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Nathalie Peregrine's Personal Meeting Room - Shared screen with speaker view
Julie Hedlund
45:28
All, Zak’s proposal is on screen now.
Terri Agnew
49:22
the line has been muted
Kathy Kleiman
49:24
Everyone needs to mute their own computer audio manually.
Julie Hedlund
49:29
Now the redlined version is up.
Julie Hedlund
50:26
(should be)
Julie Hedlund
51:49
Note that Zak has shared the redlined version on the list too.
Julie Hedlund
52:57
Hand up from Rebecca
Lori Schulman
53:47
SMEs tend to have text and stylization registered together to save money
Lori Schulman
53:51
this hurts SMEs
Paul Tattersfield
53:53
Can't they just register an equivalent benelux trademark or similar to bring a design mark into compliance?
Lori Schulman
53:58
Not SME's
Lori Schulman
54:16
Zak's argument can be flipped in a way that hurts SME's
Lori Schulman
54:59
I can tell you as a former counsel to nonprofits and SMEs, this is absolutely the case. We advised single filings not multiple filings
Griffin Barnett
55:41
Why should a cost-conscious TM owner, who opted to seek registration for a composite mark consisting of word and design elements, have to submit a word-only registration to get into the TMCH? This is not an expansion of rights for taking the protected word elements from such a composite mark and allowing that to be recorded in the TMCH
Paul Tattersfield
55:48
Can't they just register an equivalent benelux wordmark or similar to bring a design mark into compliance?
Michael R. Graham
56:39
@Lori -- Agree. Common practice among trademark and IP counsel is to counsel SMEs and others that if they have limited resources they may register a TEXT + DESIGN or STYLIZED TEXT to protect both the MARK AS A WHOLE and the TEXT -- to the extent the TEXT would be entitled to protection/registration on its own.
Michael R. Graham
58:39
Rebecca and other's comment that we should not expand trademark rights within the DNS ignores the fact that providing ANY rights to trademarks in the DNS is an expansion of those rights due to the fact that unlike trademarks (identical text of which may coexist in different classes for different goods), there can be only one registrant of a domain name.
Paul Tattersfield
59:17
Shouldn’t bringing Deloitte into compliance be outside the proposal and done instantly and the rest of the proposal take the natural course of the WG?
Rebecca Tushnet
59:48
If they choose a design plus or stylized mark then that's the right they have in the national registry; if they want to expand their rights to the text alone then they should have a registration or a court decision confirming those rights. The bargain of the RPMs was to not expand rights beyond national rights.
John McElwaine
01:00:07
Greg Shata's proposal solves the issue that Zak is discussing. Let's move on to that.
John McElwaine
01:00:18
Shatan's
Griffin Barnett
01:00:23
With the possible exception of text that has been disclaimed, I don't think it it inappropriate for Deloitte to accept protected text that may be part of a stylized or composite mark
Griffin Barnett
01:00:45
I think this comports with the intent and spirit of the requirements as baked into the AGB
Claudio Digangi
01:01:04
@Rebecca, where does it say in the AG that design marks are disallowed?
Rebecca Tushnet
01:01:06
Griffin, why isn't that an expansion beyond the rights granted by the underlying national/int'l registration?
Michael R. Graham
01:01:24
@John -- Agree, we should consider Greg's proposal as a possible solution to the issue.
Griffin Barnett
01:01:32
And it is not an expansion of TM rights... it comports with the ability of TM owners to exclude confusing similarity, which is a fact-specific assessment, and in the context of the DNS must take into consideration the registration and use of the domain name
Claudio Digangi
01:01:37
agree with moving on to Greg’s proposal
Rebecca Tushnet
01:02:11
3.2: Standards for inclusion in the Clearinghouse3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Claudio Digangi
01:02:34
design marks are a form of word marks
Griffin Barnett
01:03:00
I agree that's what the wording for inclusion says, but "word marks" can be interpreted in different ways... it doesn't say "only marks composed of words but not including design elements"
John McElwaine
01:03:01
Agree with Claudio
Rebecca Tushnet
01:03:12
No, confusing similarity is not the standard for inclusion in the TMCH, and that's also wrong on its own terms: parents isn't confusingly similar to the stylized mark PARENTS.
