpose of registering with the
>    TMCH to begin with.
>
>
>    1. The Claims Notice would have to specify inter alia, that it is
>    notifying prospective registrants of someone claiming to have rights
>    corresponding to the domain name, but that not in all cases does having a
>    design mark confer rights over the words inside, or something to that
>    effect. – The IPC is willing to discuss this proposal.  We agree in
>    principle that language that is not well understood or could frighten an
>    unsophisticated applicant should be revised.  However, the notice should
>    not be providing legal advice or any advice about effects of certain types
>    of trademark registrations.
>
>
>    1. Design marks consisting of a single letter, e.g. a stylized or
>    graphical “i”, whether disclaimed or not, do not go into the TMCH. –
>    The IPC does not agree as this outcome is contrary to trademark law.
>
> In general, it appears that Greg’s proposal addresses 3 and 5.  To what
> degree to people object?  We see the proposal as creating a solution for a
> small problem with significant, unintended consequences.
>
> There are objections procedures for domains registered during Sunrise
> period and we believe that these procedures should be highlighted as remedy
> for the concerns that registrant’s have regarding this issue.
>
>
>
> Thank you for opening the dialog and we look forward to more discussion
> where we can find compromise.
>
>
>
> Lori S. Schulman
>
> Senior Director, Internet Policy
>
> *International Trademark Association (INTA)*
>
> +1-202-704-0408, Skype: lsschulman
>
>
>
>
>
>
>
> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> * On Behalf Of *Zak
> Muscovitch
> *Sent:* Tuesday, September 10, 2019 1:36 PM
> *To:* Zak Muscovitch <zak at muscovitch.com>; julie.hedlund at icann.org;
> gnso-rpm-wg at icann.org
> *Subject:* [GNSO-RPM-WG] Re; Updated Proposal re TMCH/Design Marks
>
>
>
> Dear Co-chairs, Staff and WG members, please see below a revised proposal
> regarding Question #7 (TMCH/Design Marks):
>
>    1. As per Greg’s proposal, where a design mark with words disclaims
>    >>all<< words, it *does not* enter TMCH.
>
>
>    1. As per Greg’s proposal, where a design mark with words disclaims
>    >>some but not all words<< it *does *enters the TMCH.
>
>
>    1. Where a design mark with words is permitted into the TMCH, it
>    entitles the mark holder to a Claims Notice, but not a Sunrise priority.
>
>
>    1. The Claims Notice would have to specify inter alia, that it is
>    notifying prospective registrants of someone claiming to have rights
>    corresponding to the domain name, but that not in all cases does having a
>    design mark confer rights over the words inside, or something to that
>    effect.
>
>
>    1. Design marks consisting of a single letter, e.g. a stylized or
>    graphical “i”, whether disclaimed or not, do not go into the TMCH.
>
> This proposal has been circulated amongst some stakeholders for feedback
> (with mixed results), however I am now sharing it with the entire Working
> Group.
>
>
> Zak Muscovitch
>
> General Counsel, ICA
>
>
>
>
>
> Muscovitch Law P.C.
>
> zak at muscovitch.com
>
> 1-866-654-7129
>
> 416-924-5084
>
> http://www.trademarks-canada.com/
>
> https://www.muscovitch.com/
>
> https://dnattorney.com/
>
>
>
>
>
> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Zak
> Muscovitch
> *Sent:* September-04-19 1:07 PM
> *To:* Lori Schulman <lschulman at inta.org>; Corwin, Philip <
> pcorwin at verisign.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
>
>
>
> Attached is the redline version. Apologies for only sending it now.
>
>
>
> Zak
>
>
>
>
>
> Muscovitch Law P.C.
>
> zak at muscovitch.com
>
> 1-866-654-7129
>
> 416-924-5084
>
> http://www.trademarks-canada.com/
>
> https://www.muscovitch.com/
>
> https://dnattorney.com/
>
>
>
>
>
> *From:* Lori Schulman <lschulman at inta.org>
> *Sent:* September-04-19 12:48 PM
> *To:* Corwin, Philip <pcorwin at verisign.com>; Zak Muscovitch <
> zak at muscovitch.com>; julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> *Subject:* RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
>
>
>
> Hi,
>
>
>
> Support Phil’s suggestion and a post call redline per my earlier message.
>
>
>
> Thank you.
