[Tmch-iag] Keith Barritt comments on N1 (TMC Authentication Standards) and N2 (Validation Standard for Proof of Use)

Thu Feb 2 16:59:05 UTC 2012

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Dear Fellow IAG Members:

Below are my comments on both N1 and N2, which expand on my earlier comments of January 26.  But first I again query why we have two verbs - "authentication" and "validation" - when either one (or simply "verification") would seem to suffice quite nicely for both areas.  In short, what is the point of having different verbs?  The TMC should verify/authenticate/validate factual information, whether that is the trademark registration/treaty/statute/judicial status of the mark.  I believe we should simplify as much as possible all of the new terminology that tens of thousands of people or more around the world will have to learn.

And while I know this is almost certainly a lost cause, and proper apologies for my inability to come to terms with it yet, at least in my own notes I still always use "TMC" and not "TMCH."  While the convention of abbreviating "trademark" as "TM" is long-established, it seems odd to me to abbreviate the single word "clearinghouse" based on the first letter of each syllable, which to my mind is not conventional for most abbreviations in English (e.g. the mark DSW (not DSWH) for Designer Shoe Warehouse).

N1 Verification Standards

1.      Name of Submitter

I do not believe we need evidence of authorization by the trademark owner of the submitter of the information.  Mere entry of data into the TMC does not give any substantive rights.  Rather, it is only when a Sunrise registration is sought that the ownership of the trademark becomes important.  Thus, it should be easy for anyone to submit information into the TMC, but when a Sunrise regsitration is sought the applicant's name must match the owner of record of the mark in the TMC.

As stated by ICANN in the N1 discussion draft, "[t]he objective is to ensure that the entity asserting the rights is authorized by the rights holder to exercise those rights."  The mere entry of data into the TMC is not an "assertion" of rights.  Rather, the only time that such rights are asserted is for a Sunrise registration, or perhaps in a URS/URDP proceeding if complainants may point to information in the TMC to support their case.  In either event, the name of the party asserting the right, whether a Sunrise applicant or URS/UDRP complainant, should match the name of record of the owner of the mark in the TMC, regardless of who submitted that mark to the TMC (and perhaps regardless of who submits the Sunrise application on behalf of the mark owner if we are to allow such submissions, and why shouldn't we as long as the name of the applicant and the name of the mark owner match?)

If an unscrupulous third party enters another's trademark in the TMC and then tries to rely on it for Sunrise registration purposes, the Sunrise application should be denied because the ownership/address of record for the trademark registration will be different.  So trademark owners will need to be certain they have recorded any changes of ownership/address with the relevant Trademark Office and updated the TMC before claiming Sunrise rights, but I think that is better than having additional procedures in place regarding who is submitting each mark for entry into the TMC.

If an unscrupulous third party enters the mark owner's name and address in its Sunrise application, as well as the electronic contact information from when it originally submitted the information in the TMC, it will have essentially obtained a Sunrise registration for the mark owner, perhaps unbeknownst to the mark owner.  But the registration would not be the third party's to sell or operate.  What would be the incentive for the third party to do so?  Or the harm?  I may be overlooking something obvious, and perhaps we would need some sort of paper notification to the mark owner (sent to the address of record in the TMC) to avoid such problems, but I am not yet convinced that expense is necessary.

2.      Contact Information

Verifying the accuracy of the contact information of the submitter of information through a simple "please respond to this email" message seems reasonable, to ensure that typos of contact information do not creep into the system.

3.      Declaration

The declaration should state that the information submitted "is to the best of the submitter's knowledge believed to be true and current" and not that it "is" true and current.  This change would be consistent with ICANN's draft "declaration" for proof of use in the N2 discussion draft.

4.      Registration Numbers/Information

It should be a relatively simple matter to verify submitted registration numbers (and all other information in the registration) for those national offices that maintain electronic databases.  The trickier issue is how to treat submissions for entry into the TMC for registrations from countries that do not maintain electronic databases that the TMC can easily access.  It is difficult to imagine the TMC incurring the expense of employing trademark searchers to manually verify the status of each registration from such countries.

Rather than requiring a higher fee from such mark owners for such manual searches, or requiring that other mark owners subsidize the expense of manual verification, the TMC could require that all submissions for entry into the TMC from countries that do not maintain an electronic database must include a (certified?) copy of the registration.  Perhaps such registrations (and maybe all registrations?) should be accompanied by a translation into one of a few specified (the six UN?) langauges that the TMC will announce it will accept, to further minimize the expense and burdens on the TMC for entering data.

I do not recall the details of the issues with .biz and .info in this regard.  It might be useful to hear from those among us with more detailed memories/experience (or from ICANN as to the particular problems encountered) so that we can learn from whatever the problems were.

5.      Statute/Treaty Information

In addition to providing a copy of the statute/treaty (plus translation if necessary, as suggested above), the submitter could provide reference to an authoritative source where the information can be verified.  It would be in the submitter's interest to provide an online resource if available to facilitate the entry of the information in the TMC.  The TMC may need to hire legal staff capable of verifying rights alleged in a statute or treaty, especially if that source is not online.

6.      Court Information

ICANN's N1 discussion draft suggests that the documentation submitted should indicate that a court has found rights in a mark in a "class for goods or services."  This should not be "class," but rather for "certain" goods or services.  Very few judicial decisions, if any, will grant rights to a mark holder for an entire "class."

