[GNSO-RPM-WG] Proposal re Q8.

Mon Oct 14 22:04:53 UTC 2019

Paul,

I think the point is that 6ter only creates a “negative trademark right.”
TMEP 1205.02 states if a 6ter “designation” is accepted by the USPTO, “it
is entered into the USPTO records to assist USPTO examining attorneys” and
“the designation Is assigned a serial number in the “89” series code (I.e.,
serial numbers beginning with the digits “89,” sometimes referred to as
“non-registrations”).”

This is a non-registration of a non-trademark “designation” for the sole
purpose of advising examiners of a negative right.  Not “word marks” and
not a “comprehensive level of protection.”

As for the “additional suggestion” you mention, it was not one I made, but
I suppose it was useful in assembling your parallel construction of what is
in reality an apples and oranges comparison.

In sum, there is a significant distinction between  Q7 and Q8, not a
disconnect.

Best regards,

Greg

On Mon, Oct 14, 2019 at 5:39 PM Paul Tattersfield <gpmgroup at gmail.com>
wrote:

> Greg, it seems to me there is a disconnect between Q7 and Q8
>
> In Q7 a proposal from a major stakeholder group is asking the community to
> clarify/extend RPM protections from ‘pure’ word marks to marks with some
> ‘non pure’ word mark elements, which of course may have in some instances
> been requested as part of a registration strategy to get around the problem
> of where registration of a ‘pure’ word mark
>
would not initially be possible.
>
> Whereas here in Q8 the view being expressed is, others (in this case
> minority working group stakeholders) should have their ‘pure’ word marks
> excluded even though measures to protect them are specifically included* in
> a convention in force since 1884 with a 177 nation states as contracting
> parties and which the USPTO chooses to reflect the wishes of those
> signatories to the treaty through a comprehensive level of protection in
> the 89 serials. With an additional suggestion being that that any language
> which permits their inclusion may run the risk that somehow their other
> signs and marks with ‘non pure’ word mark elements may be inadvertently
> allowed in to the TMCH.
>
> Best regards,
>
> Paul
>
> *Paris Convention for the Protection of Industrial Property (1883)
>  6ter (1)(b) “…abbreviations, and names, of international
> intergovernmental organizations..”
>
> On Sun, Oct 13, 2019 at 3:37 AM Greg Shatan <gregshatanipc at gmail.com>
> wrote:
>
>> Adding a name or acronym to 6*ter* of the Paris Convention is not
>> similar to registration of trademarks.  6*ter* creates no substantive
>> legal right.  6*ter *does not create trademarks, even broadly defined.  6
>> *ter *applies to "armorial bearings, flags, other emblems,
>> abbreviations, and names of international intergovernmental organizations"
>> and to "armorial bearings, flags, and other State emblems, of the countries
>> of the Union, official signs and hallmarks indicating control and warranty
>> adopted by them, and any imitation from a heraldic point of view." Not
>> trademarks.
>>
>> 6*ter* does not provide an appropriate basis for entry into the
>> Trademark Clearinghouse.
>>
>> That the proposal excludes the unregistered marks of IGOs is a feature,
>> not a bug.
>>
>> I'll point up the thread to Mary Wong's email, which reports on similar
>> points.
>>
>> Best regards,
>>
>> Greg
>>
>> On Sat, Oct 12, 2019 at 5:42 PM Paul Tattersfield <gpmgroup at gmail.com>
>> wrote:
>>
>>> The GAC have been very clear that they [rightly] wish IGOs to enjoy
>>> access to ICANN mandated RPMs. The registration of trademarks simply
>>> evidences the existence of marks of the underlying goods and services. 6ter
>>> of the Paris Convention evidences IGO marks in a similar way.
>>>
>>> UDRP is very well drafted there is nothing in it that precludes a
>>> determination involving unregistered marks whereas the TMCH as a matter of
>>> process requires word marks to be evidenced prior to submission for use in
>>> the RPMs (registered, court validated etc.).
>>>
>>> There seems to be degree of concern that there may be a [continuing]
>>> misunderstanding by the TMCH operators of what should and should not be
>>> included and that more precise language will be required for 3.2.3 and this
>>> as presently proposed would exclude the unregistered marks of IGOs.
