Re: [bc-gnso] Posting the list of "improvements" to the new gTLD program to the BC public list

[Frederick Felman <Frederick.Felman@xxxxxxxxxxxxxxx>]

There were a number of limitations for inclusion in the GPML considered.

  1.  jurisdiction that requires examination
  2.  number of geographies registered within

here's the final text from the IRT report…


Trademark owners that wish to have a mark included on the GPML must provide to 
the

IP Clearinghouse documented evidence that is capable of being verified of the 
criteria

listed below. After the initial gTLD application round, these criteria should 
be evaluated

and, if appropriate, revised. The recommended criteria are as follows:

8 The IRT received comments characterizing the GPML standards recommended in 
this report as favoring Western

economies. The IRT has no intention of favoring any economy, country, or 
region; its intention was to develop

objective criteria to identify globally protected trademarks.

Page 17 of 69

! Ownership by the trademark owner of [number] trademark registrations of

national effect9 for the applied-for GPM10 that have issued in at least [number]

countries11 across all 5 ICANN Regions with at least:

! [number] registrations in the North American region

! [number] registrations in the European region

! [number] registrations in the African region

! [number] registrations in the Asian/Australian/Pacific region

! [number] registrations in the Latin American/Caribbean region

(NOTE: As a result of the public comments received in response to its initial 
draft report,

the IRT has requested ICANN staff to collect relevant trademark registration 
data. The

IRT has refrained from recommending particular numbers and thresholds at this 
time,

pending the collection and review of the relevant data. The IRT emphasizes, 
however,

that the final number and thresholds to be adopted for the GPML, including the 
required

number of registrations and countries, must be sufficiently high such that the 
marks that

qualify for the GPML are actually recognized as globally protected.)

! All trademark registrations must have issued on or before the date that GPML

applications are first accepted and must be based on trademark registration

applications filed on or before 1 November, 2008.12

! The second level domain name for the GPM’s principal online presence must be

identical to the GPM.

Consideration of Public Comments Relating to GPML Requirements. The IRT

considered those public comments that called for a requirement that all 
registrations

relied upon by the trademark owner be for only those marks in current use. The 
IRT

decided against such a requirement for a number of reasons including the fact 
that use

is not a requirement of registration in a great majority of countries and the 
practical

difficulties of implementing such a requirement. The IRT also considered those

comments calling for a Regionally Protected Marks List and, in light of the time

constraints within which it has worked, is not making any recommendations at 
this time

about such a list.

From: Steve DelBianco 
<sdelbianco@xxxxxxxxxxxxx<mailto:sdelbianco@xxxxxxxxxxxxx>>
Date: Wed, 11 Jan 2012 22:22:08 +0000
To: "Smith, Bill" 
<bill.smith@xxxxxxxxxxxxxx<mailto:bill.smith@xxxxxxxxxxxxxx>>, Mike Rodenbaugh 
<mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>>
Cc: Benedetta Rossi 
<bc-secretariat@xxxxxxxxx<mailto:bc-secretariat@xxxxxxxxx>>, Marilyn Cade 
<marilynscade@xxxxxxxxxxx<mailto:marilynscade@xxxxxxxxxxx>>, 
"bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>" 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD 
program to the BC public list

Great examples and cogent explanation, Bill.  Would love to hear replies from 
BC members who worked on GPML when it was under consideration.


From: "Smith, Bill" 
<bill.smith@xxxxxxxxxxxxxx<mailto:bill.smith@xxxxxxxxxxxxxx>>
Date: Wed, 11 Jan 2012 15:05:43 -0700
To: "mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>" 
<mike@xxxxxxxxxxxxxx<mailto:mike@xxxxxxxxxxxxxx>>
Cc: Benedetta Rossi 
<bc-secretariat@xxxxxxxxx<mailto:bc-secretariat@xxxxxxxxx>>, Marilyn Cade 
<marilynscade@xxxxxxxxxxx<mailto:marilynscade@xxxxxxxxxxx>>, bc - GNSO list 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD 
program to the BC public list


I'm speaking neither in support of, or in opposition to #8.

A GPML seems difficult to manage on many levels, though I understand why it is 
attractive to many mark holders. Questions that we would need to consider 
include:


*   What criteria would be used to determine which marks could be protected and 
those that could not?
*   Are different fields of use considered? (Delta the airline, Delta the 
faucet manufacturer)
*   Are different jurisdictions considered?
*   What priorities, if any, would be applied to fields of use, jurisdiction, 
or other criteria?
*   How would appeals be handled?
*   Could a "protected mark" be sold or traded? (Delta as an example)

Staying with Delta as an example, the US PTO has some 2,200 registrations for 
Delta. The first five (Delta with no other words) are:

85237943<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.3> 
Masco Corporation of Indiana (Delta Faucets)
85496225<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.7> 
Biolase Technology, Inc. (Dental instruments)
85493162<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.10> 
Delta Electronics, Inc. (Brushless motors, and lot's more)
85209409<http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:6dn8vn.2.42> 
MEDICAL DEPOT, INC. (Bedframes)
85219224<http://tess2.uspto.gov/bin/jumpto?f=doc&state=4009:6dn8vn.2.61> Delta 
Electronics, Inc. (Wind Power Electricity Generation Equipment)

I'm sure Delta Airlines is somewhere in the pack.

