[GNSO-RPM-WG] Q#8

[Scott Austin]

Kathy:
I tend to agree with John on the simplification but Rebecca does have a point on whether it is our role to suggest expanding the services of Deloitte. I don’t see the harm if it clarifies the process and provides an option for GI’s to obtain some form of protection.
To that end I have suggested a minor change to your footnote in the attached markup as it appears we are trying to provide an option for inclusion of GI in a non Claims/Sunrise context. To what extent they benefit or a protection mechanism remains unclear to me for further development. Also if the comments at the end are intended to be included perhaps conform would be more fitting than percolate (but given the pace perhaps a geological term is more appropriate).
In addition, is it the intention that footnote 1 in your text would become a defined term, as perhaps the draft should note that and locate it in the body of the TMCH standards where definitions are located.
Claudio provided a list of intellectual property categories in his email that omitted copyright and I wondered if that was intentional as it relates to GI’s? We may want to add copyright to his intellectual property categories in his email (especially if patents and trade secrets are included) as those “other” registrations and rights have been used to protect commerce sometimes as an add on for DMCA purposes or in lieu of TM registrations where conflicts over words or regulatory prohibitions (e.g. cannabis) may force a creative alternative.
Best regards,
Scott

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From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Kathy Kleiman
Sent: Tuesday, September 17, 2019 10:52 AM
To: gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] Q#8


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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