Michael R. Graham
01:03:44
@Rebecca -- By its plain terms, would 3.2.1 not exclude fanciful textual terms from registration in the TMCH?
Mary Wong
01:03:47
@Claudio, the problem was therefore the impossibility of using a single definition that can cover the different variations protected by different jurisdictions. There is no single definition of “word mark”
Rebecca Tushnet
01:04:14
A fanciful term is a word mark, if registered as a word mark.
Lori Schulman
01:04:53
Agree, these are edge cases. Acronyms are routinely sytlized that doesn't give the acronym any less protection.
Lori Schulman
01:05:36
Nor is there a single definition of "text" mark.
Lori Schulman
01:05:54
Trademarks are subject by nature.
Mary Wong
01:06:15
@Lori, that is what we found - no definition for “text mark” or “word mark”; and hence the difficulty of what is the appropriate scope for “word mark” in the DNS.
Michael R. Graham
01:06:18
@Rebecaa -- I would agree, but this is an interpretation of the phrase "word mark".
Lori Schulman
01:06:25
I meant trademarks are subjective.
Griffin Barnett
01:06:29
The TMCH is just a database, which facilitates mechanisms to protect trademark rights or facilitate more cost-effective and efficient protection...namely the TM Claims and Sunrise mechanisms...these mechanisms must be evaluated in the context of how the DNS works, including that domain names can only represent standard character text; that does not mean that third parties shouldn't be notified of a stylized or composite mark containing the same text as iin the proposed domain name
Lori Schulman
01:07:16
We agree. That TMCH is a registry. Not an arbiter of rights.
Claudio Digangi
01:07:45
Zak, the proposal cites the STI report being adopted by the Board and included the AGB. But the STI Report recommends TEXT marks (you state this on page 1), but the AGB rules permit WORD Marks (which you state on Page 2).
Mary Wong
01:08:17
@Lori, yes; and why we could not put it in the position of deciding/differentiating between what different jurisdictions consider “word marks”.
Griffin Barnett
01:08:30
But Rebecca, they are accepting protected textual elements of composite marks, which again seems appropriate and properly accepts protected rights in text even if there are other elements of the mark that are just not relevant in the context of the DNS
Rebecca Tushnet
01:08:31
There are very consistent definitions of word marks across the sources Zak and Kathy's proposal cites. Differences in wording don't lead to differences in meaning unless you explain where those differ.
Rebecca Tushnet
01:08:49
Deloitte has no idea whether those elements are "protected" and neither do you.
Greg Shatan
01:08:51
Phil, is that what you said?
Rebecca Tushnet
01:09:17
The evidence we have is that Deloitte will accept any elements, protected or not, if they are text that can be extracted from the registration
Griffin Barnett
01:09:22
With the exception of text that has been disclaimed, the presumption is that they would be protected no?
Michael R. Graham
01:09:24
I can not agree to this proposal.
Claudio Digangi
01:09:28
Kathy is conflating the STI report with the Guidebook
Rebecca Tushnet
01:09:38
No, the presumption is that the *registration* is valid. Not parts of it.
Mary Wong
01:09:59
@Rebecca, ICANN Org did not find that there is a single, internationally-understood definition of “word mark".
Rebecca Tushnet
01:10:10
Do you think that the font of a stylized mark is presumptively within the registrant's rights? The color alone of a color + word mark?
David McAuley (Verisign)
01:10:28
did we lose Phil
Rebecca Tushnet
01:11:06
@Mary, Deloitte's interpretation goes beyond any standard definition.
Mary Wong
01:11:07
@Kathy, the AGB used the language “word mark” (not “text mark”) as of late 2010/early 2011.
Michael Karanicolas
01:11:10
I support this proposal - it comports with the nature of the domain name space as a text-centric medium, and corrects a serious problem in the way the TMCH has been implemented.
Jay Chapman
01:11:46
I support the proposal as well
Rebecca Tushnet
01:13:12
Quick reminder: Deloitte treats disclaimed words as eligible too.
