[Gnso-igo-ingo-crp] Question about ICANN General Counsel report on USPTO practice relating to IGO identifiers protected by Article 6ter

Mon Sep 15 23:01:13 UTC 2014

Dear all,

Staff thought we should follow up on George¹s question regarding ICANN
General Counsel¹s point on the United States Patent & Trademark Office
(USPTO) process relating to IGOs and Article 6ter. We hope that the
following information from the USPTO will help:
http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Apr2014/TMEP-1200d1e
4645.xml

The link briefly describes generally how a country deals with a notification
of a protected IGO under Article 6ter (including the treaty-prescribed
period for national objections) as well as the USPTO¹s practice regarding
attempted trademark registrations in this regard.

Cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong at icann.org

From:  Phil Corwin <psc at vlaw-dc.com>
Date:  Monday, September 15, 2014 at 12:40 PM
To:  George Kirikos <icann at leap.com>, "gnso-igo-ingo-crp at icann.org"
<gnso-igo-ingo-crp at icann.org>
Subject:  Re: [Gnso-igo-ingo-crp] Attachments (Re: Agenda and documents for
WG meeting on Monday 15 September)

> Thanks for raising that, George, We can get into those details on today¹s
> call.
>  
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
> 202-255-6172/cell
>  
> Twitter: @VlawDC
>  
> "Luck is the residue of design" -- Branch Rickey
>  
> From: gnso-igo-ingo-crp-bounces at icann.org
> [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
> Sent: Monday, September 15, 2014 6:49 AM
> To: gnso-igo-ingo-crp at icann.org
> Subject: Re: [Gnso-igo-ingo-crp] Attachments (Re: Agenda and documents for WG
> meeting on Monday 15 September)
>  
> 
> It's unclear to me how General Counsel arrived at some of his conclusions. e.g
> for the United States and IGO Protections, (right-most column), it was stated
> (with no reference/authority) that:
> 
> "The US Patent and Trademark Office is required to refuse registrations of
> marks that conflict with registered marks of IGOs, so no registration is
> possible (once the marks are identified to the USPTO by a member country of
> the Paris Convention).  No special protection seems to exist to bar the
> delegation of top- or registration of second-level domains containing the IGO
> names or acronyms by ICANN, a registry or registrar."
> Yet, consider the example of the mark "IEA". It's registered by the
> International Energy Association, an IGO according to:
> 
> http://en.wikipedia.org/wiki/List_of_intergovernmental_organizations
> 
> via the Article 6ter convention:
> 
> http://tsdr.uspto.gov/#caseNumber=89001408&caseType=SERIAL_NO&searchType=statu
> sSearch
> with a filing on March 20, 2002. Yet, the identical mark "IEA" was registered
> 2 years later (on  May 4, 2004):
> 
> http://tsdr.uspto.gov/#caseNumber=76518784&caseType=SERIAL_NO&searchType=statu
> sSearch
> by a different entity, for "arranging and providing for the return of mortal
> remains to designated locations". Reviewing the documents for that
> application, it appears that markholder sought no special permission from the
> International Energy Association, yet was not refused the mark.
> I think this hinges on the meaning of "conflict", perhaps -- i.e there's no
> conflict if the goods and services are unrelated. So, General Counsel's
> analysis might be correct if it permits concurrent registrations of unrelated
> goods/services for the same mark. Does that make sense? Thoughts?
> I'm sure there are other examples out there (it took me 5 mins to find that
> one).
> 
> 
> Sincerely,
> 
> George Kirikos
> 416-588-0269
> 
> http://www.leap.com/
> 
>  
> 
> 
> 
> 
> 
>  
> 
> On Mon, Sep 15, 2014 at 6:23 AM, George Kirikos <icann at leap.com> wrote:
> 
> This was a considerable amount of material to send just 1 business day before
> a call. I hope everyone had sufficient time to review. This is why I asked
> during the chat:
> 
> http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-September/000041.html
> 
> "George Kirikos:Can we have the draft work plan well in advance of the next