>>>
>>> I appreciate there are only a relatively small number of IGOs however
>>> some of them are very well known such as the UNHCR, NATO, Council of
>>> Europe, African Union, European Union, World Health Organization, World
>>> Trade Organization, United Nations etc.
>>>
>>> With the above in mind Rebecca, would the following additional
>>> subsection be acceptable to your proposal?
>>>
>>> 3.2.3 (b)* Word marks of treaty organizations protected under 6ter of
>>> the Paris Convention and notified to a national trademark office
>>>
>>>
>>> [*Again section numbering and ordering can be tidied later but the new
>>> subsection should be one that flows to 7.1 & 7.2 and the RPMs.]
>>>
>>> On Fri, Oct 11, 2019 at 8:57 AM Paul Keating <paul at law.es> wrote:
>>>
>>>> Thank you Mary
>>>>
>>>> However, to clarify, the treaty allows any member to list an acronym.
>>>> There is no requirement that it be otherwise registered or treated as a
>>>> trademark/service mark (even in the “sponsoring member state). It also
>>>> allows members to object to any specified acronym.
>>>>
>>>> The USPTO’s position is that such acronyms are merely common law claims
>>>> which require proof or a formal registration as a trademark.
>>>>
>>>> For these (and other) reasons the WG on this issue (of which I was a
>>>> part) declined to grant them any special rights under the UDRP other than
>>>> to the extent the holder could satisfy the requirements for a common law
>>>> trademark.
>>>>
>>>> I see no reason for GIs to be treated any differently.
>>>>
>>>> And of course these same issues should preclude the holder from
>>>> participating in the TMCH process.
>>>>
>>>> Sent from my iPhone
>>>>
>>>> On 10 Oct 2019, at 23:58, Mary Wong <mary.wong at icann.org> wrote:
>>>>
>>>> 
>>>>
>>>> Dear all,
>>>>
>>>>
>>>>
>>>> I hope it’s appropriate for staff to comment here, as a relatively
>>>> similar discussion took place in the IGO-INGO Curative Rights PDP. As with
>>>> RPMs, the fundamental principle was that any domain name policy protections
>>>> should reflect, and not expand, existing legal rights. The issue was the
>>>> existence of substantive legal rights (if any) in the names, acronyms,
>>>> signs and emblems of international organizations (both governmental and
>>>> non-governmental), e.g. the Red Cross, other NGOs, agencies of the United
>>>> Nations, other international organizations established by treaty, etc. The
>>>> question was whether the sort of legal protections offered by Article 6ter
>>>> of the Paris Convention for the Protection of Industrial Property are
>>>> equivalent to, or confer, substantive legal rights (Article 6ter obligates
>>>> member states to, in part, *“refuse or to invalidate the registration,
>>>> and to prohibit by appropriate measures the use… either as trademarks or as
>>>> elements of trademarks … emblems, abbreviations and names of international
>>>> intergovernmental organizations”*).
>>>>
>>>>
>>>>
>>>> Legal commentators have noted that this treaty provision does not
>>>> itself create an industrial property right; rather, it creates an
>>>> obligation for states to prevent third party registrations of the protected
>>>> names, abbreviations and so on as trademarks. In addition, as the treaty is
>>>> not self-executing, it does not confer a right of action in member states
>>>> unless those states enact legislation that allow the protected
>>>> organizations such a means of enforcement. Finally, it may also not be
>>>> enough to rely on a notification procedure, since that may simply indicate
>>>> the existence of a form of protection, and not necessarily a substantive
>>>> right.
>>>>
>>>>
>>>>
>>>> Therefore, and in line with what Rebecca has noted, a treaty provision
>>>> that does not clearly indicate that a mark is a trademark could place it
>>>> into a similar type of “protected” category as geographical indicators,
>>>> unless there exists specific national legislation that actually specifies
>>>> it to be a trademark. This could be the case, for instance, for an NGO such
>>>> as the Red Cross or the International Olympic Committee, where the
>>>> applicable international treaties may not explicitly state that they are
>>>> trademarks, but one or more national statutes may do.
