[GNSO-RPM-WG] Proposal re Q8.

Wed Oct 2 17:03:01 UTC 2019

True, but I don’t see the relevance.

On Wed, Oct 2, 2019 at 12:52 PM Paul Keating <Paul at law.es> wrote:

> Greg,
>
>
>
> Regarding Statute or Treaty,  this is jurisdictionally based.  Statutes
> are not global by definition.  Treaties are not signed by all and in many
> cases allow for objections by individual nation states.
>
>
>
>
>
>
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Greg
> Shatan <gregshatanipc at gmail.com>
> *Date: *Wednesday, October 2, 2019 at 6:47 PM
> *To: *claudio di gangi <ipcdigangi at gmail.com>
> *Cc: *gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> "Marks protected by statute or treaty" is meant to cover the relatively
> limited instance where the rights to a specified mark are established in a
> statute or treaty and not (initially, at least) in a trademark office.  The
> key is that the specific mark must be stated in the statute or treaty
> itself and not in a list or registry established by the statute or treaty,
> and that it must be a "mark" (trademark, service mark, certification mark
> or collective mark).
>
>
>
> This was never meant to create trademark rights for non-trademarks.  6ter
> is a textbook example of what this provision does *not* cover.  GIs as a
> general class is another example of what this provision does *not* cover.
>
>
>
> If we need to we can go back to the original deliberations that produced
> this category.
>
>
>
> Right now, it's in danger of becoming a runaway train.
>
>
>
> Unfortunately, I have a business meeting in conflict with today's call and
> my ability to attend will be very limited at best.  I would really, really,
> really like to put this genie back in the bottle.
>
>
>
> It may (or may not) be desirable to offer Sunrise and Claims protection to
> national emblems or geographic indications or book titles or surnames or
> culturally significant words or common-law marks or works of art.  But this
> is not the way to get there.
>
>
>
> Greg
>
>
>
> On Wed, Oct 2, 2019 at 11:46 AM claudio di gangi <ipcdigangi at gmail.com>
> wrote:
>
> Paul T., all,
>
>
>
> I like how you think - this is an original/creative idea.
>
>
>
> It would appear to work well for U.S, but I’m unclear on status re every
> jurisdiction worldwide. Do we know whether every jurisdiction handles marks
> protected by statute or treaty in the same way as the PTO in the States, or
> may there be some exceptions?
>
>
>
> I agree with your point about the heavy lifting being done elsewhere, i.e.
> by staff or by the Implementation Recommendation Team (IRT) that will
> follow this PDP.
>
>
>
> In fact, I was thinking along the same lines (on the heavy lifting point)
> which led me to rely upon Mary’s suggested text for 3.2.3 (which she
> included in an email to the full WG a few weeks ago).
>
>
>
> Other solutions include keeping the existing text for 3.2.3 (as it
> currently appears in the AGB) or the text that Mary drafted (as contained
> in my proposal), with an added ‘disclaimer’ - “marks that constitute GIs or
> Appellations of Origin do not qualify under 3.2.3” or “marks that
> constitute GIs or Appellations of Origin do not qualify under this
> provision”.
>
>
>
> We can add that language in 3.2.3 itself, or in the Section that is below
> 3.2.1-3.2.4 in the AGB. I say this because if you look in the AGB, directly
> below 3.2.1-3.2.4, there are a set of provisions or rules that apply to the
> system overall. So we can add the ‘disclaimer’ there and not worry so much
> about the exact wording in 3.2.3, because that Section is applicable and
> governing. In both proposals, we have  made modifications to clarify or
> change some provisions in this Section, so we wouldn’t be breaking any new
> ground.
>
>
>
> In my personal view, this latter approach - of adding the disclaimer
> accomplishes the objective on Q#8.
>
>
>
> Cheers,
>
> Claudio
>
>
>
>
>
>
> On Wednesday, October 2, 2019, Paul Tattersfield <gpmgroup at gmail.com>
> wrote:
>
> Perhaps the heavy lifting could be done elsewhere?
>
> 3.2.3 Any word mark notified to a national trademark office as protected
> by a statute or treaty in effect at the time the mark is submitted to the
> Clearinghouse for inclusion
>
>
>
> On Wed, Oct 2, 2019 at 2:14 AM Tushnet, Rebecca <rtushnet at law.harvard.edu>
> wrote:
>
> In GI-world, they distinguish between levels of GI-ness.  Some geographic
> terms merely identify the geographic "source" of a product, while others
> indicate more in the way of specific qualities.  So "source indicator" is
> in fact widely used to describe GIs (though many GIs are said to be
