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

["Chris Chaplow" <chris@xxxxxxxxxxxxx>]

And I throw in that 

The GTML is for word marks and not Design Marks.
Design marks are currently accepted for sunrise registrations.



Chris Chaplow
Managing Director
Andalucia.com S.L.
Avenida del Carmen 9
Ed. Puertosol, Puerto Deportivo
1ª Planta, Oficina 30
Estepona, 29680
Malaga, Spain
Tel: + (34) 952 897 865
Fax: + (34) 952 897 874
E-mail: chris@xxxxxxxxxxxxx
Web: www.andalucia.com
Information about Andalucia, Spain.

-----Mensaje original-----
De: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] En nombre de
Frederick Felman
Enviado el: jueves, 12 de enero de 2012 0:08
Para: Steve DelBianco; Smith, Bill; Mike Rodenbaugh
CC: Benedetta Rossi; Marilyn Cade; bc-gnso@xxxxxxxxx
Asunto: Re: [bc-gnso] Posting the list of "improvements" to the new gTLD
program to the BC public list


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@rodenbaugh.c
om>>
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx><mailto:icann@rodenbaugh.c
om>> 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
@icann.org> [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-secretar
iat@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