[gnso-rpm-wg] TMCH Blog

Pascal Böhner pascal.boehner at bardehle.de
Thu Feb 2 16:23:04 UTC 2017

That's an interesting discussion as it brings us, again, to the question what the role of the TMCH is. Are they to decide on the requirements for protection of the mark? I don't think so.

If you are able to register the mark "THE" somewhere (in line with the requirements of that jurisdiction) the TMCH has to accept protection of that mark. They should an can not supervise TM offices. If someone else is of the opinion that the mark shall not exist, it is the mark to be challenged.

The only role I see for the TMCH is to provide mechanisms for treating challenged or cancelled marks, or maybe even its own challenge mechanism (where the TMCH still should not decide on registrability of a mark).

Best regards

Pascal Böhner
Fachanwalt für gewerblichen Rechtsschutz


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Von: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] Im Auftrag von J. Scott Evans via gnso-rpm-wg
Gesendet: Donnerstag, 2. Februar 2017 17:10
An: Jonathan Frost <jonathan at get.club>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Betreff: Re: [gnso-rpm-wg] TMCH Blog

In most jurisdictions in the world you can obtain a valid and enforceable trademark registration with no demonstration of use. If the system is being abused, then we need to put the n fail safes. We could have a challenge mechanism. In the US, which requires "use", token (fake use) is not deemed sufficient.

Sent from my iPhone

On Feb 2, 2017, at 8:03 AM, Jonathan Frost <jonathan at get.club<mailto:jonathan at get.club>> wrote:
These TMCH gaming issues have been well documented all the way back to 2014 .http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/

Gaming the TMCH is as easy as starting an ecommerce store on a template and selling various products like t-shirts and pens with the arbitrary use of a common/valuable term (e.g.. pizza pen shop). This allows registration of the trademark for the term in any number of jurisdictions and subsequent registration in the TMCH.

Jonathan Frost
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From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Thursday, February 2, 2017 9:13 AM
To: Jon Nevett <jon at donuts.email<mailto:jon at donuts.email>>; gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH Blog

I'm tempted to say that is one of *** craziest things I've ever seen, but if I use *** word *** I might be cited for infringement or have to pay a licensing fee ;-)

Seriously, it would be interesting to know in what jurisdiction the trademark was granted in and whether they professed to demonstrate use in commerce.

Also seems to be an example of a situation where everyone in general but no one in particular has an incentive to challenge the acceptance of the mark by the TMCH.

Philip S. Corwin, Founding Principal
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From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jon Nevett
Sent: Thursday, February 02, 2017 8:55 AM
To: gnso-rpm-wg
Subject: [gnso-rpm-wg] TMCH Blog

FYI -- for those who haven't seen this blog:


The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark "The"

February 1, 2017 by Michael Berkens<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/#comments>
The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry.
Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like "the"
Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word"the",  which is the most used word in the English language<https://en.wikipedia.org/wiki/Most_common_words_in_English>.
The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://DomainTools.com> owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLD's using their globally well-known trademark on the word "the" under the ICANN trademark clearinghouse rules which  allows them to obtain the domain names ahead of all other applicants.
Of course the company could have had obtained even more "the" new gTLD domain names in Sunrise but apparently did not apply for more.
Somehow the company doesn't appear to own the domain name The.Com<http://The.Com>
For all Trademark Holders its nice to know the world is a safer place:

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