> source-plus-some-other-quality).  Some examples
>
>
> https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical_indications.pdf
>
>
> https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf
>
> Geographical Indication Protection in the United States United States
> Patent and Trademark Office - uspto.gov
> <https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf>
>
> Geographical Indication Protection in the United States United States
> Patent and Trademark Office What Are “Geographical Indications”?
> “Geographical indications” (“GIs”) are defined at Article 22(1) of the
> World Trade
>
> www.uspto.gov
>
>
>
>
>
>
>
>
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
>
> *From:* Michael Graham (ELCA) <migraham at expediagroup.com>
> *Sent:* Tuesday, October 1, 2019 8:31 PM
> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; claudio di gangi <
> ipcdigangi at gmail.com>; Paul Tattersfield <gpmgroup at gmail.com>
> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* RE: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> Wondering out loud whether GIs are necessarily “source identifiers”.  My
> understanding is that they are identifiers of particular geographic
> locations, whereas trademarks are source identifiers.  GIs may be source
> identifiers, but to the extent they are then they would be considered
> trademarks.  So . . . am I missing something in the terminology?
>
>
>
> Michael R.
>
>
>
> [image: cid:image001.png at 01D49D39.23E390C0]
>
>
>
>
>
> *Michael R. Graham*
>
> Senior Counsel and Global Director,
>
> Intellectual Property, *Expedia Group*
>
> T +1 425 679 4330 | M +1 425 241 1459
>
> 333 108th Ave. NE | Bellevue | WA 98004
>
> Email: *migraham at expediagroup.com <migraham at expediagroup.com>*
>
>
>
>
>
> [image: cid:image002.png at 01D49D39.23E390C0]
>
>
>
> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Tushnet,
> Rebecca
> *Sent:* Tuesday, October 1, 2019 1:50 PM
> *To:* claudio di gangi <ipcdigangi at gmail.com>; Paul Tattersfield <
> gpmgroup at gmail.com>
> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> From my perspective, the key problem is that "source identifier"
> describes, among other things, GIs.  We can engage in special pleading
> against GIs and just carve them out, but I admit that leaves me a bit
> sour.  I also would note that the relevant statutes I've seen don't use the
> words "source identifier" either, so we are still shuffling off the
> interpretive weight to Deloitte.  (E.g., although the Red Cross also has TM
> registrations, the Red Cross US statute that has been mentioned in this
> discussion uses the word "use" to define one prohibited act, and "wears
> or displays ... for the fraudulent purpose of inducing the belief that he
> is a member of or an agent for the American National Red Cross" to define
> the other prohibited act.)
>
>
>
> For these reasons, I have come around to not wanting to add "source
> identifier" to the definition--I don't think it actually solves the problem
> and it might make things even less clear.  Other than that, I do think we
> have gotten a lot closer.
>
>
>
> 
>
>
>
>
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
>
> *From:* claudio di gangi <ipcdigangi at gmail.com>
> *Sent:* Tuesday, October 1, 2019 4:11 PM
> *To:* Paul Tattersfield <gpmgroup at gmail.com>
> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; gnso-rpm-wg <
> gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> Paul,
>
>
>
> I agree with you; and you have spotted one of the areas of divergence
> between my proposal and Rebecca's.
>
>
>
> My proposal includes alternative language on this provision - that I
> believe addresses your point, but I am interested in your perspective.
>
> Best regards,
> Claudio
>
>
>
>
>
> On Tue, Oct 1, 2019 at 4:00 PM Paul Tattersfield <gpmgroup at gmail.com>
> wrote:
>
> Rebecca, I believe in 3.2.3 you should not add the words "as trademarks"
> as the marks concerned are not trademarks. For example once such 6ter marks
> are communicated to the USPTO and are accepted it is not possible for any
> organization to register a trademark containing the mark and importantly
> that includes the originating entity itself. Instead an 89 serial is
> created so the mark turns up in an examining attorney’s search etc.
>
> Best regards, Paul
>
>
>
>
>
>
>
> On Tue, Oct 1, 2019 at 8:04 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
> wrote:
>
> This is the same text but with the subject line proper.
>
>
>
>
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
>
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