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

[Greg Shatan]

Jason and all,

This "elaborate scenario" (filing "in “remote” jurisdictions with
non-searchable DBs to gain a priority date") is not at all the rationale
that was put forth by those in favor of a closed TMCH database.

I believe it's incorrect to say that this scenario was raised (in the chat,
by John McElwaine, or otherwise) introduced this concept as part of an
argument in favor of a closed TMCH database.

I am not even aware of the use of the strategy as described in its
totality.  I think this may be an unfortunate misunderstanding or
mis-recollection of the earlier discussions and the surrounding facts.

As I recall, the rationale is much more straightforward: A brand owner's
choice of the subset of their trademarks to put in the TMCH is a
confidential strategy. Giving third parties knowledge of this strategy
allows these third parties to engage in activities that would harm TMCH
registrants, which in turn would discourage use of the TMCH.  These
activities include:  Targeting the brand owner's marks not in the TMCH for
domain name registrations that can then be exploited in various ways;
Developing a counter-strategy for TMCH registration (either by registering
the same marks in the TMCH to enable contested Sunrises, or by registering
the non-TMCH marks to gain advantage in Sunrise); Targeting the non-TMCH
marks for counterfeiting, knock-offs, etc. (on the theory that the brand
owner is less likely to put resources into policing and enforcing these
less important marks), etc.

However, if I'm incorrect about any of this, I'm always happy to learn new
facts.

I am aware that some applicants may choose to file in jurisdictions where
registrations issue more quickly.  Even this limited scenario is not the
practice of any brand owners I have represented or of which I'm
specifically aware.  I can't speak to who or what type of applicant engages
in even this limited practice.

I do recall that one or a few people or entities have used some aspects of
this strategy or something similar to try to "game" Sunrise.  The specific
concern about gaming the TMCH and Sunrise is one that I believe we need to
deal with. I believe we should do this in a targeted fashion, both to get
to consensus in the WG and to avoid disadvantaging legitimate TMCH
registrants.

Best regards,

Greg

On Fri, Oct 11, 2019 at 12:52 PM Jason Schaeffer <jason at esqwire.com> wrote:

> 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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