Hello

I don’t see Brian online yet

Hi all. Haven’t been on a call with this WG for a couple of years. Hope you’re all well.

Welcome Amr!

Hi all

Open TMCH Charter Questions doc: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit

Defer to Mary

Perhaps each of the proponents could draft a 1/2 or so just summarizing their argument for their position being preferable.

@Rebecca, we were not specifically commenting on Kathy’s and Zak’s proposal, but referring to the fact that the Charter question which these proposals attempt to address does use the term “design mark” and the WG did have certain doubts about whether that term includes stylized text marks, or whether those are considered “word marks”.

Fully agree with Greg on "we the WG" starting points

It seems to me that each proposal should put forward their own definition of "word mark" as part of what gets included in the initial report for consideration

Greg's proposal, as he noted, sort of implicitly gets to that definition, but perhaps it can be made more explicit, so it is more directly comparable to the Kleiman/Muscovitch proposal

@Julie: it might be useful to put the links to the proposals here in chat.

I don't think that Greg's proposal needs any further definition.

I like Susan's idea of setting out visual examples of the various forms

Might be helpful

There is a staff-prepared table from 2017 that tries to show the different examples of types of marks, and the WG did discuss visual examples drawn from USPTO practice.

@Kathy: They are here and the link sent above: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit

Thanks Mary - that might be a useful addition to this discussion.

Good reminder!

That's not the proposal, John--it's purely disclaimer based which doesn't require an affirmation that there definitely are rights in the extracted text

John's point is well taken... not sure further revision of either proposal is needed, although I agree with Phil's/Staff's earlier point about introducing the proposals with appropriate context

The context that Phil mentioned will be quite important inasmuch as this topic is hard for us even to grapple with, much less the community that has not been engaged in these discussions

BTW - as an action item last week staff circulated the document “List of Terms and Descriptions Relating to Design Marks and GIs.” We’ll send it again.

Please scroll by clicking the link here: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit

Again: Here is a link to the document we are looking at so you can scroll: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit

I think they are allowed to accept them just not use them in the RPMs

i.e. they should be in 3.2.4

What's wrong with adding an affirmation? Tthat would at least give Deloitte some basis that the identified rightsholder is willing identify itself and provide a contact to stand behind the text if challenged.

Thanks Ariel and Julie - one Zoom drawback - by scrolling out of zoom we lose sight of chat. For the punch list of changes to zoom we would like at some point - ability to scroll by each user

@David: That has been requested. Not sure if it’s a possibility though.

Thanks Julie

so,when the proposal is put out it has to be made absolutely clear that these are the assertions of some WG members (ie as to improper acceptace of marks by Deloitte) and there is strong disagreement with that assertion by many others

+1 Susan, just for any other non-consensus proposals, that context should be included

@Susan, the staff assumption is that it will indeed be the case - i.e. proposals will clearly be noted as being from a WG member, or 2 WG members, etc.

+1 Susan

How about “a segment of the WG recommends…”?

Why label them with indivudual names? Maybe just offer as proposals that have not met concensus.

Needs to be made clear that statements of "facts" are assertions which not all agree with

Yes, anonymize and neutrality

Why are we relying on Staff to contextualize rather than having each of the proposal’s authors express their own justification? I would support each side making their case.

Zak/Kathy - under the existing "3.2.4 Other marks that constitute intellectual property." - this is the current provision and it is not limited to word marks, so why doesn't this allow design marks in under the current rules?

Staff routinely summarizes the deliberations around the proposals in Initial Reports without attribution but indicating level of support.

Per Susan, agree on that the "facts" are not as black and white as suggested.

Let's simplify as much as possible: strip out anything extraneous and just include the meat of the proposals - what they are suggesting as recommendations/changes

@All - we are going to be here forever... now we are rewriting the proposals.

And introductory language ill clarify any context, including that each proposal is not a WG consensus but has some support among certain WG members or something to that effect

Agree with Griffin - introductory language makes senses.

As does stripping out "WG Agreement" --

Also agree

that's the whole question :-)

All, if it helps, this is not the first time staff has had to deal with such situations. We will do our best, when preparing the first draft of the initial report, to capture what the proposals are and what they are not.

Perhaps we can ask staff to prepare "stripped down" formulations of the proposals that capture the substance of the recommendation/change (we as a WG will obviously then have the chance to confirm or revise what staff has prepared)?

That will save us from trying to re-wordsmith everything on the fly right now

Gees, that sounds like it will lead to much further discussion, Griffin on two proposals that have no consensus.... :)

+1 Greg; Shatan proposal permits "go/no go" analysis by Deloitte with a brightline standard to permit a protection of some portion of design marks to be achieved based on some level of distinctiveness.

Not looking for conseuss, but just sign-off from the drafters of the proposals that staff's versions capure the substance

Typed form?

Huh?

Agree with what Brian said which followed on Phil and Mary's suggestion for contextual intros, essentially

+1 Brian

@Zak/ @Kathy - just trying to understand your proposal - under 3.2.4, "other marks that constitute intellectual property" is not limited to "word" marks, so why do you feel design marks are not allowed in under this provision?

+100 claudio :)

Claudio, other IP doesn't get Claims/Notice,

Also, you still have to figure out what the subject matter of the IP claim is: what does the claimant have rights in, which is the point here.

We're stripping down the proposals?

Still here for another minute or two :)

@rebecca why is that a problem?

