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

Thu Feb 23 20:37:05 UTC 2017

To be clear,  I wasn't suggesting getting "verified copies" of the
trademark registration certificates -- just copies of the registrations
available on the uspto.gov website (for free).

Greg

On Thu, Feb 23, 2017 at 2:12 PM Mary Wong <mary.wong at icann.org> wrote:

> Hello all – in response to Brian and Greg, I’m forwarding the message
> below on behalf of Rebecca Tushnet, as her email does not seem to have
> reached the full mailing list.
>
>
>
> In addition, Working Group members may wish to review the final TMCH
> framework document that was published in the final version of the Applicant
> Guidebook (AGB) in June 2012, following previous versions that had appeared
> in earlier iterations (AGB v4 through 9) based on ICANN staff
> implementation of the STI recommendations. The final TMCH framework notes
> that the standards for inclusion into the TMCH are:
>
> 3.2.1 Nationally or regionally registered word marks from all
> jurisdictions.
>
> 3.2.2 Any word mark that has been validated through a court of law or
> other judicial proceeding.
>
> 3.2.3 Any word mark protected by a statute or treaty in effect at the time
> the mark is submitted to the Clearinghouse for inclusion.
>
> 3.2.4 Other marks that constitute intellectual property.
>
>
>
> Here is Rebecca’s email, in full:
>
>
>
> As I'm still having trouble posting to the list, I'd appreciate it if
> someone would forward this.  From the Recommendations of the Special TM
> Issues Review Team, 2009, reflecting both the rough consensus and the
> business constituency minority:
>
>
>
> The TC Database should be
>
> required to include nationally
>
> or multinationally registered “text mark” trademarks, from
>
> all jurisdictions, (including
>
> countries where there is no substantive review). (The
>
> trademarks to be included in
>
> the TC are text marks because
>
> “design marks” provide
>
> protection for letters and
>
> words only within the context
>
> of their design or logo and the
>
> STI was under a mandate not
>
> to expand existing trademark
>
> rights.)
>
>
>
> Many members of this working group believe that the TMCH shouldn't make
> "judgment calls" limiting registrants' entitlements under the TMCH system.
> This is an understandable conclusion, and one I'm inclined to endorse for
> ease of implementation, but one that has the practical effect of expanding
> the ability of registrants to control domain names beyond the goods and
> services for which their marks are registered.  At the very least, the same
> modesty of judgment counsels against the TMCH making judgments about what
> the important parts of a registered mark are, given the mandate not to
> expand rights.  If someone does have a registration for a word mark without
> design elements, they can submit it.
>
>
>
> In response to Greg Shatan’s note, I’m happy to add in additional
> information that would help Deloitte evaluate the registration, though I
> doubt I want to shell out for verified copies of the registrations at
> issue.  I have added in a question at the beginning of my list to ask for
> clarification of what qualifies as “prominent” in Deloitte’s inquiry.
>
>
>
>
>
> In response to Brian Winterfeldt’s specific concerns, I don’t think the
> issue the Working Group is concerned with is simply with “generic”
> terms—though given the TMCH’s coverage of domain names regardless of the
> underlying goods and services, the fact that PARENTS might not be generic
> for a magazine about parenting is not particularly significant, as our
> previous discussions of registrations for “and,” “the,” etc. indicate.
>
>
>
>
>
> I used “parents” because of Gruner + Jahr USA Pub. v. Meredith Corp., 991
> F.2d 1072, 1077 (2d Cir. 1993) (“[T]he district court ... properly
> distinguished between the strength of the trademark PARENTS and the weak,
> descriptive nature of what it called the ‘mere word “parents”.’ … [T]he
> trademark registration of the title PARENTS in its distinctive typeface did
> not confer an exclusive right to plaintiff on variations of the word
> ‘parent,’ such term being more generic than descriptive.”). I thought CARS
> was a strong additional suggestion because of the clear limit on Disney’s
> rights to the term with associated image.  I added FRUIT OF THE LOOM at J.
> Scott’s suggestion.  It seems to me that FRUIT OF THE LOOM makes a good
> test case precisely because of the issue Brian W. identifies: by using the
> graphic version we can see whether Deloitte is in fact making judgments
> about what’s “important” in the registration submitted to it. The question
> is not whether textual matter standing alone is registrable; the question
> is whether it is registered.  My understanding is that this was an
> important limit on the TMCH, which by consensus does not cover common-law
> rights that may exist in variants on a registered mark.  So this is a mark
> that could help us understand what Deloitte is doing.
>
>
>
>
>
> A small point about Brian W's statement that “our preliminary search did
> not yield a basic word mark for CARS owned by the same entity as the listed
> CARS design mark (Disney), this is likely because they only use the design
> mark in commerce and would not be able to show actual use in commerce of
> the basic word mark, a fundamental requirement of trademark registration in
> the US”: In fact, where a word mark is used only in one font or with one
> design, it can still be registered as a word mark (in standard character
> form) as long as the word standing alone is registrable.  Thus, use in
> commerce of a stylized version of a word constitutes “use in commerce” of
> the associated word. The barrier to Disney’s registration of CARS as a
> standard character mark is assuredly not “use in commerce”; it is the more
> fundamental issue of whether CARS can serve as a trademark without its
