[gnso-rpm-wg] TMCH Blog

Thu Feb 2 17:22:30 UTC 2017

+1
Marie 

Sent from my iPhone, sorry for typos 

> On 2 Feb 2017, at 18:15, Reuter, Renee M <Renee.M.Reuter at ehi.com> wrote:
> 
> The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. 
>  
> If one were blocked by a registration on the TMCH, wouldn’t they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH?
>  
> I thought we were trying to avoid having the TMCH make trademark validity decisions.
>  
> Renee
>  
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Scott Austin
> Sent: Thursday, February 02, 2017 10:22 AM
> To: J. Scott Evans; Jonathan Frost
> Cc: gnso-rpm-wg
> Subject: Re: [gnso-rpm-wg] TMCH Blog
>  
> +1. As if recent events involving Pakistan based filings were not enough to signal a need for reform.
> Scott
> 
> -------- Original Message --------
> From: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg at icann.org>
> Date: Thu, Feb 2, 2017, 11:10 AM
> To: Jonathan Frost <jonathan at get.club>
> CC: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: 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> 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
> General Counsel
> Telephone: (+1)877-707-5752
> 100 SE 3rd Avenue, #1310
> Fort Lauderdale, FL 33394
> E-Mail: jonathan at get.club
> Website: www.get.club
> 
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>  
> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential.  If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited.  If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan at get.club and delete the original message. 
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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 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
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
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>  
> 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:
>  
> https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/
>  
> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The”
> 
> February 1, 2017 by Michael Berkens 5 Comments
> 
> The Trademark ClearingHouse (TMCH) 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.
> 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:
> the.car
> the.career
> the.cars
> the.casino
> the.doctor
> the.earth
> the.foundation
> the.furniture
> the.game
> the.group
> the.ltd
> the.mba
> the.pub
> the.report
> the.run
> the.school
> the.services
> the.storage
> the.tools
> the.university
> the.watch
> the.wine
>  
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