[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Kathy Kleiman
kathy at kathykleiman.com
Wed Sep 18 14:59:13 UTC 2019
Great, tx Brian, and looking forward to our discussion today!
Kathy
On 9/18/2019 10:51 AM, BECKHAM, Brian wrote:
>
> Thanks Paul,
>
> And apologies Kathy if it was unclear that when I mentioned support,
> given the context of Zak withdrawing his proposal based on lack of WG
> uptake, I was referring to the support designation we had previously
> agreed for purposes of including a */recommendation/*, and not a proposal.
>
> Clearly both */proposals/* make the cut for purposes of soliciting
> comment/feedback. (Paul, hopefully this answers the comment in your
> second email.)
>
> Brian
>
> *From:*Paul Keating <Paul at law.es>
> *Sent:* Wednesday, September 18, 2019 4:45 PM
> *To:* Kathy Kleiman <kathy at kathykleiman.com>; gnso-rpm-wg at icann.org;
> BECKHAM, Brian <brian.beckham at wipo.int>
> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18
> September 17:00-18:30 UTC
>
> Brian,
>
> I second the point of submitting both for public comment and for the
> reasons noted by Kathy below.
>
> Paul Keating
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Kathy Kleiman
> <kathy at kathykleiman.com <mailto:kathy at kathykleiman.com>>
> *Date: *Wednesday, September 18, 2019 at 4:19 PM
> *To: *<gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>>,
> "BECKHAM, Brian" <brian.beckham at wipo.int <mailto:brian.beckham at wipo.int>>
> *Subject: *Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18
> September 17:00-18:30 UTC
>
> 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> <mailto:jason at esqwire.com>
> *Sent:* Wednesday, September 18, 2019 4:39 AM
> *To:* BECKHAM, Brian <brian.beckham at wipo.int>
> <mailto:brian.beckham at wipo.int>; Zak Muscovitch
> <zak at muscovitch.com> <mailto:zak at muscovitch.com>; 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
>
> 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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