[gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

Paul Keating Paul at law.es
Wed Feb 22 16:19:58 UTC 2017 

Perhaps and perhaps not.  I still see no reason to prevent us from asking.
Even if there is a confidentiality issue that can be sorted in any number of
ways.

Paul

From:  Lori Schulman <lschulman at inta.org>
Date:  Wednesday, February 22, 2017 at 5:07 PM
To:  Paul Keating <paul at law.es>, "J. Scott Evans" <jsevans at adobe.com>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  RE: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items
and updated documents from Working Group call of 15 February)

> Paul,
>  
> Before J Scott weighs in, I would imagine that any disclosure of any
> registrations would be a violation of confidentiality between the
> Clearinghouse and the Registrant.  It¹s been a while since I have personally
> registered anything in the TMCH but my understanding is that there is a
> promise of nondisclosure except in instances where claims notices would be
> generated to potential registrants of conflicting names.
>  
> Lori
>  
> 
> Lori S. Schulman
> Senior Director, Internet Policy
> International Trademark Association (INTA)
> +1-202-704-0408, Skype: lsschulman
>  
>  
> 
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of Paul Keating
> Sent: Wednesday, February 22, 2017 4:58 PM
> To: J. Scott Evans <jsevans at adobe.com>
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and
> updated documents from Working Group call of 15 February)
>  
> 
> J. Scott,
> 
>  
> 
> I see no reason why we cannot ask for this information.  It is a discreet set
> of data points that is of material importance.
> 
>  
> 
> Can you please provide an explanation for your opposition?
> 
>  
> 
> Paul
> 
>  
> 
>  
> 
> From: "J. Scott Evans" <jsevans at adobe.com>
> Date: Wednesday, February 22, 2017 at 3:32 PM
> To: Paul Keating <paul at law.es>
> Cc: Georges Nahitchevansky <ghn at kilpatricktownsend.com>, Mary Wong
> <mary.wong at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and
> updated documents from Working Group call of 15 February)
> 
>  
>> 
>> I am not in favor of asking the TMCH to disclose any marks that are
>> registered. I am not opposed to asking the TMCH if there are marks
>> fundamentally similar to our examples that registered.
>> 
>> Sent from my iPhone
>> 
>> 
>> On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul at law.es> wrote:
>>> 
>>> Then I s suggest we do both?
>>> 
>>>  
>>> 
>>> Send the examples AND ask for the list.
>>> 
>>>  
>>> 
>>> Paul
>>> 
>>>  
>>> 
>>> From: Georges Nahitchevansky <ghn at kilpatricktownsend.com>
>>> Date: Wednesday, February 22, 2017 at 2:00 PM
>>> To: "J. Scott Evans via gnso-rpm-wg" <jsevans at adobe.com>, Paul Keating
>>> <paul at law.es>, Mary Wong <mary.wong at icann.org>
>>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items
>>> and updated documents from Working Group call of 15 February)
>>> 
>>>  
>>>> 
>>>> +1
>>>> 
>>>>  
>>>> 
>>>> From: J. Scott Evans via gnso-rpm-wg
>>>> Sent: Wednesday, February 22, 2017 5:48 AM
>>>> To: Paul Keating; Mary Wong
>>>> Reply To: J. Scott Evans
>>>> Cc: gnso-rpm-wg at icann.org
>>>> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items
>>>> and updated documents from Working Group call of 15 February)
>>>>  
>>>> 
>>>> Team:
>>>>  
>>>> I disagree with Paul. I think asking Deloitte to tell us if the textual
>>>> elements of Rebecca¹s examples and for an explanation of their analysis
>>>> would be very enlightening and helpful.
>>>>  
>>>> J. Scott Evans
>>>>  
>>>> 
>>>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating
>>>> <paul at law.es>
>>>> Date: Wednesday, February 22, 2017 at 12:10 AM
>>>> To: Mary Wong <mary.wong at icann.org>