> meeting?"
>  George Kirikos:(if we're just seeing it for the first time next Monday, we
> won't be able to put forth meaningful comments/analysis)
> Sincerely,
> George Kirikos
> 416-588-0269
> http://www.leap.com/
> 
> 
> 
>  
> 
> On Fri, Sep 12, 2014 at 5:08 PM, Mary Wong <mary.wong at icann.org> wrote:
>> 
>> Apologies for forgetting the Work Plan attachments the first time!
>> 
>>  
>> 
>> Cheers
>> 
>> Mary
>> 
>>  
>>  
>> 
>>  
>> 
>> From: Mary Wong <mary.wong at icann.org>
>> Date: Friday, September 12, 2014 at 5:01 PM
>> To: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
>> Subject: [Gnso-igo-ingo-crp] Agenda and documents for WG meeting on Monday 15
>> September
>> 
>>  
>>> 
>>> Dear WG members,
>>> 
>>>  
>>> 
>>> Please find below a proposed agenda for the upcoming WG call on Monday 15
>>> September, which staff have suggested to our Co-Chairs but have not yet had
>>> a chance to discuss more fully. As such, it is subject to any changes that
>>> they may wish to make between now and our call:
>>> 
>>> 1. Roll Call/Updates to SOIs
>>> 2. Review Work Plan (see attached Work Plan Extract and full Work Plan Chart
>>> on which the Extract is based; we will use the Extract to walk the WG
>>> through each proposed phase on Monday)
>>> 3. Discuss outcomes of prior research (see the list on the WG wiki space at
>>> https://community.icann.org/x/DrvhAg, as further explained below)
>>> 4. Next steps
>>> For agenda item #3, we have added some documents comprising research,
>>> findings and other reports used by the original IGO-INGO PDP WG for its
>>> Final Report that was issued in November 2013. Among the documents added, WG
>>> members may wish to note in particular:
>>> 
>>>  
>>>> 
>>>> (1) the ICANN General Counsel¹s research report to that WG from May 2013
>>>> (https://community.icann.org/download/attachments/48347918/ICANN%20GCO%20Re
>>>> port%20to%20IGO%20INGO%20PDP%20WG%20May%202013.doc?version=1&modificationDa
>>>> te=1410554576915&api=v2);
>>>> 
>>>> (2) Annex 4 of the Final Issue Report that led to the initiation of that WG
>>>> from October 2012
>>>> (https://community.icann.org/download/attachments/48347918/Final%20GNSO%20I
>>>> ssue%20Report%20on%20the%20Protection%20of%20International%20Organization%2
>>>> 0Names%20in%20New%20gTLDs.pdf?version=1&modificationDate=1410554706870&api=
>>>> v2);
>>>> 
>>>> (3) The OECD¹s report on cybersquatting to WIPO¹s Standing Committee on
>>>> Trademarks (SCT) from 2002
>>>> (https://community.icann.org/download/attachments/48347918/OECD%20Report%20
>>>> on%20Cybersquatting%20to%20WIPO%20SCT%202002.pdf?version=1&modificationDate
>>>> =1410554353329&api=v2);
>>>> 
>>>> (4) The Red Cross movement¹s report on special protections to WIPO¹s SCT
>>>> from 2002 
>>>> (https://community.icann.org/download/attachments/48347918/IFRC%20Report%20
>>>> to%20WIPO%20SCT%20on%20Special%20Protections%202002.pdf?version=1&modificat
>>>> ionDate=1410554389301&api=v2); and
>>>> 
>>>> (5) The WIPO Secretariat¹s report on IGO protections, also from 2002
>>>> (https://community.icann.org/download/attachments/48347918/WIPO%20Secretari
>>>> at%20Report%20on%20IGO%20Protections%202002.pdf?version=1&modificationDate=
>>>> 1410554411330&api=v2).
>>> 
>>>  
>>> 
>>> ICANN staff will summarize some of the key findings from these documents for
>>> further WG review and discussion under agenda item #3. We hope that this
>>> will provide a useful basis for WG members to decide on next steps in
>>> accordance with the proposed Work Plan (agenda item #4).
>>> 
>>>  
>>> 
>>> Thanks and cheers
>>> 
>>> Mary
>>> 
>>>  
>>> 
>>> Mary Wong
>>> 
>>> Senior Policy Director
>>> 
>>> Internet Corporation for Assigned Names & Numbers (ICANN)
>>> 
>>> Telephone: +1 603 574 4892
>>> 
>>> Email: mary.wong at icann.org
>>> 
>>>  
>>> 
>>>  
>>> 
>>>  
>>  
>> _______________________________________________
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>> Gnso-igo-ingo-crp at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
>  
>  
> 
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