>
>
>
> Lori S. Schulman
>
> Senior Director, Internet Policy
>
> *International Trademark Association (INTA)*
>
> +1-202-704-0408, Skype: lsschulman
>
>
>
>
>
>
>
> *From:* Corwin, Philip <pcorwin at verisign.com>
> *Sent:* Wednesday, September 04, 2019 12:39 PM
> *To:* zak at muscovitch.com; Lori Schulman <lschulman at inta.org>;
> julie.hedlund at icann.org; gnso-rpm-wg at icann.org
> *Subject:* RE: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04
> September 17:00-18:30 UTC
>
>
>
> Zak:
>
>
>
> As we reviewed all the proposals last week, I would suggest that you focus
> in your presentation on what changes you and Kathy have made to the
> original and the rationale for doing so.
>
>
>
> Philip
>
>
>
>
>
>
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
>
>
> "Luck is the residue of design" -- Branch Rickey
>
>
>
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> Sent: Wednesday, September 04, 2019 12:36 PM
> To: Lori Schulman <lschulman at inta.org>; Julie Hedlund <
> julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on
> 04 September 17:00-18:30 UTC
>
>
>
> Lori, I'm trying to get one together, not sure I will be able to
> unfortunately.
>
>
>
>
>
>
>
> Muscovitch Law P.C.
>
> zak at muscovitch.com
>
> 1-866-654-7129
>
> 416-924-5084
>
> http://www.trademarks-canada.com/
>
> https://www.muscovitch.com/
>
> https://dnattorney.com/
>
>
>
>
>
> From: Lori Schulman <lschulman at inta.org>
> Sent: September-04-19 12:08 PM
> To: Zak Muscovitch <zak at muscovitch.com>; Julie Hedlund <
> julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
> 17:00-18:30 UTC
>
>
>
> Hi,
>
>
>
> Thank you for this. As this is so close to the call, do you have a redline
> so we can compare the changes quickly? It would be most helpful to be
> prepared on a quick notice.
>
>
>
>
>
> Lori S. Schulman
>
> Senior Director, Internet Policy
>
> International Trademark Association (INTA)
>
> +1-202-704-0408, Skype: lsschulman
>
>
>
>
>
>
>
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Zak
> Muscovitch
> Sent: Wednesday, September 04, 2019 11:45 AM
> To: Julie Hedlund <julie.hedlund at icann.org>; gnso-rpm-wg at icann.org
> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
> 17:00-18:30 UTC
>
>
>
> Dear Co-Chairs, Working Group Members, and Staff,
>
>
>
> Further to the call last week and further to the below Agenda for today's
> call, please see the attached updated proposal re: Question #7, from Kathy
> Kleiman and myself.
>
>
>
> You will note therein, that the revised proposal contains some revised
> language, some revised rationale, and a potential alternative to the
> existing rule for discussion purposes.
>
>
>
> Zak Muscovitch
>
> General Counsel, ICA
>
> Muscovitch Law P.C.
>
> zak at muscovitch.com
>
> 1-866-654-7129
>
> 416-924-5084
>
> http://www.trademarks-canada.com/
>
> https://www.muscovitch.com/
>
> https://dnattorney.com/
>
>
>
>
>
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Julie
> Hedlund
> Sent: September-03-19 1:02 PM
> To: gnso-rpm-wg at icann.org
> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 04 September
> 17:00-18:30 UTC
>
>
>
> Dear RPM WG members,
>
>
>
> Please find the agenda and materials for the WG meeting tomorrow,
> Wednesday, 04 September at 17:00-18:30 UTC.
>
>
>
> Please note the following actions captured from last week's meeting and
> sent to the list last week:
>
>
>
> Actions:
>
> 1. Revision of Existing Proposals: For consideration at the meeting on
> Wednesday, 04 September, RPM PDP WG members who had previously submitted
> proposals relating to the Open TMCH Questions (see attached) may offer
> revised proposals that take into consideration the work completed by the WG
> since the proposals were originally submitted.
> 2. New Proposals: For consideration at the meeting on Wednesday, 04
> September, RPM PDP WG members may submit new proposals relating to Charter
> questions 7, 8, and 10.
>
>
>
> Please send suggested revisions or new proposals by COB today, 03
> September, if at all possible.
>
>
>
> Proposed Agenda:
>
> 1. Review Agenda and Updates to Statements of Interest
> 2. Proposals relating to Open TMCH Charter Questions (see attached Summary
> document. It is the same as the May 2017 version but with formatting for
> readability and text from relevant TMCH and AGB references):
>
> * Question 7 - Proposals from Kathy Kleiman and Greg Shatan
> * Question 8 - Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon,
> and Claudio di Gangi
> * If Time Permits: Question 10 - Proposal from Michael Graham
>
> 3. AOB
>
>
>
> Best Regards,
>
> Mary, Julie, Ariel
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