[Tmch-iag] Keith Barritt comments on N1/N2 - TMC Authentication/Validation Standards

[Keith Barritt]

Below are my comments on the authentication/validation of marks in the Trademark Clearinghouse.  Apologies for being a day late.


Ease of Use

I favor making the authentication/validation (is it really necessary to have two different terms?) process relatively simple.  The more complex it is, the more expensive it will be, and thus the more underutilized and unfulfilling of the promise of providing trademark owners with a meaningful way to protect their rights.

Though I am not a computer expert, I think that the entry of information (let's not call it yet another "registration") into the TMC might be largely automated/mechanical.  We don't want expired trademark registrations in the TMC, but beyond that, it should be simply a reflection of exactly what is in the registration, including ownership and address information, etc., without an international army of trademark lawyers having to pore over the entries.


Ownership

If an unscrupulous third party tries to enter another's trademark in the TMC and then "piggy-back" on it for Sunrise registration purposes, the Sunrise application should be denied because the ownership and address of record for the trademark registration will be different.  So trademark owners will need to be certain they have recorded any changes of ownership/address with the relevant Trademark Office and updated the TMC before claiming Sunrise rights, but I think that is better than having additional authentication procedures in place regarding ownership claims for every potential entry into the TMC.


"Word Marks"

Section 3.2.1 of the Trademark Clearinghouse Section of the September 19, 2011 Applicant Guidebook states that all registered "word marks" are eligible for inclusion in the TMC.  The question arises as to whether this should include "merely descriptive" marks that (in the U.S.) are registered on the Supplemental Register, or marks that also include a design component (in which case the mark might be on the Principal Register with the generic word element "disclaimed").

At a minimum, I believe we should not encourage Sunrise priority rights based on trademark registrations for marks that consist of solely generic word elements (plus a design).  However, not all countries have similar "disclaimer" practice, and some registrations may be granted for a "generic word + design" mark without any official indication that the word is generic.  On the other hand, it seems impractical to have the TMC put in the position of evaluating whether certain terms are generic (or descriptive) under the local language and national law of any particular trademark registration - indeed, such issues are often hotly contested.

I do not recall how .biz (or was it .info?) dealt with Sunrise based on trademark registrations that had a disclaimer or were on the Supplemental Register.  Is there some institutional memory among us so that we can learn from and improve upon whatever that experience was?


Proof of Use

Section 5.2 of the TMC Section of the AGB states that "[a]cceptable evidence of use will be a signed declaration and a single specimen of current use."  Thus, it should not be required to submit a specimen per class or per item covered by the trademark registration.  The purpose of the "proof of use" is to show the mark is in use for at least some of the registered goods/services, and that should be enough to qualify for Sunrise registration, even if the mark is not used on all the registered goods/services.

Here again, the system should not be so complex that lawyers are reviewing every specimen.  The standard should simply be whether the material "shows the mark in the bona fide promotion or offering of goods or servcies covered by the registration," supported by a declaration.  While the U.S. Trademark Office would not accept promotional materials as a specimen of use for registering a mark for tangible goods (as opposed to intangible services), this is an international system and we should favor ease of use over concern why, largely for historical reasons, the U.S. does not accept promotional materials as a specimen for goods (which is easing all the time with sales of goods over the Internet).  Keeping the standard simple is also preferable considering that the "proof of use" requirement was added late in the process without much public discussion and most of the world's trademark laws do not have such a requirement.

Under 3.8 of the TMC Section of the AGB, mark holders must keep the information supplied to the TMC current.  The model language recently supplied to us by ICANN in N2 suggests that the declaration accompanying the specimen state that "if any Clearinghouse-validated mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned."  This seems like a reasonable approach and is better than requiring the trademark owner to have to periodically update the TMC with proof of use (which would make the TMC more clunky to use).  While it might be nice to specify a time frame, the date of "abandonment" of a mark is not always so clear-cut.  In addition, what constitutes "abandonment" under national trademark laws can also vary.  Perhaps at a minimum a new declaration and specimen could be submitted when the TMC is updated with the new expiration of the regsitration when the registration is renewed at the national trademark office.

Regards,

Keith Barritt
[cid:image003.jpg at 01CCDC46.8D534D90]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>


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