>>>>
>>>>
>>>>
>>>> Cheers
>>>>
>>>> Julie, Ariel & Mary
>>>>
>>>>
>>>>
>>>> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Paul
>>>> Tattersfield <gpmgroup at gmail.com>
>>>> *Date: *Thursday, October 10, 2019 at 17:46
>>>> *To: *"Tushnet, Rebecca" <rtushnet at law.harvard.edu>
>>>> *Cc: *gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>>> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.
>>>>
>>>>
>>>>
>>>> *“I don't see how that's different conceptually from "the marks that
>>>> the national GI Registry accepts,"* - It’s different because it’s the
>>>> marks of the specific [treaty] organization, rather than a registry full of
>>>> third party marks / GIs etc.
>>>>
>>>> What compounds the problem is the Paris Convention requires that a
>>>> state refuse to register designations that have been notified (deposited)
>>>> pursuant to Article 6*ter* and to which the state has notified
>>>> (transmitted) no objections.
>>>>
>>>> eg. the UNHCR 89 serial 89000825 which effectively blocks everyone;
>>>> even their own organizations’ trademark applications e.g. 77663317  for
>>>> “UNHCR BLUE KEY” which was refused /  had to be withdrawn.
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> But then the acronym is only "protected by" the treaty/statute in the
>>>> same way that unregistered marks are "protected by" Lanham Act 43(a) in the
>>>> US--I'd be willing to say that a statute that says "the United Nations
>>>> Human Rights Commission and its acronym" specifies UNHRC, but not that "the
>>>> marks of the United Nations Human Rights Commission" specifies what's to be
>>>> protected.  I don't see how that's different conceptually from "the marks
>>>> that the national GI Registry accepts," which I think there is consensus
>>>> should not count as protected by statute.  Those GIs are, as far as I can
>>>> tell, often sent to national TM registries so it seems to me that your
>>>> proposal puts them right back in.
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>> 703 593 6759
>>>> ------------------------------
>>>>
>>>> *From:* Paul Tattersfield <gpmgroup at gmail.com>
>>>> *Sent:* Thursday, October 10, 2019 3:52 PM
>>>> *To:* claudio di gangi <ipcdigangi at gmail.com>
>>>> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; Michael Graham
>>>> (ELCA) <migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>>>
>>>>
>>>>
>>>> Rebecca, The danger of posting on the fly during the WG call, sorry
>>>> ‘specified in’ would have too limited scope, for example an organization’s
>>>> acronym may not be actually spelt out in the body of the treaty text.
>>>>
>>>> Claudio, The scope needs to be defined sufficiently precisely for it
>>>> not to matter, because it is impossible to second guess future statutes.
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi at gmail.com>
>>>> wrote:
>>>>
>>>> Paul,
>>>>
>>>>
>>>>
>>>> I didn't catch/understand your earlier response on the uniformity of
>>>> this approach by every trademark office in the world.
>>>>
>>>>
>>>>
>>>> Have you confirmed whether every TMO is notified and keeps a separate
>>>> record of the marks protected by statute/treaty under their national laws,
>>>> in the same approach as the U.S. or EU?
>>>>
>>>>
>>>>
>>>> Thanks,
>>>> Claudio
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup at gmail.com>
>>>> wrote:
>>>>
>>>> ‘specified in’ would be ok.Personally I wouldn't define trademark here.
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> I could get comfortable with "specified in" but "established" seems
>>>> wiggly to me--how would you feel about "specified in" instead? Relatedly,
>>>> would you propose to not define trademark?  Given its use through the AGB,
>>>> I'd still be in favor of a definition for greater certainty (understanding
>>>> that we have a separate issue about the meaning of "word mark").
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>> 703 593 6759
>>>> ------------------------------
>>>>
>>>> *From:* Paul Tattersfield <gpmgroup at gmail.com>
>>>> *Sent:* Thursday, October 10, 2019 12:41 PM
>>>> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
>>>> *Cc:* claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <
>>>> migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>>>
>>>>
>>>>
>>>> We need a way to include marks like UNHCR because they are established
>>>> under their own specific treaty (or convention). What we don’t want is for
>>>> the language to be too loosely drawn so it inadvertently protects GIs etc.