Rebecca Tushnet
01:13:29
But I agree that the varying national approach to disclaiers makes it inappropriate as the standard
Jason Schaeffer
01:13:31
I support the proposal too.
Rebecca Tushnet
01:13:40
Disclaimers are not at the heart of the concern
Griffin Barnett
01:13:52
In general I agree text that has been expressly disclaimed should not be accepted - think Greg's proposal addresses that issue
Rebecca Tushnet
01:14:15
Then you get inappropriate variations in national treatment because of the varying national approach to disclaimers
Rebecca Tushnet
01:14:53
We may have less trouble relatively disadvantaging TM owners in the US (where disclaimers are patchily used but somewhat more used than elsewhere) but it's still a bad idea
Griffin Barnett
01:15:36
I agree, thhe cross-jurisdictional issue is a problem, which is why the TMCH should be as permissive as reasonably possible as it serves as a gating threshold to use of the other mechanisms
Mary Wong
01:15:59
The central question seems to be the extent to which text/letters/numerals/characters that are stylized, or that are combined with a design element, should be in the TMCH. As staff noted, there is no one unified definition or practice across multiple jurisdictions on this matter.
Scott Austin
01:16:37
@Griffin Barnett. Agree. To deny protection to rightholders of the distinctive text component of their design mark would be a contraction of trademark rights and allow bad actors to extrude that distinctive text for use as a domain name with inpugnity and create a global harm to reputation, sidestepping an RPM that has been consensually agreed to as extraterritorial to provide a global remedy to address a global harm.
Claudio Digangi
01:17:00
@Rebecca, if words are the dominant element of the design mark, and they are not generic and/or are disclaimed for the goods or services - then what is your concern?
Rebecca Tushnet
01:17:06
Can you provide some examples of countries that protect elements as such within the registration?
Claudio Digangi
01:17:46
Excellent point Scott
Rebecca Tushnet
01:17:52
Because "dominant" is a vague word that doesn't actually tell you what's protected. The national registration is granted for a mark, not for parts of marks.
Cyntia King
01:17:52
The question we should be asking is: What benefits the majority of users? Is it more beneficial for them to be notified of a potential conflict w/ their chosen domain or is it just too confusing to receive such notification.
Greg Shatan
01:18:15
I though it was a mic drop moment....
Griffin Barnett
01:18:23
If EXXON has a registration for EXXON in red stylized text with an image of a Tiger, would it still not be able to successfully address another third-party's use of EXXON even without the stylization and design elements?
Cyntia King
01:18:35
I do not support the proposal; pending the creation of an improved notification.
Griffin Barnett
01:19:00
Or even PARENTS?
Griffin Barnett
01:19:06
To use a dictionary-word example
Griffin Barnett
01:19:28
Or at the very least, be notified of third parties using the term to consider whether action is appropriate?
Rebecca Tushnet
01:19:35
EXXON has a word mark registration. It actually has a bunch. Which is kind of the point--if your word mark is distinctive enough to be confusing no matter the font/stylization/design, then you can get a registration for the word mark, and are wise to do so.
Griffin Barnett
01:19:50
Rebecca, that's besides the point
Rebecca Tushnet
01:20:06
Parents is not a great example for you given the court case confirming that in fact the registrant has no rights over the word so it would be misleading to give a notification in that circumstances.
Griffin Barnett
01:20:07
I was just trying to present a hypothetical example
Greg Shatan
01:20:10
The EXXONs of the world are not the ones likely to be hurt here.
Rebecca Tushnet
01:20:11
Those circumstances, sigh.
Michael Karanicolas
01:20:11
@Rebecca - exactly. And if we’re speaking in practical terms, I think that’s far more representative of the actual folks who need robust protections in the domain name space.
Lori Schulman
01:20:15
The analysis of which elements of a mark are for a court to decide which goes beyond the scope of TMCH. Benefit of doubt should be given to mark on it's face. There are means to challenge down the road. Not at the threshold.
Lori Schulman
01:20:29
I meant which elements are "dominant."
Michael Karanicolas
01:20:45
@Greg - but the EXXONs are the ones liable to be hit by domain squatters. Which is supposed to be the underlying point of all of this.