I also query whether the information submitted must be an order signed by a judicial officer.  There does not seem to be any reason why authoritative copies of court decisions, such as are available through Lexis or from the printed West reporters in the United States, should not be sufficient.  The TMC could have the right to request additional information, perhaps in the form of a signed order, if the original documentation submitted is deemed insufficiently authoritative.

N1 Questions for Discussion

1.     Verification of contact information should not be required for each record submitted, but rather only for each new "contact record."

2-4.  The verification of all information in the TMC should be relatively simple.  The more complex it is, the more expensive it will be, and thus the more underutilized and unfulfilling of the promise of providing trademark owners with a meaningful way to protect their rights.  Entry of information into the TMC is not itself an assertion of rights, and it should be easy to enter information, with more scrutiny given to ownership at the time rights are asserted in a Sunrise application (or URS/UDRP proceeding as permitted).

The TMC record must show the name of the owner as recorded in the national trademark office, so there will be added incentive of the trademark owner to ensure that the office's records are up-to-date.  For statute/treaty and court-validated rights, if the name of the claimant is different than stated in the statute/treaty/court ruling (and there may be no named owner in a statute or treaty), then documentation establishing current ownership should be required before any rights can be asserted in a Sunrise application (or for URS/UDRP if data is used for such purposes).  This documentation could be submitted at the time of submission of the information into the TMC at the mark owner's option, and it would be to the owner's benefit to do so, but it should not be a condition of entry as long as such ownership is verified before rights are asserted.

5.  As noted above, rather than requiring a higher fee from such mark owners, or requiring that other mark owners subsidize the expense of manual verification, the TMC could require that all submissions for entry into the TMC from countries that do not maintain an electronic database must include a copy of the registration.  Perhaps such registrations should be accompanied by a translation into one of a few langauges that the TMC will accept, to further minimize the expense and burdens on the TMC for entering data.

N2 Verification of Proof of Use

1.      Declaration

Under 3.8 of the TMC Section of the AGB, mark holders must keep the information supplied to the TMC current.  ICANN's proposed declaration in N2 suggests that the declarant state that "if any Clearinghouse-validated mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned."  As I noted in my comments of January 26, this seems like a reasonable approach and is better than requiring the trademark owner to periodically update the TMC with proof of use (which would make the TMC more onerous to use).  While it might be desirable to specify a time frame, the date of "abandonment" of a mark is not always so clear-cut.  In addition, what constitutes "abandonment" under national trademark laws can also vary.  Perhaps at a minimum a new declaration and specimen could be submitted when the TMC is updated with the new expiration of the registration when the registration is renewed at the national trademark office.

2.      Specimen of Use

The AGB actually provides two different requirements for the specimen, probably unintentionally.  Specifically, Section 5.2 of the TMC Section of Module 5 states that "the mark holder shall be required to provide evidence of use of themark in connection with the bona fide offering for sale of goods or services."  By contrast, Section 1.2.6.1 of the URS Procedure merely refers to proving "use in commerce" without specifying the need for the offer for sale.

This is an important issue, because under U.S. trademark law the offering for sale is not necessarily required to obtain a trademark registration.  For example, use of a trademark on a drug in clinical trials is recognized as a legitimate use in commerce for registration purposes, even if no sales are offered.  The case law is full of examples of other uses of a mark (such as for promotional giveaways, product demonstrations, charitable services offered for free, etc.) that do not constitute an "offering for sale" but nonetheless give rise to trademark rights.

The suggestion in my comments of January 26 was that the standard should simply be whether the material "shows the mark in the bona fide promotion or offering of goods or services covered by the registration."  Perhaps this should be expanded slightly to "shows the mark in the bona fide promotion, or offering, or sale of goods or services covered by the registration."  I do not know if any retreat from the onerous "offering for sale" standard in the current AGB requires that the AGB itself be amended, but perhaps ICANN is making a list of issues in the AGB that need to be tweaked, and this would be one of them.

I agree that mere inclusion of a mark in a domain name should not constitute "use," which is consistent with U.S. trademark law.

N2 Questions for Discussion

1.     It should not be required to submit a specimen for each class or item covered by the trademark registration, but the specimen should cover at least something identified in the registration.  The purpose of the "proof of use" is to show the mark is in use for at least some of the registered goods/services, and that should be enough to qualify for Sunrise registration, even if the mark is not used on all the registered goods/services.

2.     Trademark owners are required to keep the information in the TMC current.  Thus, they will be updating the TMC as registrations are renewed.  A new declaration and specimen could be submitted to the TMC when the mark owner provides the TMC with the new expiration date of the registration when the registration is renewed at the national trademark office.

3.      As noted above, ICANN's proposed declaration in N2 suggests that the declarant state that "if any Clearinghouse-validated mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned."  This seems reasonable and is better than requiring the trademark owner to notify the TMC within a specific period of time, since what constitutes abandonment varies by national law.
Regards,

Keith Barritt
[cid:image006.jpg at 01CCE1A2.0FD942F0]Fish & Richardson P.C.
1425 K Street N.W.
Suite 1100
Washington, DC  20005
Phone:  (202) 626-6433
Fax:      (202) 783-2331
www.fr.com<http://www.fr.com>

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From: Keith Barritt <barritt at fr.com>
Subject: Keith Barritt comments on N1/N2 - TMC Authentication/Validation
	Standards
Date: Thu, 26 Jan 2012 16:21:26 -0500
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