[gnso-rpm-wg] TMCH Blog

Marie Pattullo marie.pattullo at aim.be
Thu Feb 2 16:37:07 UTC 2017

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
On Behalf Of Pascal Böhner
Sent: jeudi 2 février 2017 17:23
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] TMCH Blog
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

Sent from my iPhone

On Feb 2, 2017, at 8:03 AM, Jonathan Frost <jonathan at get.club> wrote:
These TMCH gaming issues have been well documented all the way back to 2014
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
General Counsel
Telephone: (+1)877-707-5752
100 SE 3rd Avenue, #1310
Fort Lauderdale, FL 33394
E-Mail:  <mailto:jonathan at get.club> jonathan at get.club 
Website:  <http://www.get.club/> www.get.club 
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From: 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>; gnso-rpm-wg <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
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
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: 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

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 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
For all Trademark Holders its nice to know the world is a safer place:


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