Claudio Digangi
01:20:57
Rebecca, then strike the word “dominant” from my question
Griffin Barnett
01:21:50
In any case, I oppose the Kleiman/Muscovitch proposal, for the reasons well-stated by Scott Austin above - I think it over-contracts what should reasonably be permitted for inclusion in the TMCH
Rebecca Tushnet
01:22:45
@Claudio, then the answer is the same: we don't know what the situation is; the registrant doesn't have a registration for the word in that situation.
Lori Schulman
01:23:16
Agree with Zak. Let's keep it civil. Not snarky.
Claudio Digangi
01:24:07
Rebecca - Why wouldn’t they if the words aren’t generic, i.e they should be disclaimed?
Claudio Digangi
01:24:22
i.e. the words are protected in those situations.
Rebecca Tushnet
01:25:24
Because Deloitte shouldn't be engaging in substantive reexamination of the mark one way or another. We don't know in advance whether any given design mark/mark plus design includes generic elements, and I would rather not have Deloitte making TM examiner decisions
Rebecca Tushnet
01:25:38
@Greg, the only example that would be precluded by your proposal is MUSIC.
Claudio Digangi
01:25:48
Deloitte is making examiner decisions with Proof of Use
Michael Karanicolas
01:26:08
I’m skeptical about the practical enforceability of this… how much of a barrier is it to provide a sworn statement?
Rebecca Tushnet
01:26:23
The proposal wouldn't avoid CARS, PARENTS, DEALMAKER, A, or OWN YOUR POWER
Michael Karanicolas
01:26:58
It looks to me like this won’t even resolve all of the clearly abusive cases that have been noted.
Lori Schulman
01:27:22
I believe that Rebecca's issue are resolved with a better claims notice not changing Deloiitte's practice.
Claudio Digangi
01:27:24
@michael - the other approach throws the baby out with the bath water
Griffin Barnett
01:27:55
@Lori - or perhaps some kind of challenge mechanism, or tweaks to Sunrise reuqirements?
Rebecca Tushnet
01:27:57
"FORD TRUCKS" with TRUCKS disclaimed would be an example I think
Rebecca Tushnet
01:28:18
(FWIW I think Greg is right about that)
Michael Karanicolas
01:28:27
@Lori - I thought there was agreement that Deloitte’s practice was problematic, and there needed to be a shift in how marks are assessed?
Michael Karanicolas
01:28:37
But that we were disagreeing on the extent of that shift...
Greg Shatan
01:29:40
Thanks, Rebecca, FORD TRUCKS is a good example.
Scott Austin
01:29:49
@Lori. Exactly, agree benefit of doubt should be to permit acceptance to TMCH, especially where result is ultimately notice to both registrant and rightsholder, not blocking of registration and additional burdens to act by both parties.
Griffin Barnett
01:29:52
Although "ford" is also a dictionary term lol
Griffin Barnett
01:30:05
But we all know it is a protected brand
Claudio Digangi
01:30:45
The Clearinghouse already has discretion with Proof of Use - that is a traditional examiner function
Rebecca Tushnet
01:30:57
and eligibility for Sunrise, which is not nothing
Lori Schulman
01:31:16
@Michael, there are mixed feelings about what Deloitte is doing. I wasn't certain there is consensus. The GI issue is an excellent example where words in the a
Lori Schulman
01:31:55
AGB may be misinterpreted. the issue with the question we are discussing is that we don't have conconsenus what the interpretation should be so how could Deloitte?
Lori Schulman
01:32:18
Apologies for quick typing and bad grammar.
Claudio Digangi
01:32:28
I agree with John
Rebecca Tushnet
01:34:07
As many people noted when we initially discussed this, disclaimers are not consistently used, but mark classifications are consistently used by national and transnational authorities like the EU TM system.
Rebecca Tushnet
01:34:33
Why isn't Greg's proposal discriminatory against national systems that use disclaimers?
Scott Austin
01:34:42
I support Greg's proposal as well.
Rebecca Tushnet
01:35:11
Or really the registrants in those systems.
