[gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group)

[Winterfeldt, Brian J.]

Dear Jeremy:

We appreciate your point of view.  However, the situation seems analogous to the thousands of dollars spent by brands to remedy problems caused through ten dollar domain name registrations.  We suspect that Clearinghouse and Sunrise dispute resolution processes would prove quite affordable, but it is impossible to know for sure without any prior use of those processes.

In addition, we are not sure what you mean with respect to design marks vis-à-vis cancellation proceedings based on abandonment or nonuse, either of which remain viable bases to challenge national trademark registrations.  To that end, claims notices are supposed to contain ample information to identify the cited trademark registrations.

Thank you,

Brian

Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP


From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jeremy Malcolm
Sent: Thursday, July 13, 2017 5:24 PM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group)

On 13/7/17 2:16 pm, Winterfeldt, Brian J. wrote:

We completely agree that there is a world of difference between speculative token users versus world famous brand owners.

We also note the numerous challenge procedures already in existence to address mere token use, including trademark cancellation actions at the national level,

1. The incentives are wrong (there is no way that an individual or small business would ever expend thousands to challenge a bogus registration for a words like "hotel").

2. Maybe the trademark registration is valid, but it's a design mark or a mark that's limited to a particular class of goods or services, in which case a cancellation action would fail.

3. What national level?  The TMCH is secret, so apart from searching every trademark registry in the world, how are they to know which trademark to cancel?  (And even then, they might come up with several matches, and still won't know which trademark was used in the TMCH.)




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Jeremy Malcolm

Senior Global Policy Analyst

Electronic Frontier Foundation

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