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

Fri Feb 3 00:27:04 UTC 2012

Dear Keith,

I think you offer some very great points here.  I would like to respond to
some of them and raise some questions.

1. Two verbs (authentication and validation).
I think the two verbs are necessary.  There are two distinct processes
performed by the TMC, each with their own independent lifecycles and
statuses.  Some Trademark owners may elect to participate in trademark
claims only, or have no option to participate in sunrise due to lack of a
use specimen.  

Is it possible that two (or more) different parties to apply separately for
the same trademark registration? - for example, a trademark owner applies
for authentication for the claims service, while its various licensees apply
for validation of their use specimens so they can be eligible for sunrise
periods restricted by geography or goods and services. (assuming licensees
can be validated by the TMC)

2. asserting rights
I agree that the "submitter" does not need to be the trademark owner.  I
wonder if your point about rights being asserted during sunrise makes some
implicit assumptions that have not been addressed:

- Does the sunrise applicant need to be a party that was validated by the
TMC? (even if they can produce the token proving validation?)

- Is it expected that the TMC will validate parties who are not
owners-of-record, such as licensees and assignees? 

- Is the sunrise registrant free to sell their domain name to any third
party at any time? (without also selling their underlying trademark rights?)

- Should the Whois for the sunrise registration display the sunrise
registrant AND the underlying trademark owner (if different)?
(I believe in the past that some gTLD's would display the original sunrise
registrant in the Whois even if the domain name change ownership over time.)

3. Authoritative Source
I agree that the government trademark record should be viewed as the
authoritative source.  Trademark owners should be encouraged to ensure that
ownership and addresses are accurate and current before submitting
applications for authentication.  The TMC should not simply accept
"declarations" from applicants who have failed to properly maintain their
trademark records, since this will cause the TMC records to diverge from
government trademark records.  If declarations are accpeted, then there
should be a surcharge to cover the extra  work required

Perhaps the TMC should reward applicants with accurate data since they are
less costly to process than applications with inaccurate data?

I agree that certified trademark records should be included with all
applications from jurisdictions without online databases.  But we should
also detail the steps to review these documents.  Should the reviewer have
expertise in the language and jurisdiction of the trademark? (I think yes)
What attributes should be reviewed? 

At a minimum: the TMC should verify the document reflects an active and
valid registration and accurately reflects ownership and address of the
applicant.  So, if rejected, what corrective options is recommended for the
trademark owner to take?

4. Specimen of Use
What else should be evaluated in the use specimen besides whether it
reflects the goods and services of the trademark?  

- Should the specimen be in the same language as the trademark?  

- Shold the specimen be targeted towards markets in the same jurisdiction?  

- How recent does the specimen need to be?  

- What other evaluation criteria should the TMC follow to determine if the
specimen is acceptable?

- Should the reviewer have expertise in the language and jurisdiction?  (I
think yes)

best regards,

Tom Barrett
EnCirca

  _____  

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On
Behalf Of Keith Barritt
Sent: Thursday, February 02, 2012 11:59 AM
To: tmch-iag at icann.org
Subject: [Tmch-iag] Keith Barritt comments on N1 (TMC Authentication
Standards) and N2 (Validation Standard for Proof of Use)

Description: Description: Description: Description:
http://fishnet.fr.com/C15/Marketing%20Department%20Policies/Fish%20Logos/FR_
logo.jpg

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

Description: Description: Description:
http://fishnet.fr.com/C15/Marketing%20Department%20Policies/Fish%20Logos/frl
ogo.bmpFish & Richardson P.C.

1425 K Street N.W.

Suite 1100

Washington, DC  20005

Phone:  (202) 626-6433

Fax:      (202) 783-2331

www.fr.com

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