[Tmch-iag] Trademark Clearinghouse IAG - Issue T1

Wed Jan 25 15:40:26 UTC 2012

From my perspective, all that is required for registries is that they have the most basic of information, namely, the existence of a validated right and the validated right’s owner.  What will not be needed by registries is an in-depth detailed set of information regarding all brands, classes claimed, countries of registration etc.  Unless my understanding is mistaken, it does not seem to me that registries have a need for the information they are advocating to receive.  Please let me know if I am missing something.  Thanks. 

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Michael D. Adams
MAYER BROWN LLP
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From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of Neuman, Jeff
Sent: Wednesday, January 25, 2012 7:46 AM
To: Jeff Eckhaus; mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

From a registry perspective, if we decide to centralize all of the data in one place, as is being advocated, we run a substantial risk of affecting the real time registration process and we create a single point of failure.  If that Clearinghouse were to ever go down (or even take a scheduled maintenance), then each registry that is relying on the Clearinghouse for real time IP Claims or real time Sunrise will also go down.  Registrations may be tied up in queues or not accepted at all.  Customer support inquiries to both the registries and registrars will be a nightmare to say the least.  Who will compensate the registries and registrars for lost revenue as a result?  

Question to the IP Owners:  If I really wanted information on my competitors and the brand protection strategy, cant I just go to a Thomson and Thomson or any trademark watch service and order a search on my competitors.  In other words, I believe now I am free to go to one of these search firms and demand search results on any third party to find out their brand protection strategy.  So, as Microsoft, couldn’t I order a service from Thomson and Thomson or CSC to search all of the filings of Google and alert me when new registrations come in?  How would this be different?  

And if there is still a concern, couldn’t we create a code of conduct which forbids the disclosure of such data or separates the duties out whereby anyone working on the registry cannot share that information with others even within their own corporation.

There are tradeoffs here that need to be considered.

Jeffrey J. Neuman 
Neustar, Inc. / Vice President, Business Affairs

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From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of Jeff Eckhaus
Sent: Wednesday, January 25, 2012 1:40 AM
To: mike at rodenbaugh.com
Cc: tmch-iag at icann.org
Subject: Re: [Tmch-iag] Trademark Clearinghouse IAG - Issue T1

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" <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] On Behalf Of Keith Barritt
	Sent: Tuesday, January 24, 2012 4:30 PM
	To: 'Trachtenberg, Marc H.'; Winterfeldt, Brian; 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

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	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
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	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 

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