>>>> simply because they are protected collectively under the Paris Convention
>>>> or TRIPS etc. Hence the words “established in”
>>>>
>>>> 3.2.3 Any word mark notified to a national trademark office established
>>>> in and protected by statute or treaty in effect at the time the mark
>>>> is submitted to the Clearinghouse for inclusion
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> I don't think I understand what your proposal is now.  Can you provide
>>>> the language you think would exclude GIs but allow other non-trademarks?
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>> 703 593 6759
>>>> ------------------------------
>>>>
>>>> *From:* Paul Tattersfield <gpmgroup at gmail.com>
>>>> *Sent:* Thursday, October 10, 2019 11:58 AM
>>>> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
>>>> *Cc:* claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <
>>>> migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>>>
>>>>
>>>>
>>>> I was under the impression they are established by register (DOOR etc)
>>>> rather than by established specifically [with]in a statute. If this is not
>>>> the case then we probably need to split 3.2.3 into 3.2.3 (a) statute &
>>>> 3.2.3 (b) treaty (We can tidy the numbers later of course).
>>>>
>>>>
>>>>
>>>> On Thu, Oct 10, 2019 at 4:42 PM Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> No, because GIs appear to be formally submitted to a number of TM
>>>> offices worldwide. As I’ve said, to do this would either admit a bunch of
>>>> GIs or require “notwithstanding” language.
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>>
>>>>
>>>>
>>>> Sent from my phone. Apologies for terseness/typos.
>>>>
>>>>
>>>>
>>>> On Oct 10, 2019, at 9:36 AM, Paul Tattersfield <gpmgroup at gmail.com>
>>>> wrote:
>>>>
>>>> Hi All. Sorry for the delayed response, would this solve the problem?
>>>> Best regards, Paul.
>>>>
>>>> 3.2.3 Any word mark notified to a national trademark office
>>>> established in and protected by statute or treaty in effect at the
>>>> time the mark is submitted to the Clearinghouse for inclusion
>>>>
>>>>
>>>>
>>>> On Tue, Oct 8, 2019 at 5:54 PM claudio di gangi <ipcdigangi at gmail.com>
>>>> wrote:
>>>>
>>>> Rebecca,
>>>>
>>>>
>>>>
>>>> That's great, I am happy that you support this
>>>> revised language (personally, I am fine with removing 'service mark' as I
>>>> do not see that causing a problem, as it has not been an issue to date).
>>>> Since I feel this is the most precise text developed to date, let's stay
>>>> with this going forward (see below).
>>>>
>>>>
>>>>
>>>> 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; the word
>>>> mark protected by statute or treaty must be a trademark.
>>>>
>>>>
>>>>
>>>> On your other feedback, I did not mean to imply your agreement on 3.2.3
>>>> impacts the other elements in your proposal; but simply that we
>>>> combine the areas where we agree, e.g. there should be no bar on ancillary
>>>> services, etc., and then parse out the other areas for consideration.
>>>>
>>>>
>>>>
>>>> I believe that is exactly how the consensus-building process is
>>>> intended to function.
>>>>
>>>>
>>>>
>>>> From my point of view, an exception to this general rule is the
>>>> specific case of when the aspects of a particular proposal are so
>>>> inter-related that they form a package of policy recommendations that can
>>>> not be untethered, e.g. a "unitary proposal".
>>>>
>>>>
>>>>
>>>> Or if someone compromises on an issue they believe is critical, I don't
>>>> think it's fair to then turn around and say "OK you compromised on this
>>>> important area, so we'll count you in on the compromise but discard the
>>>> rest of your ideas."
>>>>
>>>>
>>>>
>>>> I'm glad we were able to make further progress before our call on
>>>> Thursday.
>>>>
>>>>
>>>>
>>>> Best regards,
>>>>
>>>> Claudio
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> On Tue, Oct 8, 2019 at 11:21 AM Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> To be clear, my proposal, which is still my proposal, defines trademark
>>>> to include service marks, collective marks, and certification marks. I
>>>> believe it makes more sense to do so in a footnote that covers the entire
>>>> section 3 than in this subsection. I am happy to use the language you
>>>> proposed several days ago for 3.2.3, or this (I’d remove service mark given
>>>> the overall definition) but I am not withdrawing the overall proposal.
