[gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)
Kathy Kleiman
kathy at kathykleiman.com
Tue Feb 28 23:55:23 UTC 2017
Hi Brian, a belated response to you email -- the answer to your
excellent questions is in the table Mary Wong just distributed. It's a
side-by-side comparison of the GNSO/Board-adopted policy, the Applicant
Guidebook language and Deloitte's policies/practices (where they could
be found). Looking forward to discussing tomorrow. Best, Kathy
On 2/23/2017 6:44 AM, Beckham, Brian 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>
>>> <mailto:gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating
>>> <paul at law.es> <mailto:paul at law.es>
>>> *Date: *Wednesday, February 22, 2017 at 12:10 AM
>>> *To: *Mary Wong <mary.wong at icann.org> <mailto:mary.wong at icann.org>
>>> *Cc: *"gnso-rpm-wg at icann.org" <mailto:gnso-rpm-wg at icann.org>
>>> <gnso-rpm-wg at icann.org> <mailto: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
>>> <mailto: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 <mailto:mary.wong at icann.org>>
>>> *Date: *Monday, February 20, 2017 at 12:23
>>> *To: *"gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>"
>>> <gnso-rpm-wg at icann.org <mailto: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
>>> <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 <mailto:mary.wong at icann.org>>
>>> *Date: *Thursday, February 16, 2017 at 18:37
>>> *To: *"gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>"
>>> <gnso-rpm-wg at icann.org <mailto: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)
>>> <https://community.icann.org/x/TZ3DAw%29>. 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
>>> <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
>>> <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 <mailto:mary.wong at icann.org>>
>>> *Date: *Tuesday, February 14, 2017 at 11:08
>>> *To: *"gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>"
>>> <gnso-rpm-wg at icann.org <mailto: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
>>> <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)
>>> <https://community.icann.org/x/_pHRAw%29>
>>>
>>> ·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)
>>> <http://trademark-clearinghouse.com/dispute%29>.
>>>
>>> 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 <mailto: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 <mailto:gnso-rpm-wg at icann.org>
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
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