[GNSO-RPM-WG] Q#8

Tue Sep 17 15:58:47 UTC 2019

Seems to me the underlying premise is flawed

3. CRITERIA FOR TRADEMARK INCLUSION IN CLEARINGHOUSE
…
3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 … 3.2.5  etc.

Whereas the [compulsory] RPMs flow from 7.0

7. PROTECTION FOR MARKS IN CLEARINGHOUSE
The scope of registered marks that must be honored by registries in
providing Trademarks Claims services is broader than those that must be
honored by registries in Sunrise services.

7.1 For Trademark Claims services - Registries must recognize and honor all
word marks that have been or are: (i) nationally or regionally registered;
(ii) court-validated; or (iii) specifically protected by a statute or
treaty in effect at the time the mark is submitted to the Clearinghouse for
inclusion. No demonstration of use is required.

7.2 For Sunrise services - Registries must recognize and honor all word
marks: (i) nationally or regionally registered and for which proof of use –
which can be a declaration and a single specimen of current use – was
submitted to, and validated by, the Trademark Clearinghouse; or (ii) that
have been court-validated; or (iii) that are specifically protected by a
statute or treaty currently in effect and that was in effect on or before
26 June 2008.

On Tue, Sep 17, 2019 at 4:29 PM Paul Keating <Paul at law.es> wrote:

> Seems to me that the majority is attempting to guide the process by not
> permitting discussin on something that they disagree with .
>
>
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of claudio
> di gangi <ipcdigangi at gmail.com>
> *Date: *Tuesday, September 17, 2019 at 5:22 PM
> *To: *Kathy Kleiman <kathy at kathykleiman.com>
> *Cc: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Re: [GNSO-RPM-WG] Q#8
>
>
>
> Kathy, all,
>
>
>
> Last week, we spent the first full hour of the call discussing the first
> Question 8 proposal, and zero minutes on the second proposal on Question #8
> (In comparison we spent much time discussing both proposals for question
> #7).
>
>
>
> I am aware that some members spoke in support of the first proposal (I was
> on audio only), but do not know how many, while some others did not speak
> in support, and that we agreed to spend this full week to solicit WG
> members views on the list before moving forward. This week has not yet
> concluded (we have through today), yet new language is being posted below
> now for consideration.
>
>
>
> A few additional points, the week prior Phil conducted an informal poll
> using the Zoom room functionality, which helped provide transparency on WG
> members views for consensus building, which was not done last week on
> Question #8.
>
>
>
> Nor has there been an effort to bring the various proponents together to
> reach a compromise position, which we recently did in the sprint of the
> consensus-building process on Question #7, the design mark topic. So I’m
> not sure why question #8 is being treated so differently in all these
> various ways (as described above) compared to Question #7.
>
>
>
> Can someone kindly shed some light on this disparity in treatment between
> the way we are approaching question 7 and question 8?
>
>
>
> Thanks!
>
>
>
> Best regards,
>
> Claudio
>
>
>
>
>
> On Tuesday, September 17, 2019, Kathy Kleiman <kathy at kathykleiman.com>
> wrote:
>
> All,
>
> Last week we found considerable overlap and common ground on Q#8.  I
> promised to circulate language sharing that agreement and slightly refining
> existing proposals.
>
> Q#8:
>
> 3.2 The standards for inclusion in the Clearinghouse are:
>
> 3.2.1 Nationally or regionally registered word marks from all
> jurisdictions.
>
> 3.2.2 Any word mark that has been validated through a court of law or
> other judicial proceeding.
>
> 3.2.3 Any word marks specified in and protected by a statute or treaty *as
> trademarks *[1] in effect at the time the mark is submitted to the
> Clearinghouse for inclusion.
>
> 3.2.4 Other marks that constitute intellectual property.  [see below]
>
> 3.2.5 Protections afforded to trademark registrations do not extend to
> applications for registrations, marks.
>
> [1]  *By "trademarks," the WG means "trademarks, service marks,
> certification marks and collective marks."*
>
> For purposes of clarity, separate or ancillary databases of the Trademark
> Clearinghouse Provider (or another provider) may include other marks, but
> those databases should not be used for Sunrise or Trademark Claims Notices
> under the RPMs. Registries may use those separate or ancillary databases to
> provide additional services but are not required to do so under the RPMs.
>
> (Appropriate corresponding changes will be percolated across the *Trademark
> Clearinghouse* Applicant Guidebook)
>
> -----------------
>
> Best, Kathy
>
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