[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC

Wed Sep 18 14:17:31 UTC 2019

Hi Brian,

Respectfully, when Phil surveyed our community for support, both 
proposals - the Shatan *and *the Muskovitch/Kleiman Proposal -- had 
considerable support.  One had deeper support (within one SG). One had 
broader support, across a range of SGs and members, including 
commercial, noncommercial, registries and academics. Both certainly met 
the standard of support that we have used in other settings -- and we 
have moved proposals with far less support out for public comment.

That said, if there is an interim way that we can navigate on this call, 
great!  If there is a way to stop the Deloitte from extracting ordinary 
words and letters from composite marks and entering them into the TMCH, 
that seems to a joint and shared goal.

Quick recollection: we know from questionnaires of the WG that 
TMCH/Deloitte's policy is to pull ordinary words from composite marks 
(figurative, stylized, design, word+design marks -- various terms used 
by our various members). We also know from the Analysis Group that the 
TMCH database includes some of the most common dictionary terms and 
generic terms such as love, hotel and one.

However, I hear what you are saying -- and wonder with you how can we 
protect current brand owners and future brand owners (noting that future 
brand owners are likely to use many ordinary and dictionary words in 
their names)? Resolution of this design mark issue -- and its questions 
-- is key.

Best, Kathy

On 9/18/2019 9:44 AM, BECKHAM, Brian wrote:
>
> Thanks Jason,
>
> In advance of today’s call, an observation:  on the one hand it seems 
> we are at a bit of a crossroads (both the “original 
> Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise 
> proposal” were rejected by a substantial number of WG members), and on 
> the other hand, I wonder if there may be yet some room for agreement. 
>  In that respect, I would note the following as possible areas of 
> convergence:
>
> 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
>
> *_From the (revised) Kleiman/Muscovitch proposal 
> <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605391/Kleiman%20Muscovitch%20Proposal%20Compare%20Doc.pdf>_**:*  
> “If the applicant has a trademark registration in a national system 
> that does not differentiate between word marks and other marks (e.g., 
> stylized, design plus, and figurative marks), they could submit 
> evidence, such as information from a national registry about its 
> classifications, to show that the trademark registration confers 
> rights over the words claimed as such, not limited to words + other 
> elements”
>
> *_From the Shatan proposal 
> <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605390/Open%20TMCH%20Charter%20Questions%20-%2027%20Aug%202019.pdf>_**: 
> *“The Trademark Clearinghouse should not accept for inclusion marks 
> where all textual elements are disclaimed and as such are only 
> protectable as part of the entire composite mark including its 
> non-textual elements”
>
> Especially for purposes of today’s call, I wonder if you and WG 
> members might give some consideration to whether the Shatan proposal 
> shares the same foundational principle as the (revised) 
> Kleiman/Muscovitch proposal.
>
> If so, perhaps so as to have an agreed principle for purposes of our 
> Initial Report, proponents of the (revised) Kleiman/Muscovitch 
> proposal could agree to the Shatan proposal (even if they feel it 
> should go further in certain respects)?
>
> 2) clarity on text/non-standard character marks
>
> Separately, it seems clear that some degree of definition on 
> text/non-standard character marks (we have also seen the terms: 
> composite, figurative, stylized, design, word+design, etc., used) 
> would be useful – at least I do not recall anyone objecting to this 
> suggestion.
>
> I look forward to your presentation today, and wonder if we might 
> still find some agreement!
>
> Brian
>
> *From:*Jason Schaeffer <jason at esqwire.com>
> *Sent:* Wednesday, September 18, 2019 4:39 AM
> *To:* BECKHAM, Brian <brian.beckham at wipo.int>; 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 18 
> September 17:00-18:30 UTC
>
> Hi Brian,
>
> Please note that in Zak’s absence (as he is travelling and may not be 
> joining the call) I have been asked to present on his behalf. Although 
> I personally believed that we were making progress on some of these 
> points on last week’s WG call, nonetheless given the apparent lack of 
> compromise with the IPC, you are correct that the compromise proposal 
> has been withdrawn and the attached Kleiman/Muscovitch proposal 