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>>
>>>>
>>>>
>>>> Sent from my phone. Apologies for terseness/typos.
>>>>
>>>>
>>>>
>>>> On Oct 8, 2019, at 10:52 AM, claudio di gangi <ipcdigangi at gmail.com>
>>>> wrote:
>>>>
>>>> Rebecca,
>>>>
>>>>
>>>>
>>>> Thanks for the feedback; I have removed "referenced by" and "legally
>>>> recognized as" because 1) by removing, it makes the provision more
>>>> concise (which I tend to favor) and precise; and 2) I don't think it
>>>> changes the meaning of what we are attempting to clarify here.
>>>>
>>>>
>>>>
>>>> Please see below, hope this is satisfactory. I added-in "service mark"
>>>> because I recall Greg mentioning that on our call two weeks ago for extra
>>>> clarity, but if we just want to say "trademark" I think its OK (as services
>>>> aren't referenced in 3.1.1 or 3.1.2..
>>>>
>>>>
>>>>
>>>> 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; the word
>>>> mark protected by statute or treaty must be a trademark/service mark.
>>>>
>>>>
>>>>
>>>> On Mon, Oct 7, 2019 at 1:29 PM claudio di gangi <ipcdigangi at gmail.com>
>>>> wrote:
>>>>
>>>> Rebecca, all,
>>>>
>>>>
>>>>
>>>> I am making a final attempt below on 3.2.3; I think this version is
>>>> more specific, condense, and in alignment with the original spirit of
>>>> 3.2.3.
>>>>
>>>>
>>>>
>>>> I hope you find this language acceptable.
>>>>
>>>>
>>>>
>>>> If the WG isn't able to each consensus on the exact language on 3.2.3
>>>> for inclusion in the Initial Report, then I recommend we defer to staff
>>>> and/or the IRT that will follow this PDP for developing more
>>>> exact language.
>>>>
>>>>
>>>>
>>>> We have the option to simply put forward a general rule for public
>>>> comment in the Initial Report, i.e. "GIs and Appellations of Origin do not
>>>> qualify for TM Claims and Sunrise, unless those signs are
>>>> independently registered as trademarks," in addition to the other set of
>>>> provisions which we are generally aligned on w/r/t/ this subject matter,
>>>> e.g. "there shall be no prohibition on using the same ancillary
>>>> database for GIs across multiple new gTLDs, etc."
>>>>
>>>>
>>>>
>>>> ------
>>>>
>>>>
>>>>
>>>> 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; the word
>>>> mark protected by statute or treaty must function as, or be legally
>>>> recognized as, a trademark or service mark.
>>>>
>>>>
>>>>
>>>> ------
>>>>
>>>>
>>>>
>>>> Of course, I remain open to your thoughts and any additional input WG
>>>> members may have. Thanks!
>>>>
>>>>
>>>>
>>>> Best regards,
>>>>
>>>> Claudio
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> On Thu, Oct 3, 2019 at 3:26 PM claudio di gangi <ipcdigangi at gmail.com>
>>>> wrote:
>>>>
>>>> Sorry, but this made me think about the Boy Scouts legislation under
>>>> U.S. law, see: https://www.law.cornell.edu/uscode/text/36/30905
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_uscode_text_36_30905&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=AB-OFCOWkNtMN0rGQpsDXsXljiOXE-4OgNXtMdPp9lA&s=N6x8UPsvMdhkmJxwLwIOP6wkHxGQiGzWyNVc7CYO6EI&e=>
>>>>
>>>>
>>>>
>>>> The corporation has the exclusive right to use emblems, badges,
>>>> descriptive or designating marks, and words or phrases the corporation adopts.
>>>> This section does not affect any vested rights.
>>>>
>>>>
>>>>
>>>> .....