Griffin Barnett
01:35:42
Deloitte is in substantial conformity... with the possible exception of accepting text that has been disclaimed
Michael R. Graham
01:36:20
@Rebecca -- Of course any word that is generic for certain things may be arbitrary for others (e.g. APPLE for apples or for computers, etc.).
Julie Hedlund
01:36:25
Yes = 10, No = 7
Griffin Barnett
01:36:36
And I agree that this perhaps disadvantages registrants in jurisdictions with robust disclaimer practice, but it is an effort to adhere to the contours of rights to the extent evidenced by each jurisdiction's own examination requirements
Rebecca Tushnet
01:37:26
@Griffin not clear why that justifies expanding rights in other dimensions where we don't even know the protection of the underlying text for anything at all
Rebecca Tushnet
01:37:41
Whoops @ Michael
Griffin Barnett
01:37:48
But where text is not disclaimed, I think the presumption for inclusion in the TMCH must be permissive, that is, to accept separable textual elements even where combined with stylization or design elements
Griffin Barnett
01:38:10
because presumably a TM owner with such a registration could use it to address infringement based on the text alone
Griffin Barnett
01:38:17
(or bad faith etc.)
Greg Shatan
01:38:36
The split is 59%/41%. That’s a pretty big gap between the yeahs and the nays.
Greg Shatan
01:39:03
Maybe not enough for wide support, but if this was an election it would be a very comfortable victory.
Rebecca Tushnet
01:39:57
That presumption is completely ungrounded in any principle of TM law of which I am aware. Do you have support for it?
Kathy Kleiman
01:40:04
That sounds reasonable to me.
Rebecca Tushnet
01:40:33
The presumption is that the registered mark is protectable. Not that chunks of it are, whether text, color, font, image, or anything else.
David McAuley (Verisign)
01:40:35
me too
Michael Karanicolas
01:40:36
@Greg - that’s why this isn’t an election…
Greg Shatan
01:40:37
Maybe we need to consider how TMCH challenges could be used in some of these cases where a proscriptive rule doesn’t neatly work.
Michael R. Graham
01:40:58
@Rebecca -- Are you refering to the presumption of protection of Text elements?
Rebecca Tushnet
01:41:14
Yes--especially as distinct from a presumption of protection of other elements.
Michael R. Graham
01:42:47
@Rebecca -- I'll see if I can locate some cases for you on that issue.
Rebecca Tushnet
01:44:02
I'm aware it's often significant in the infringement inquiry but I'm interested in what rights a registration creates.
Paul Tattersfield
01:44:41
IGOs etc
Griffin Barnett
01:44:53
In theory a registration does not create rights at all, but is merely evidence of rights, and in some jurisdictions like the US may establish certain presumptions or privileges not afforded through common law rights alone
Paul Tattersfield
01:45:06
Greg + 1
Griffin Barnett
01:45:09
Not sure about other jurisdictions
Rebecca Tushnet
01:45:40
Not quite true even in the US (I wrote a very long article about this I'm happy to share) but the question before us is how to implement the TMCH in a way that doesn't create new rights
Rebecca Tushnet
01:45:59
The TMCH concededly is not a place for all TM rights (e.g. common law rights not yet confirmed by a court decision but that definitely exist)
Greg Shatan
01:47:19
This has nothing to do with whether GIs should receive some form of protection. The TMCH isn’t the place to do it, and the TMCH rules provide no basis for it.
Greg Shatan
01:47:47
A GI is not a “mark.”
Kathy Kleiman
01:47:51
Did Claudio just say that marks protected by statute or treaty are not used in Sunrise?
Kathy Kleiman
01:50:21
Then there should be an ancillary database.
Kathy Kleiman
01:51:01
A 2nd database -- for non-trademark titles, names, etc.
Greg Shatan
01:52:25
Agree with Kath regarding ancillary database.
Greg Shatan
01:52:34
KathY
Kathy Kleiman
01:53:01
Can you explain it, Greg. Since my voice is going south...
Greg Shatan
01:53:18
(IV) still uses the word “mark” — and a GI is not a mark.
Scott Austin
01:53:21
If the presumption is that all chunks of the registered mark are protected then why should the chunk that is text be denied protection for purposes of the URS/UDRP. The one chunk that is exposed for domain name abuse should not be denied protection.
