[Gnso-newgtld-wg] Generic words belong to everyone in a business or industry

trachtenbergm at gtlaw.com trachtenbergm at gtlaw.com
Tue Feb 18 19:30:22 UTC 2020


Just for clarity, after all of us have suffered through endless dissecting and re-arguing every other topic and issue including many where there was clearly no consensus and following the Newman rule would have permitted us to simply move on to the next topic, we are now following the Newman rule again when doing so would achieve the result you want?

Best regards,

Marc H. Trachtenberg
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
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Mobile 773.677.3305
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[Greenberg Traurig]

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Kathy Kleiman
Sent: Tuesday, February 18, 2020 12:53 PM
To: Aikman-Scalese, Anne <AAikman at lrrc.com>; gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry


Hi Anne,

Per the discussion in the WG and on the chat, I don't agree that this is the right assessment at all. The Board adopted policy in 2012, and ICANN Org, Board and Community did followed it and dozens of closed applications became open in Round 1. Far more important than the order of processing of applications (an implementation issue), this is a fundamental policy issue. The Board acted, with enormous public input during a formal comment period, and then created the bar. The default by the Newman rule and everything else we follow is to keep this policy, and practice of 2012, absent some overwhelming reason to change it. In all these months, no overwhelming need or agreement has materialized.

Best, Kathy
On 2/18/2020 12:16 PM, Aikman-Scalese, Anne wrote:
HI Kathy,
I do think it’s important for the WG to understand what Jeff’s position is procedurally on this topic.  It appears to me that Paul is correct that there was no policy against Closed Generics in 2012 and that the Board resolution is limited to the 2012 round.  So if we stick with the “ground rules” of the PDP, it appears that the next round will be “open season” for Closed Generic applications.  This is especially important to consider now that the Working Group has taken a “rough consensus” position (with some of us dissenting)  that going forward, if a string is applied for in the next round, that application will act as a complete bar to applications for the same string in any subsequent round.

I would strongly advocate for skipping this topic in the next call and scheduling it for the F2F meeting.


From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org><mailto:gnso-newgtld-wg-bounces at icann.org> On Behalf Of Kathy Kleiman
Sent: Tuesday, February 18, 2020 8:36 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry


As we revisit the topic of Closed Generics, I would like to share a few thoughts as a reminder on how this issue (of "generic words") has been dealt with in other forums. This is a long-established issue...

1) Trademark Manual of Examining Procedure, US Trademark Office:

"Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register." 807.14(e)(ii)

2) Our own Community Objection process reviewed and raised the same deep concerns for gTLDs in which the applicant (a competitor in a field)

ICC New gTLD Community Objections determination:  "The establishment of unrestricted, exclusive rights to a gTLD that is strongly associated with a certain community or communities, particularly where those communities are, or are likely to be, active in the Internet sphere seems to me inherently detrimental to those communities' interests."  [Note: the "communities" being referred to here are commercial communities.  The issue of a closed .MOBILE was raised by the CTIA which represents the US mobile wireless industry.  1-1316-6133

Best, Kathy


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