[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 17:19:26 UTC 2017 

As George has noted there are many work-arounds to any potential issue.

However, none of the concerns I have heard weigh in favor of not asking for
the information.

Sincerely,

Paul Raynor Keating, Esq.

Law.es <http://law.es/>

Tel. +34 93 368 0247 (Spain)

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email:  Paul at law.es

 

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From:  "J. Scott Evans" <jsevans at adobe.com>
Date:  Wednesday, February 22, 2017 at 5:56 PM
To:  Lori Schulman <lschulman at inta.org>
Cc:  Paul Keating <paul at law.es>, "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)

> Exactly 
> 
> Sent from my iPhone
> 
> On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman at inta.org> wrote:
> 
>> 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
>>  
>> <image001.jpg>
>>  
>> 
>> 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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