[gnso-rpm-wg] Role of the SMD file in URS proceedings

Fri Aug 17 14:58:07 UTC 2018

During the WG call on 15 August 2018 the following co-chairs addition to the Super Consolidated URS Table was noted:
"There is an action item for staff (originally proposed by John McElwaine) to find out if decoding software is available that can read the coded portions of a SMD file, or if this is possible only using the specific key from the TMCH. Comments from Co-Chairs:
"Do not think it is about the coding; but what is actually in the SMD file. It seems clear that the relevant info is simply not there:
http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain

"Much subteam spent on how to pass the full TM information to Examiners -- and if not SMD - how else?"

I believe this reflects a misunderstanding of the role and purpose of the SMD file in URS proceedings.  As the URS Procedure states:
1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

a. Use can be shown by demonstrating that evidence of use - which can be a declaration and one specimen of current use in commerce - was submitted to, and validated by, the Trademark Clearinghouse)
b. Proof of use may also be submitted directly with the URS Complaint.

In other words, under the URS Procedure a complainant may choose to submit an SMD file as evidence that they have used the trademark on which they are relying - that evidence having previously been submitted-to and accepted by the TMCH in order for the SMD file to have been generated.  The SMD file does not serve as evidence of the trademark itself (the mark, the Nice classifications, the goods and services covered, and so on), this must be separately demonstrated.

This question of the purpose served by the SMD file appeared to be causing confusion to some working group members on the call.  In an effort to shed further light, and hopefully put this matter to rest, I would like to confirm that the experience of my firm when filing URS complaints with the NAF matches the Procedure referred to above.  In other words, the complaint is filed online via a web platform, which prompts you to upload certain documents, namely: a PDF of the trademark registration; a screenshot of the website (generally also as a PDF); and the SMD file to prove use of the mark, or alternative evidence of use.  Examiners are therefore not relying on only the SMD file for the "full TM information."  These requirements are fully explained by the NAF in its Complaint PowerPoint guide (available here: http://www.adrforum.com/URS) which I have attached.   Please see page 14 of the guide.

[cid:image004.jpg at 01D43610.C7E72D20]

The note added to the Super Consolidated URS Table therefore is a non-issue and it should be amended to reflect that this question has been dismissed.

Colin Thomas Jefferson O'Brien
[PartridgePartners_logo_final (002)]
321 North Clark Street, Suite 720
Chicago, Illinois 60654
312-634-9503
https://www.partridge.partners/

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