> remains for consideration and comment.
>
> Kindly refer to the “original” September 4^th proposal (attached) to 
> address the topic of the TMCH and word marks v. design marks.
>
> Thanks,
>
> Jason
>
> *From:*GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] *On Behalf 
> Of *BECKHAM, Brian
> *Sent:* Tuesday, September 17, 2019 9:28 AM
> *To:* Zak Muscovitch; Julie Hedlund; gnso-rpm-wg at icann.org 
> <mailto:gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 
> September 17:00-18:30 UTC
>
> Thanks very much Zak for this heads up that you are withdrawing your 
> “compromise proposal” given the lack of additional interest in it.
>
> In the interests of time, and personally (while I am certain Phil and 
> Kathy would agree), I want to say that it was encouraging to hear that 
> you and others attempted offline to bring this together with other 
> proposals (e.g., Greg’s).
>
> Your below withdrawal of course raises the question of where this 
> leaves us on the earlier “Kleiman / Muscovitch” proposal, in 
> particular given that the now-withdrawn proposal was already an 
> attempt to garner support for a compromise on the earlier “Kleiman / 
> Muscovitch” proposal.
>
> By way of background, as was discussed during a call with Staff and 
> our WG liaisons (incoming and outgoing), we feel we need to recognize 
> when there may be diverging views and that wide agreement on a 
> compromise proposal may not be possible (in which case alternate views 
> can be recorded, and public comments sought).
>
> In that light, have you (and Kathy) considered the possibility – even 
> if per your below message you still support it – of also withdrawing 
> the “Kleiman / Muscovitch” proposal in advance of the call, or do you 
> nevertheless consider brief further discussion on that would in the 
> circumstances still be necessary and/or useful (if only as a last 
> attempt at compromise/to cover this off)?
>
> Brian
>
> *From:*GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org 
> <mailto:gnso-rpm-wg-bounces at icann.org>> *On Behalf Of *Zak Muscovitch
> *Sent:* Tuesday, September 17, 2019 5:23 AM
> *To:* Julie Hedlund <julie.hedlund at icann.org 
> <mailto:julie.hedlund at icann.org>>; gnso-rpm-wg at icann.org 
> <mailto:gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 
> September 17:00-18:30 UTC
>
> Dear WG members, staff and co-chairs,
>
> Since I may not be able to attend the upcoming call this Wednesday, I 
> want to let you know that since last week’s call, I have not become 
> aware of any additional interest in the ‘compromise’ proposal which I 
> had circulated and which we had discussed on last week’s call (i.e. 
> the one that allowed ‘design marks’ into TMCH but didn’t afford 
> Sunrise priority). Accordingly, I am withdrawing it and continue to 
> support the first proposal, namely the ‘Kleiman / Muscovitch proposal 
> as revised (see; 
> https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605391/Kleiman%20Muscovitch%20Proposal%20Compare%20Doc.pdf).
>
> Yours truly,
>
> Zak Muscovitch
>
> ICA General Counsel
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org 
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Julie Hedlund 
> <julie.hedlund at icann.org <mailto:julie.hedlund at icann.org>>
> *Date: *Saturday, September 14, 2019 at 1:04 AM
> *To: *"gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>" 
> <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>>
> *Subject: *[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 
> September 17:00-18:30 UTC
>
> Dear RPM WG members,
>
> Please find the proposed agenda and materials for the WG meeting on 
> Wednesday, 18September at 17:00-18:30 UTC.
>
> For ease of reference, here are the actions from the meeting on 
> 11September:
>
> **
>
> *Actions:* WG members should continue consideration and discussion of 
> Open Charter Questions 7 and 8 (see attached documents and discussions 
> on the list) and review the discussion from the calls on 04 and 11 
> September via the Zoom chat, recording, and transcript (see the 
> posting on the wiki at: 
> https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG.
>
> Proposed Agenda:
>
>  1. Review Agenda and Updates to Statements of Interest
>  2. Determine Support forand finalize discussion onproposals 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 – Finalize Discussion on**Original and **Revised
>         Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan*
>       * *Question 8 –**Finalize Discussion on* *Proposals from Paul
>         McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi*
>  3. AOB
>
> Best Regards,
>
> Mary, Julie, Ariel
>
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