>>>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>>> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items
>>>> and updated documents from Working Group call of 15 February)
>>>> 
>>>>  
>>>> 
>>>> While a laudable effort imho this will not likely receive a useful
>>>> response. It might be more productive to simply request a list of those
>>>> 
>>>> Figurative marks that have been accepted.
>>>> 
>>>>  
>>>> 
>>>> Alternatively ask what rules are applied in practice to determine the
>>>> "prominent" textual aspects of a figurative mark.
>>>> 
>>>>  
>>>> 
>>>> The issue I feel is not the figurative containing textual elements
>>>> otherwise registrable. Rather we are really after a figurative mark used to
>>>> protect a textual element not otherwise protectable as a trademark.  E.g.
>>>> "Fast Cars" with a green squiggly mark to claim rights in fast cars to sell
>>>> automobiles. 
>>>> 
>>>> Sincerely, 
>>>> 
>>>> Paul Keating, Esq.
>>>> 
>>>> 
>>>> On Feb 22, 2017, at 7:47 AM, Mary Wong <mary.wong at icann.org> wrote:
>>>>> 
>>>>> Dear all,
>>>>>  
>>>>> I¹m sending this message on behalf of Rebecca Tushnet in relation to one
>>>>> Action Item from the 15 February Working Group call. This was for her to
>>>>> take the lead in suggesting some examples of design marks that we can send
>>>>> to Deloitte for their opinion on whether the examples will or will not
>>>>> likely be accepted into the TMCH.
>>>>>  
>>>>> Please review the attached examples and send your comments to this list.
>>>>> Thank you.
>>>>>  
>>>>> Cheers
>>>>> Mary
>>>>>  
>>>>> 
>>>>> From: Mary Wong <mary.wong at icann.org>
>>>>> Date: Monday, February 20, 2017 at 12:23
>>>>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>>>> Subject: Re: Action items and updated documents from Working Group call of
>>>>> 15 February
>>>>> 
>>>>>  
>>>>> Dear all,
>>>>>  
>>>>> This is just a gentle reminder to circulate your suggestions this week for
>>>>> follow up questions and clarifications for Deloitte, based on the Working
>>>>> Group¹s discussions to date of the tables for Categories 1 ­ 6.
>>>>>  
>>>>> To assist those who were not able to attend both sessions where the tables
>>>>> were discussed:
>>>>> ·        Wiki page containing call recording, transcript and updated table
>>>>> from 15 February (discussion of Categories 3 ­ 6):
>>>>> https://community.icann.org/x/TZ3DAw
>>>>> 
>>>>> ·        Wiki page containing call recording, transcript, AC chat, updated
>>>>> table from 8 February (last discussion of Categories 1 -2), and
>>>>> compilation of TMCH Dispute Resolution Procedures:
>>>>> https://community.icann.org/x/Q53DAw.
>>>>> 
>>>>>  
>>>>> Thanks and cheers
>>>>> Mary
>>>>>  
>>>>> 
>>>>> From: Mary Wong <mary.wong at icann.org>
>>>>> Date: Thursday, February 16, 2017 at 18:37
>>>>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>>>> Subject: Action items and updated documents from Working Group call of 15
>>>>> February
>>>>> 
>>>>>  
>>>>> Dear all,
>>>>>  
>>>>> Please find attached the updated Tabular Summary for Categories 3-6 for
>>>>> your review (also posted to the Working Group wiki page with notes and
>>>>> recordings for this call, at https://community.icann.org/x/TZ3DAw). Please
>>>>> also note the following action items, which are also reflected in the
>>>>> updated table.
>>>>>  
>>>>> Action Items:
>>>>>  
>>>>> ·        On Q7 (design marks) ­ Rebecca Tushnet to take the lead in
>>>>> developing a few examples of hypothetical design marks for sending to
>>>>> Deloitte for their views
>>>>> 
>>>>>  
>>>>> ·        On Q8 (Geographical Indicators) ­ Staff to confirm with OriGIn
>>>>> who may be able to submit G.I.s.
>>>>> 
>>>>>  
