[Tmch-iag] Trademark Clearinghouse IAG - Issue N3

[Winterfeldt, Brian]

Dear Trademark Clearinghouse IAG,

In line with the Trademark Clearinghouse's mandate to hear Sunrise challenges, but not to decide legal claims, the Sunrise Dispute Resolution Procedure (SDRP) should be limited to the following grounds: (1) where a Sunrise Applicant submitted a Sunrise Application that is not an exact match to a listed Clearinghouse registration, (2) where a Sunrise Application is based on one or more clear-cut unqualified listed registrations under the current SERs that can be determined by objective data such as cancelled trademark registrations or registration dates, or (3) where a Sunrise Applicant has submitted fraudulent documents, including specimens, in support of a TMCH listing.  This would decrease the likelihood that the TMCH or third parties could unnecessarily delay sunrise registrations in order to litigate gray legal issues such as bona fide use and/or abandonment, and keep the TMCH within its mandate not to decide legal claims.  This would also likely reduce Sunrise Application deterrents to participation by trademark owners and any subsequent adverse impact on the financial success of open registries that sell domain name registrations and will rely on Sunrise Registrations to increase profit.

Thank you,

Brian

Brian J. Winterfeldt, Esq.
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
TEL 202.429.6260 | FAX 202.261.7547

The information contained in this e-mail may be privileged, confidential, and protected from disclosure. If you are not the intended recipient, any dissemination, distribution or copying is strictly prohibited. If you think that you have received this e-mail message in error, please e-mail the sender at "bwinterfeldt at steptoe.com<mailto:bwinterfeldt at steptoe.com>."  Thank you.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: http://mm.icann.org/pipermail/tmch-iag/attachments/20120229/fb961c13/attachment.html