Let's assume .travel, .airline, .plumbing, and .faucet are new gTLDs. No doubt 
Delta (the airline) would like to register delta.travel, and delta.airline. 
Similarly, Delta (the faucet manufacturer) would like to register 
delta.plumbing, and delta.faucet. Unfortunately, Delta (of dental instrument 
fame) has already protected delta in the GPML we are considering proposing.

It's fairly clear to me that each of the deltas should be allowed to have a 
second-level domain name in each "appropriate" new top-level domain. 
Unfortunately, our potential GPML prohibits this if any applicant is successful 
in gaining entry into the GPML. If we attempt to limit entries in the GMPL to 
only "really important" marks like Coke or McDonalds, issues remains with TLDs 
like .steel and .ancestry. Coke.steel seems a perfectly reasonable second-level 
domain for that industry as does mcdonalds.ancestry in the genealogy industry.

Perhaps there is a way to develop a universal, globally operated, grand-unified 
mark registration list. While I'm not an IP attorney, I note that marks are 
registered by jurisdiction and field of use. Overlap in name is common (as 
demonstrated by the Delta example) so attempts to preclude that overlap are 
destined to fail, at some level.

A last comment here, how does discussion of GPML fit within "user or consumer 
perspectives"?

On Jan 11, 2012, at 10:24 AM, 
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx><mailto:icann@xxxxxxxxxxxxxx>>
 
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx><mailto:icann@xxxxxxxxxxxxxx>>
 wrote:

Thanks Bene.

So Marilyn, re your Proposal No. 8 again, there was minimal discussion on the 
call.  Bill Smith reiterated general operational concerns with the skeletal 
concept.  Steve referred us back to prior BC support for a GPML concept, 
involving famous marks only, which died when it became evident that there is no 
workable way to define fame, among other reasons.  Initially you said this is 
your proposal, then you said that “a number of members support it.”  At the 
moment that number appears to be “one” since nobody else has publicly supported 
even the bare concept, as far as I can tell from tracking the BC List.  Until 
you answer some of the questions I and others have raised, there simply is no 
proposal that anyone can reasonably consider, and so the idea should be dropped 
from further discussion (as a general waste of time) until you do try to answer 
some of those questions.

Here’s one more too:  what if there might be several owners of the same mark?  
United, Delta, probably a million other marks are registered to different 
parties in different places for different things.  What if one of them wants to 
register in a new TLD, but another one of them has placed a permanent block?  
From your perspective, does that seem potentially unfair?  How would you 
propose to address that issue?

Thanks,
Mike

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com

From: 
owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx><mailto:owner-bc-gnso@xxxxxxxxx>
 [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Benedetta Rossi
Sent: Wednesday, January 11, 2012 8:48 AM
To: Marilyn Cade
Cc: bc - GNSO list
Subject: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD 
program to the BC public list

Dear Members,

Please find attached the transcript for yesterday's BC Call. I have also posted 
it to the BC Wiki in the teleconference section, along with all other 
transcripts and reports.

As requested, I have also posted the document regarding the list of 
improvements to the new gTLD program to the Wiki.

As a reminder, the BC Wiki can be found here: 
https://community.icann.org/display/gnsobc/Home

Kind Regards,



Benedetta Rossi

BC Secretariat

https://community.icann.org/display/gnsobc/Home

www.bizconst.org<http://www.bizconst.org>

bc-secretariat@xxxxxxxxx<mailto:bc-secretariat@xxxxxxxxx><mailto:bc-secretariat@xxxxxxxxx>

On 11/01/2012 00:12, Marilyn Cade wrote:

Two members asked to have this list posted to the bc-GNSO list. Thus, I am 
posting it, but you already received it via bc-private, so you can disregard 
this. It is a copy of the list provided for the BC call.

Bene will also put it on the BC WIKI, and as she and I finalize the grid/excel 
version, we will get that posted to members. As noted in the earlier email, I 
am targeting providing it to the ExComm for a sanity check on readability and 
undertandabiilty for members comments on the document, and then posting to the 
bc-GNSO list.

Just a reminder that you will have the transcript from Bene, our Secretariat in 
a few days, or sooner, as well, as a memory supplement, or if someone in your 
company missed the call and you want to engage with them on the discussions.

Marilyn Cade