>>>>
>>>>
>>>>
>>>> So I think we just need to change “identified” with “referenced”
>>>> because identified is too specific. If the Boy Scout corporation adopts a
>>>> new mark, it will be protected as a trademark under U.S law, but that
>>>> trademark is not “identified” within the statue (depending on how strictly
>>>> one interprets “identified”), but it is “referenced” in the statute.
>>>>
>>>>
>>>>
>>>> 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, and which is
>>>> referenced within the Statute or Treaty as a mark that functions as a
>>>> trademark.
>>>>
>>>>
>>>>
>>>> Hope you are still OK with this Rebecca? Thanks!
>>>>
>>>> On Thursday, October 3, 2019, Tushnet, Rebecca <
>>>> rtushnet at law.harvard.edu> wrote:
>>>>
>>>> Claudio's proposal would then read
>>>>
>>>> 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, and which
>>>> is identified within the Statute or Treaty as a mark that functions as a
>>>> trademark
>>>>
>>>>
>>>>
>>>> I'm fine with that.  For comparison purposes, my proposed language
>>>> (with bold indicating additions to current language) is:
>>>>
>>>>
>>>>
>>>> Any word marks *specified in and *protected by a statute or treaty *as
>>>> trademarks* in effect at the time the mark is submitted to the
>>>> Clearinghouse for inclusion.
>>>>
>>>>
>>>>
>>>> Relatedly, I got further information from Dev Gangjee (who studies GIs)
>>>> and Robert Burrell (an expert on the Australian registration system), both
>>>> of whom reported that GIs are listed with the TM offices with which they
>>>> are familiar (in Australia wine GIs get special treatment), so unless
>>>> Paul's proposal is also coupled with a "Notwithstanding the foregoing, no
>>>> GIs," I don't think it would do the job that the consensus appears to want
>>>> done.  For the reasons discussed on the call, I'm uncomfortable with a rule
>>>> that appears to single out GIs for exclusion while allowing non-TM,
>>>> non-GIs.
>>>>
>>>>
>>>>
>>>> Rebecca Tushnet
>>>>
>>>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>>> 703 593 6759
>>>> ------------------------------
>>>>
>>>> *From:* claudio di gangi <ipcdigangi at gmail.com>
>>>> *Sent:* Thursday, October 3, 2019 1:15 PM
>>>> *To:* Michael Graham (ELCA) <migraham at expediagroup.com>
>>>> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; Paul Tattersfield <
>>>> gpmgroup at gmail.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>>> *Subject:* [GNSO-RPM-WG] Proposal re Q8.
>>>>
>>>>
>>>>
>>>> Michael,
>>>>
>>>>
>>>>
>>>> I agree with the points that Rebecca here, just noting that I believe
>>>> the closest analogy is GIs function in a similar manner as certification or
>>>> collective trademarks in the U.S.
>>>>
>>>>
>>>>
>>>> In fact, this is how I believe the USPTO sets forth that GIs are
>>>> protected in the U.S as per the obligations the U.S has undertaken as a
>>>> signatory of the international TRIPS agreement.
>>>>
>>>>
>>>>
>>>> Whereas, collective and certification marks are examined on absolute
>>>> and relative grounds, GIs are protected through sui generis legislation (in
>>>> believe in most cases, it’s possible they may be protected under common law
>>>> in some jurisdictions but I’m not sure) - as certain trademarks like those
>>>> protected by statue or treaty are sui generis in form.
>>>>
>>>>
>>>>
>>>> This is why I always felt that the TMCH Operator in good faith
>>>> interpreted 3.2.3 to potentially allow GIs in the Clearinghouse, with all
>>>> the qualifying language they added (such as “may be eligible” - I don’t
>>>> think they ever stated “are eligible”), and we did not know if or any GIs
>>>> are still recorded in the TMCH.
>>>>
>>>>
>>>>
>>>> In my personal view, (albeit, I am not an expert on GIs), I believe the
>>>> number of countries that protect GIs has substantially increased since the
>>>> First WIPO Process, providing more universality across the spectrum,
>>>> compared to when this issue was initially considered by the international
>>>> community under WIPO’s inclusive consultation on IP and DNS policy.
>>>>
>>>>
>>>>
>>>> In addition, I believe in most countries that protect GIs through sui
>>>> generis legislation, a senior GI has priority over a later registered
>>>> trademark for the same class of goods/services.
