[Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Wed Jan 25 06:39:47 UTC 2012

The question that I have here is do the IP lawyers here who agree with Brian's original comments believe that the full service can be completed by registries and registrars with limited data?
Or are you willing to accept a possible lower standard to protect the full portfolio of marks?

Just to be clear I am not advocating one way or another here, just want to know if there are trade offs being made here and if there are trade offs are people willing to accept them.

Jeff

On Jan 24, 2012, at 10:32 PM, "icann at rodenbaugh.com<mailto:icann at rodenbaugh.com>" <icann at rodenbaugh.com<mailto:icann at rodenbaugh.com>> wrote:

Agreed.  The Clearinghouse, or any substantial part of it, should only be mirrored in a finite number of places, solely for purposes of bandwidth and redundancy.  Queries can be made against any of the mirrored databases in real time, as needed.  Is someone making an argument for more than this?

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com

From: tmch-iag-bounces at icann.org<mailto:tmch-iag-bounces at icann.org> [mailto:tmch-iag-bounces at icann.org] On Behalf Of Keith Barritt
Sent: Tuesday, January 24, 2012 4:30 PM
To: 'Trachtenberg, Marc H.'; Winterfeldt, Brian; tmch-iag at icann.org<mailto:tmch-iag at icann.org>
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

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

Keith Barritt
<image001.jpg>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> [mailto:tmch-iag-bounces at icann.org]<mailto:[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<mailto: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

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From: tmch-iag-bounces at icann.org<mailto:tmch-iag-bounces at icann.org> [mailto:tmch-iag-bounces at icann.org]<mailto:[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<mailto: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

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