[Tmch-iag] Trademark Clearinghouse IAG - Issue N1 and N2

[Tom Barrett]

January 23, 2012

 

IAG Comments for N1 and N2

Tom Barrett

EnCirca

 

The goal of transparency and accountability for the clearinghouse starts
with the clearly defining the processes of authentication and validation.

 

With this goal in mind, I've generated some additional questions for the
group.

 

 

===

Priority: N1

Issue: Authentication Standards

 

1. First, I have a series of questions about who should the authenticators
be:

 

* What are the minimum standards for someone to serve as an authenticator?

 

* Should the names and biographies of authenticators be published?

 

* Do we require that authenticators be trademark professionals? (lawyers or
trademark agents)?

 

* Should the authenticators be required to have expertise in the language
and trademark laws of the jurisdiction that that they are assigned to
authenticate?

 

* Do we have different standards for assigned authenticators depending on
whether the application is based on a trademark registration, statue/treaty
or court proceeding?

 

* Should the authenticator be resident in the jurisdiction that they are
assigned to authenticate?  Is proximity to the jurisdiction's PTO required
or preferred?

 

* Should there be a global training curriculum that all authenticators
should first complete?

 

2. Another area addresses the discretion authenticators should be able to
exercise when doing authentication:

 

* What are the conditions where the authenticator can override the official
trademark record or determination of local trademark examiner?  For example:

 

*** word text for a semi-figurative mark.  Can the authenticator disagree
with the word text published by the PTO for a semi-figurative mark?

 

*** owner and address of record.  What differences can be overlooked and
which ones trigger a denial and request for documentation?   For example:
"united" vs. "united inc" might be allowed but what about "united ltd" and
"united holdings"?  

 

 

3. Clarifications:

Let's agree on some terminology here:

* Applicant: the trademark rights holder

* Submitter: the TMCH account holder

 

* Submitters create TMCH accounts and may represent one or more applicants.
Contact verification needs to be performed separately for submitters and
applicants.  

 

* For traceability: the full trademark record, and its corresponding
effective date, should be captured for every authentication

 

 

Priority: N2

Issue: Validation Standard for Proof of Use

 

1. Who is eligible to be a validator?

 

* What are the minimum standards for someone to serve as a validator?

 

* What level of trademark expertise (if any) is required for validators?  

 

* Do we prefer or require validators be trademark professionals? (lawyers or
trademark agents)

 

* Should the validator be required to have expertise in the language and
trademark laws of the jurisdiction that they are assigned to validate?

 

* Should the names and biographies of validators be published?

 

* Should the validator be resident in the jurisdiction that they are
assigned to validate?  

 

* Should there be a global training curriculum that all validators should
first complete?

 

2. What are we trying to prevent with validation?

 

* What scenarios are we trying to prevent with the use requirement? (besides
non-use).  

 

* How do we prevent the gaming of the "use" requirement for the TMCH in
order to register generic terms?  (Some examples of use specimens cited in
the discussion document are easily produced, such as applications for
business license, business cards, letterhead, etc.)  

 

One possible answer to prevent gaming:  the use specimen must be in the
context of the authenticated goods and services.  This would eliminate use
specimens that are easily created and devoid of context, such as letterhead,
business cards, etc.

 

3. Procedures and policies

 

* How recent must the "current use" be?  Six months?  Two years? How do we
verify currentness?

 

* Examples of "bona fide offering".  Does use specimen need to match the
goods and services of the trademark?  Or can the use be in a trademark
string's generic or dictionary definition?  Do web pages with PPC ads
qualify as use?

 

* Does the use specimen need to show the exact string that was
authenticated?

 

* What variations (if any) are allowed in the trademark shown in the use
specimen compared to the authenticated mark?

 

For example:  if the authenticated mark is "Kodak, Inc TM", is a use
specimen for just "Kodak" acceptable?  What if the authenticated mark is
"Wilson - the tried and true" and the use specimen is only for "Wilson", is
this acceptable?

 

* Does the use specimen need to be targeted to markets within the
jurisdiction of the trademark registration?

 

* Does the use specimen need to be in the language of the trademark
registration?

 

4.  Authentication and validation processes will not always occur at the
same time

 

* Some trademark owners may elect not to participate in sunrise, or may not
be able to provide proof of use to qualify for sunrise when they apply for
authentication.  They should be able to return at any time to be validated,
if they change their mind or are able to provide proof of use.

 

* We will need to accommodate different rights holders applying for
authentication and validation for the same trademark registration.  For
example: a US trademark owner applies for authentication and has licensees
all over the world.  Its licensees in Egypt (interested in .africa) and
Denmark (interested in .dane) apply separately for validation with different
use specimens.  

 

These Licensees could be represented by different submitters than the one
used by the applicant who applied for authentication.  Presumably, these
validation submitters need to demonstrate authorization to represent the
corresponding validation applicants too.

 

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