>>>>
>>>>
>>>>
>>>> But since trademarks are protected in every country worldwide through a
>>>> combination of common law, statutory law, or constitutional law, I
>>>> understand/support the perspective that Sunrise should take place first,
>>>> based on that correspondence of global protection.
>>>>
>>>>
>>>>
>>>> The only incongruence that I can potentially see arising is if a junior
>>>> trademark holder in a certain country uses Sunrise to register a domain
>>>> during Sunrise when actually the GI rights holder in that country has
>>>> senior or superior rights. For example, there is often litigation where a
>>>> national (or district) court in a country will hold that the GI has
>>>> priority over the junior mark in that country, even if the trademark was
>>>> registered in good faith.
>>>>
>>>>
>>>>
>>>> Perhaps this can be addressed by having a provision in the SDRP policy
>>>> for this very scenario (which registries may voluntarily choose to adopt),
>>>> or we could consider adding it to the mandatory SDRP (but I defer to the
>>>> Co-chairs and the WG).
>>>>
>>>>
>>>>
>>>> In other words, the objective is to match offline IP law with the DNS
>>>> and the associated rules for allocating domain names, e.g. if the GI rights
>>>> holder can provide a court decision to the TMCH Operator that demonstrates
>>>> it has priority under the national law of its country against the junior
>>>> mark holder in its country.
>>>>
>>>>
>>>>
>>>> Although, what may occur in practice is the court will require
>>>> cancellation of the junior trademark, so I’m not sure it’s necessary. I
>>>> defer to others who have substantive experience practicing law in this
>>>> space, like Jonathan Agmon to help inform us with their perspective.
>>>>
>>>>
>>>>
>>>> Rebecca,
>>>>
>>>>
>>>>
>>>> We can remove source identifier from my definition if that makes you
>>>> more comfortable; I don’t think it’s necessary to have it included in my
>>>> 3.2.3. Is that satisfactory for you then to accept my definition?
>>>>
>>>>
>>>>
>>>> Best regards,
>>>>
>>>> Claudio
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> On Tuesday, October 1, 2019, Michael Graham (ELCA) <
>>>> migraham at expediagroup.com> wrote:
>>>>
>>>> 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.
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> *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>*
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>> *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
>>>>
>>>> _______________________________________________
>>>> GNSO-RPM-WG mailing list
>>>> GNSO-RPM-WG at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=>
>>>> _______________________________________________
>>>> By submitting your personal data, you consent to the processing of your
>>>> personal data for purposes of subscribing to this mailing list accordance
>>>> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>)
>>>> and the website Terms of Service (https://www.icann.org/privacy/tos
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>).
>>>> You can visit the Mailman link above to change your membership status or
>>>> configuration, including unsubscribing, setting digest-style delivery or
>>>> disabling delivery altogether (e.g., for a vacation), and so on.
>>>>
>>>> _______________________________________________
>>>> GNSO-RPM-WG mailing list
>>>> GNSO-RPM-WG at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=>
>>>> _______________________________________________
>>>> By submitting your personal data, you consent to the processing of your
>>>> personal data for purposes of subscribing to this mailing list accordance
>>>> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>)
>>>> and the website Terms of Service (https://www.icann.org/privacy/tos
>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>).
>>>> You can visit the Mailman link above to change your membership status or
>>>> configuration, including unsubscribing, setting digest-style delivery or
>>>> disabling delivery altogether (e.g., for a vacation), and so on.
>>>>
>>>> _______________________________________________
>>> GNSO-RPM-WG mailing list
>>> GNSO-RPM-WG at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> _______________________________________________
>>> By submitting your personal data, you consent to the processing of your
>>> personal data for purposes of subscribing to this mailing list accordance
>>> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy)
>>> and the website Terms of Service (https://www.icann.org/privacy/tos).
>>> You can visit the Mailman link above to change your membership status or
>>> configuration, including unsubscribing, setting digest-style delivery or
>>> disabling delivery altogether (e.g., for a vacation), and so on.
>>
>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191014/b6fbc74a/attachment-0001.html>