[Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Wed Jan 25 00:29:56 UTC 2012

I also concur with Brian's well-articulated reasoning.

Keith Barritt
[cid:image002.jpg at 01CCDACE.8D58FFC0]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>

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of Trachtenberg, Marc H.
Sent: Tuesday, January 24, 2012 6:24 PM
To: Winterfeldt, Brian; tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

I agree fully with Brian's comments.

Best regards,

Marc H. Trachtenberg

Winston & Strawn LLP
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-7964

M: +1 (773) 677-3305

F: +1 (312) 558-5700

Bio<http://www.winston.com/index.cfm?contentID=24&itemID=15281> | VCard<http://www.winston.com/sitefiles/wsvcard/15281.vcf> | Email<mailto:mtrachtenberg at winston.com> | www.winston.com<http://www.winston.com>

Follow us on Twitter twitter.com/winstonadvlaw<http://twitter.com/winstonadvlaw>

[cid:image003.jpg at 01CCDACE.8D58FFC0]

From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of Winterfeldt, Brian
Sent: Tuesday, January 24, 2012 2:22 PM
To: tmch-iag at icann.org
Subject: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Dear Trademark Clearinghouse IAG,
In response to recent comments on the T1 Issue, I continue to have reservations against having the Trademark Clearinghouse supply of all of the listed trademarks and their full information to registries and registrars in bulk.  While we fully acknowledge that trademark claims notices will provide information about a specific mark and so will become somewhat public, the receiver of this information (here, the prospective domain name registrant) will be limited, as will the information provided (i.e., not all listed marks).  Moreover, most .BRAND registries will not likely have many third-party claims notices to send.  Accordingly, there again is no need for registries and registrars to receive trademark owners' entire trademark portfolios collected and compiled in one place.
To reiterate, intellectual property owners are concerned that their competitor registries and registrars will obtain their entire trademark portfolios with the ability to quickly and easily sift through this information to easily discern the holder's brand protection strategy for its marks in not only a comprehensive way, but on a more specific jurisdiction-by-jurisdiction and even a mark-by-mark basis.  This could potentially jeopardize a trademark holder's entire portfolio.  We understand that the registries believe that they can implement tracking metrics such as those currently in use with WHOIS lookup to determine if registrants are attempting to mine Clearinghouse data to gain a competitive advantage, but we still feel the brand protection risks far outweigh any gains in adopting such a measure.  Without a demonstrable need for registries and registrars to obtain all of this information, I again recommend that full trademark information should remain at the Clearinghouse, with information provided on a limited, need-to-know basis, namely, full trademark information about the mark at issue to potential domain name registrants who attempt to register an exact match, and only a yes or no answer to a registrar or registry in response to an exact match query.

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.

The contents of this message may be privileged and confidential. Therefore, if this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. ****************************************************************************** Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under the Internal Revenue Code of 1986, as amended.

****************************************************************************************************************************
This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. 

IRS CIRCULAR 230 DISCLOSURE: Any U.S. tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
:FR08-i203d
****************************************************************************************************************************
-------------- next part --------------
An HTML attachment was scrubbed...
URL: http://mm.icann.org/pipermail/tmch-iag/attachments/20120124/d6d4ddd2/attachment-0001.html 
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/x-citrix-jpeg
Size: 934 bytes
Desc: image002.jpg
Url : http://mm.icann.org/pipermail/tmch-iag/attachments/20120124/d6d4ddd2/image002-0001.jpg 
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.jpg
Type: image/x-citrix-jpeg
Size: 3078 bytes
Desc: image003.jpg
Url : http://mm.icann.org/pipermail/tmch-iag/attachments/20120124/d6d4ddd2/image003-0001.jpg 