Paul Tattersfield
01:54:11
Notices are a serious issue
Kathy Kleiman
01:56:25
I agree with Greg. But It's an interesting idea per Claudio -- that we put 3.2.3 and 3.2.4 into a mandatory [new] ancillary database - for those registries who choose to use them. This might be a compromise.
Kathy Kleiman
01:56:55
3.2.3 and 3.2.4 - Trademark Clearinghouse in Applicant Guidebook.
Greg Shatan
01:57:13
Marks is Marks. GIs are not marks.
Kathy Kleiman
01:57:25
@Claudio - I'm not sure your solution is technically feasible.
Greg Shatan
01:57:28
It puts things that are not marks into the TMCH.
Greg Shatan
01:57:41
I’m responding in chat....
Claudio Digangi
01:58:19
greg that sounds like process
Claudio Digangi
01:58:26
Whats the substantive issue?
Greg Shatan
01:58:54
I think “marks” are always grounded in trademark law, whether you call them service marks, trademarks, marks, etc. If non-marks were intended to be in the MCH we could have said so.
Greg Shatan
01:59:16
Claudio, that’s very much a substantive issues.
Claudio Digangi
01:59:19
Greg, then what does that provision in the AGB apply to, if not GIs, etc?
Greg Shatan
01:59:47
Marks.
Claudio Digangi
01:59:58
What marks?
Greg Shatan
02:00:24
Definitely not things that are not marks.
Claudio Digangi
02:00:42
But a GI is a form of a mark, its just not a trademark
Julie Hedlund
02:01:06
Correct: Deferred Questions
Greg Shatan
02:01:30
A GI is not a form of a mark. That’s expanding the term into meaninglessness.
Lori Schulman
02:01:31
Yes, agree that GI's are not trademarks. Perhaps the fix is not with Deloitte but to clarify the AGB. Forward the request to SubPro to amend language with whatevery outcome we believe is fair.
Greg Shatan
02:01:46
If GIs were intended, the words exist to say so, very clearly.
Claudio Digangi
02:02:01
Its an all encompassing provision, like the book titles example I mentinoed
Claudio Digangi
02:02:04
i agree with Lori
Lori Schulman
02:02:09
We are talking about "source identifiers" which is broader than TM's
Greg Shatan
02:02:10
When and if GIs get protection, I’m sure it will be quite clear.
Lori Schulman
02:02:23
TM's are source identifiers. As are GI's
Lori Schulman
02:02:39
But TM and GI are not the same.
Claudio Digangi
02:02:51
Exactly, they identify source but are not the same and therefore, TMs have priority
Greg Shatan
02:03:41
There’s nothin in the TMCH rules or the AGB that supports any of this.
Claudio Digangi
02:03:58
Greg, there is the provision I cited and the limited registration period
Mary Wong
02:04:00
Question for the WG on Q8: if “marks protected by statute or treaty” are limited to national TM regs, isn’t that duplicative of the first category?
Greg Shatan
02:04:36
Claudio, do you have any idea of the history of the provision you cited? (I don’t)
Claudio Digangi
02:04:37
Mary those are for olympic and Red Cross marks
Lori Schulman
02:04:37
It probably should be amended to say "specific marks" not "Marks" in general
Mary Wong
02:04:37
(but yes, the category seems to require that what is protected by a statute or treaty must first be a “mark” (even if not a “trademark”)
Claudio Digangi
02:04:38
old
David McAuley (Verisign)
02:05:07
Thanks Phil and all for informative discussion and chat
Vaibhav Aggarwal(Tiger), IN
02:05:12
Thanks P
Claudio Digangi
02:05:15
Thxs P
Michael R. Graham
02:05:18
Thanks, Phil and all
Griffin Barnett
02:05:20
thanks Phil and all
Luca Barbero
02:05:22
Thanks and Bye
Lori Schulman
02:05:24
Thank you.
Paul Tattersfield
02:05:25
Thanks all, bye
Vaibhav Aggarwal(Tiger), IN
02:05:26
GN
Greg Shatan
02:05:34
Bye all!