[gnso-rpm-wg] Role of the TMCH and proof of use (Re: TMCH Blog)

Fri Feb 3 00:37:05 UTC 2017

Hello everyone,

As the group continues to discuss questions that have arisen in relation to possible “gaming” and proof of use, staff thought we should highlight the following extracts from the 2015 RPM Paper that was prepared by ICANN. The final version of the Paper was published in September 2015, and it summarized the feedback received from the community on the draft that had been issued for public comment in February 2015.

The Paper acknowledged the possibility of gaming occurring via Sunrise due to the TMCH’s accepting marks from some jurisdictions that might grant trademark protection for so-called generic words or other highly-sought after terms. Nevertheless, the stated principle is that rights-holders globally will undergo the same validation process regardless of where the marks were registered: “[the] Clearinghouse processes are designed to verify trademark information as it has been issued by the authorities in the various jurisdictions; the Clearinghouse does not play the role of trademark examiners. The [TMCH] Guidelines are designed for review of trademark submissions according to a standard that does not favor one jurisdiction over another.” (see pp. 31-33 of the Paper, which you can find in full on our Working Group wiki page:  https://community.icann.org/x/4SWAAw) 

Regarding proof of use, the Paper noted community feedback on challenges with satisfying the requirement. Some commenters to the draft version of the Paper thought the requirement was too strict, as the same evidence of use sufficient for renewal with the relevant jurisdiction was not always adequate for what the Clearinghouse verification process required. A specific example given was the rejection of samples containing extra text, since the sample must contain the exact name of the registered trademark as recorded in the trademark record. Others had difficulty with submitting samples that were not yet commercialized (although registered), and yet others found the process too time-consuming.

In terms of suggestions for improving the process for submission of proof of use, the Paper listed specific suggestions that included adding an electronic signature option for declaration of use, and providing exemptions for specific countries from being required to submit proof of use when such evidence is already approved by the relevant jurisdiction.

On a more general note, many of the topics, questions and suggestions described in the Paper are likely to be relevant to our work in this PDP. Staff will continue to highlight them as well as specific community feedback as appropriate, though you may like to read the full paper for yourself if you have not done so already.

I hope the above notes are helpful, especially for the Working Group’s evaluation of the TMCH verification criteria, and, possibly, the proof of use requirement.

Thanks and cheers
Mary

On 2/2/17, 14:55, "gnso-rpm-wg-bounces at icann.org on behalf of Brian F. Cimbolic" <gnso-rpm-wg-bounces at icann.org on behalf of BCimbolic at pir.org> wrote:

    Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post.  Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work?  Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative.  To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively.  To me the question is, is this exploitation something that we should look at fixing or addressing within this group?   

    Brian

    Brian Cimbolic
    Deputy General Counsel, Public Interest Registry
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    -----Original Message-----
    From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Reuter, Renee M
    Sent: Thursday, February 02, 2017 2:47 PM
    To: George Kirikos <icann at leap.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
    Subject: Re: [gnso-rpm-wg] TMCH Blog

    One trademark registration in most countries costs significantly more than $10.

    -----Original Message-----
    From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
    Sent: Thursday, February 02, 2017 1:43 PM
    To: gnso-rpm-wg
    Subject: Re: [gnso-rpm-wg] TMCH Blog

    J. Scott (and others who replied afterwards),

    On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans at adobe.com> wrote:
    > The evidentiary weight of a trademark registration differs from 
    > jurisdiction to jurisdiction. In the US, a certificate of registration 
    > from the USPTO does have some proof value, that is subject to certain 
    > defenses for 5 years and a lesser set of defenses should the mark 
    > reach incontestable status after 5 years. I think making sweeping 
    > statements like those contained in your closing paragraph are not helpful.

    I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed.

    Where are alleged TM rights enforced against alleged infringers?
    Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe.

    Sincerely,

    George Kirikos
    416-588-0269
    https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFAw&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=0cZExnHz1HUBryRKPClBlh7-fwON6KarLRwH-vT_KiQ&s=MO6vKmoyKwXAD0De2NszEqSKZTTaLICMdR6vkLJ8q0k&e= 
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