Claims notices serve both the rights holder and registrants interests by providing notice. So I am still perplexed as to why limit them rather than to better explain them which all agree needs to be done.

Rebecca, sorry where are you getting that 3.2.4 doesn't get Claims notice?

@Claudio - 3.2.4 is next question. Q8

Right now, Deloitte lets everything--including marks where the words are fully disclaimed--into the TMCH and gives them Claims and Notice. If you want to let design + word marks into ancillary databases where they don't let Claims and Notice, that's a very different thing and this proposal doesn't prevent that kind of thing

*don't get Claims and Notice

+1 Zak

@Zak: There will be links to the full text of the proposals.

Kathy, 3.2.4 applies to what is allowed in the TMCH generally. it says "other MARKS that constitute IP"; the other provisions say "word marks" but 3.2.4 does not

There are also some words plus design marks protected by treaty. Are they admitted to TMCH?

@Rebecca, that is not the case, actually.

Claims and Sunrise are mandatory and provided ONLY for registered trademarks, court-validated marks and marks protected by statute or treaty (hence the GI issue). “Other marks that constitute IP” do not get Sunrise and Claims services.

the rpms flow from 7.1 & 7.2 and 3.2.4 is not referenced in either

@Paul, yes, exactly.

we have some great examples from Deloitte.

@Mary, where it does it say that in the ABG? (I haven't seen it, just curious)

+1 Paul.

that's a valuable idea, Phil, thank you.

“7.1 For Trademark Claims services - Registries must recognize and honor all word marks that have been or are: (i) nationally or regionally registered; (ii) court-validated; or (iii) specifically protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. No demonstration of use is required.7.2 For Sunrise services - Registries must recognize and honor all word marks: (i) nationally or regionally registered and for which proof of use – which can be a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or (ii) that have been court-validated; or (iii) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

OK, I'll look at 7.1 and 7.2

Other IP is for ancillary services that may be used at a registry's request

GIs :)

Mary, I don't understand the basis for your disagreement with this statement.

my fav ;)

I'm going off chat...will be on audio only for a bit

Fine by me

Happy to defer to Rebecca and Claudio

What is Claudio's starting point?

Is it written down?

@Kathy I think it comes from the latest email exchanges from Claudio/Rebecca

Staff are trying to locate the email and then will display on the screen

That's my present point #2 (specifically, GIs are not TMs) but I don't mind the merger.

Rebecca's 6 points are out - and have support

from cross-community folks

I can post it in chat if that would be any help

I wonder if this is the latest: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-September/003881.html

Adding where?

what provision?

can Claudio link this to Rebecca's points?

@Phil: There is no combined text that’s been provided. There have been comments from each — Claudio and Rebecca.

I had not understood that was being proposed, Greg

3.2.4 would allow it

But that an "ancillary database" would be allowed

@Greg - no, not affirmatively setting up a GI database

We are displaying Rebecca’s email sent on Mon 1:28 UTC on the screen: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-September/003878.html (perhaps that’s the proposal in the rough form)

Hi folks, apologies, but I need to jump off for another meeting at 2

What Brian outlined makes sense to me.

Mary has had to leave the call

From here, it seems we have a basis for Staff to get us to the Initial Report language?

Do we have to go that far, Phil?

@Brian: It might be helpful first for Rebecca and Claudio to agree on specific text for what they agree on as to changes the rules and/or AGB.

Exactly Rebecca

@Rebecca, I think we do need to amend the AGB language to some extent because Deloitte's nterpretation here is AN interpretation and if we all agree we don't want that to continue then we need greater clarity

I'm cool with amending--I think the cross references turned out to be too complicated.

yes I think we're on the same page

I'm still not sure whether Claudio has withdrawn his additional proposals.

we should be doing it not asking the public

@All: It might be more helpful to include suggested amendments to the AGB when submitting for public comment, to be more clear.

@Phil - no I really don't think we can ask the community that. That is our job

I'm fine with relaxing that language as long as 1-2 get said because there is an existing problem with GIs.

what if it said other things that are not trademarks, like GIs, etc

I won't use that

@David, that makes sense to me.'

I think we have some definitions of ancillary databases floating around...

@Rebecca - how would you phrase it?

I am also fine with an intro on ancillary services. That may also be in the AGB enough that if we are proposing language changes it can be worked in.

+1 Greg

I agree with Greg but we need to communicate it toDeloitte

Limited periods are after sunrise

Antitrust concerns are not necessarily “monopoly” concerns — they are usually “market power” concerns or other concerns about harming competition....

and ALP did not work well this round

+1 Maxim - Is LRP in our purview?

Claudio was talking about that, I just wanted clarity

we reviewed it

We agree that GIs are a problem and they need to clear out of the TMCH. After that not so much.

+1 @Phil if we can enlist such folks, an effort to do a final polish of this question

The revised wording for 3.2.3 is not good too the original was better

This is the document https://docs.google.com/document/d/1PG_-rjslTTcUYrMNpuwo5_YWvSu40cc3/edit#heading=h.gjdgxs

All: You can use the above link to scroll.

The “deferred questions” are mainly Q12, 13, 15, 16

Questions on page 11 and beyond haven’t been discussed by the WG (Q1-Q6)

Tx Phil!

Thanks for joining everyone!

And thanks for chairing Phil!

Thanks all. Bye.

Bye!

bye all

Thanks and good bye