> recognizable stylization indicating the Disney franchise.  See Citigroup
> Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011)
> (explaining the scope of a standard character mark).
>
>
>
>
>
> I think it’s a great idea to add an example of “marks where the underlying
> word element is expressly disclaimed in the registration.” MUSIC has been
> suggested, which I think is a very good example, as well as stylized
> letters such as A.  The recently litigated OWN YOUR POWER case, where the
> Second Circuit noted that there was no claim to the words apart from their
> stylized presentation, says instead “[t]he color(s) light blue is/are
> claimed as a feature of the mark,” and so it is probably also worth adding.
>
>
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan <
> gregshatanipc at gmail.com>
> *Date: *Thursday, February 23, 2017 at 10:59
> *To: *"Beckham, Brian" <brian.beckham at wipo.int>
>
>
> *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)
>
>
>
> Brian,
>
>
>
> Thanks for asking that.  I'm sure it's "somewhere" we could find it
> eventually, but having it in this thread would be very helpful.
>
>
>
> Greg
>
>
>
> *Greg Shatan *C: 917-816-6428
> S: gsshatan
> Phone-to-Skype: 646-845-9428
> gregshatanipc at gmail.com
>
>
>
> On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <brian.beckham at wipo.int>
> wrote:
>
> Kathy, all, particularly further to Greg's concluding question (re
> different understandings of what we are trying to achieve), would you be so
> kind as to remind us what it was the GNSO said on this? Did the
> recommendations e.g. bar all marks with stylized text or design elements
> (which would seem in trademark law terms to be a somewhat misguided
> overcorrection) or was the recommendation concerned with marks in which the
> entire textual element was disclaimed? It seems that much of the discussion
> here on generic vs dictionary terms at least is rightly focused on the
> latter, but clarity would be welcome.
>
> Thanks!
>
>
>
> Brian
>
> On 22 February 2017 at 18:39:58 GMT, Kathy Kleiman <kathy at kathykleiman.com>
> wrote:
>
> I agree with J. Scott that asking Deloitte to tell us "if the textual
> elements of Rebecca’s examples and for an explanation of their analysis
> would be very enlightening and helpful." It is good to wrestle with real
> world issues through real world examples. Tx you, Rebecca, for providing
> this input.
>
> Re: Paul's suggestion, why not add to our questions for Deloitte the one
> he has shared: "what rules are applied in practice to determine the
> "prominent" textual aspects of a figurative mark?" These seems quite
> relevant to our work.
>
> Frankly, I think we have to wrestle too with the question of why Deloitte
> is accepting figurative marks at all -- particularly when the GNSO Policy
> Recommendations (as adopted by the GNSO Council and then the Board) appear
> to bar them in favor of text marks/word marks only. But that's a question
> for a different time...
>
> Best, Kathy
>
>
>
> On 2/22/2017 5:48 AM, J. Scott Evans via gnso-rpm-wg wrote:
>
> Team:
>
>
>
> I disagree with Paul. I think asking Deloitte to tell us if the textual
> elements of Rebecca’s 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> <gnso-rpm-wg-bounces at icann.org>
> on behalf of Paul Keating <paul at law.es> <paul at law.es>
> *Date: *Wednesday, February 22, 2017 at 12:10 AM
> *To: *Mary Wong <mary.wong at icann.org> <mary.wong at icann.org>
> *Cc: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg 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)
>
>
>
> 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,
>
>
>
> I’m 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 Group’s 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[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_TZ3DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=Qt2QTRs25jH_1CnKMQDKf2F7trz_uimEoIfoKfebP5s&e=>
>
> ·         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[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>.
>
>
>
>
> 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)[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_TZ3DAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=025Rt5ujT8eWdaiBWLQaAk3-xDpzR24t1l4DlLC9YGo&e=>.
> 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[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>.
>
>
>
>
> ·         [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[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>.
>
>
>
>
> *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[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=49rZxYXNglwZKhpVIrqQP4kKxD0f3M2LZaxSUlV7W_Q&e=>.
>
>
>
>
> 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)[community.icann.org]
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=_a59DAF6e_16_FbV-1zCG7E6SSf_itKWaJZFpbRTEh0&e=>
>
> ·         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)[trademark-clearinghouse.com]
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghouse.com_dispute-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=LHthSya6UTxD7UfKK5pOd0VfPW-Aatgp2_M2QycIEUE&e=>.
>
>
>
>
> 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
>
>
>
> _______________________________________________
>
> gnso-rpm-wg mailing list
>
> gnso-rpm-wg at icann.org
>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
> World Intellectual Property Organization Disclaimer: This electronic
> message may contain privileged, confidential and copyright protected
> information. If you have received this e-mail by mistake, please
> immediately notify the sender and delete this e-mail and all its
> attachments. Please ensure all e-mail attachments are scanned for viruses
> prior to opening or using.
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
> --

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170223/ba0cf430/attachment-0001.html>