>>>>> ·        On Q9 (TM+50) ­ Working Group to review questions submitted by
>>>>> the Registries Stakeholder Group with a view toward agreement on whether
>>>>> to send them on to Deloitte
>>>>> 
>>>>>  
>>>>> ·        On Q14 (Accessibility) ­ Working Group to consider if there are
>>>>> additional/alternative sources that can provide us with more information.
>>>>> 
>>>>>  
>>>>> ·        [From last week] ­ please review the updated Tabular Summary for
>>>>> Categories 1 & 2 from last week and submit any follow up questions or
>>>>> suggestions for Deloitte to this mailing list. The updated document is
>>>>> available under Follow Up Notes from the wiki page notes of the call last
>>>>> week: https://community.icann.org/x/Q53DAw.
>>>>> 
>>>>>  
>>>>> ·        [From last week] ­ please review the TMCH Dispute Resolution
>>>>> Procedures and suggest areas for discussion or follow up to this mailing
>>>>> list. The updated document is available under Follow Up Notes from the
>>>>> wiki page notes of the call last week:
>>>>> https://community.icann.org/x/Q53DAw.
>>>>> 
>>>>>  
>>>>> Next Steps:
>>>>>  
>>>>> ·        Staff will compile additional suggestions received from Working
>>>>> Group members on possible questions and requests for follow up with
>>>>> Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last
>>>>> week) and for Categories 3-6. Please try to submit your feedback by close
>>>>> of business in your time zone on Tuesday 21 February at the latest so that
>>>>> we can have a full list ready as soon as possible.
>>>>> 
>>>>>  
>>>>> Thank you.
>>>>>  
>>>>> Cheers
>>>>> Mary
>>>>>  
>>>>> 
>>>>> From: Mary Wong <mary.wong at icann.org>
>>>>> Date: Tuesday, February 14, 2017 at 11:08
>>>>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>>>> Subject: Proposed agenda and documents for RPM Working Group call on 15
>>>>> February
>>>>> 
>>>>>  
>>>>> Dear all,
>>>>>  
>>>>> The proposed agenda for the next Working Group call, scheduled for 15
>>>>> February 2017 at 1700 UTC, is as follows:
>>>>>  
>>>>> 1.      Roll call (via Adobe Connect and phone bridge only); updates to
>>>>> Statements of Interest
>>>>> 
>>>>> 2.      Review table for Categories 3-6, with view to developing
>>>>> additional questions for Deloitte or that require further information
>>>>> 
>>>>> 3.      Next steps/next meeting
>>>>> 
>>>>>  
>>>>> Please note that the table for Agenda Item #2 had been circulated
>>>>> previously, on 6 February, and is also available on our Working Group wiki
>>>>> space here: https://community.icann.org/x/_pHRAw.
>>>>>  
>>>>> Please note also the Action Items from the meeting last week, which were
>>>>> as follows:
>>>>>  
>>>>> ·        Over the next week, WG members to review the table for Categories
>>>>> 1 & 2 and the discussions to date, in order for staff to compile and send
>>>>> all follow up questions to Deloitte before ICANN58 so as to have an
>>>>> informed discussion with them at ICANN58 (updated table was circulated on
>>>>> 10 February and is also available here:
>>>>> https://community.icann.org/x/_pHRAw)
>>>>> 
>>>>> ·        WG members to also review the TMCH Dispute Resolution Procedures
>>>>> and agree on any follow up questions for Deloitte (the Procedures were
>>>>> circulated on 10 February and are also available here:
>>>>> http://trademark-clearinghouse.com/dispute).
>>>>> 
>>>>>  
>>>>> Thanks and cheers
>>>>> Mary
>>>>>  
>>>>>  
>>>>> 
>>>>> <List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb
>>>>> 2017.docx>
>>>>> 
>>>>> _______________________________________________
>>>>> gnso-rpm-wg mailing list
>>>>> gnso-rpm-wg at icann.org
>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>  
>>>> 
>>>> 
>>>> 
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