[GNSO-RPM-WG] Q#15 Transparency for the TMCH

[Jason Schaeffer]

Hi All,

Sorry for not being able to address this on yesterday's call - I was bounced from the Zoom and couldn't reconnect from my mobile.  After much consideration of the chat comments and statements during the past two calls I've parsed together the following strategy concerns that might be at issue.   It seems the opposition to an open/transparent TMCH have set forth the following rationale:

Large brand owners like the ability to file in "remote" jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.   For example, Party A could "secretly" register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to "go public."   In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its "secret" brand plans or strategy.   Alternatively, there may also be a similar use case with a registration in the EU.  This is what I understand the opposition was presenting in the comments last week and again yesterday.

This use of the "secret TM priority" filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic.   However, we are discussing this in the context of the TMCH.  How can these parties obtain Sunrise protection without proof of use?   This is even more challenging in the case of an EU registration that might not be based on actual use.

If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy?  What is the POU and what is the declarant stating to the TMCH?  Is this the position that the opposition is proffering to block transparency of the TMCH?

In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I'm not yet seeing an important justification that outweighs the important benefits of an open TMCH.

Thanks,

Jason

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