[Tmch-iag] N3 and N4 Comments

[John McElwaine]

Dear IAG:

 

N3 Comment:

 

The issue of abandonment (non-use) of a trademark that is the subject of
a trademark registration recorded in the Trademark Clearinghouse(TMCH)
is going to be a common issue.  Section 7.2 of the Trademark
Clearinghouse (11 Jan 2012) requires that "[r]egistries must recognize
and honor all word marks: (i) nationally or regionally registered and
for which proof of use - which can be a declaration and a single
specimen of current use - was submitted to, and validated by, the
Trademark Clearinghouse."  However, the current list of four challenges
in Section 6.2.4 does not clearly allow a challenge that the use
determination was improperly made or that a mark recorded in the TMCH
was no longer eligible because it was not in use at the time the domain
name was registered.  Unless, there is another manner to remove these
non-used, abandoned marks from the TMCH, I would suggest adding another
ground for an SDRP:  "(v) At the time the challenged domain name was
registered, the registrant's mark contained in the trademark
registration entered in the Trademark Clearinghouse used to support the
sunrise registration of the challenged domain name was not in current
use."   In order to avoid frivolous challenges of non-use, I would echo
support for a loser pays model suggested by Keith Barritt.  

 

N4 Comment:

 

Along the same lines, with respect to N4, in (or as an alternative to
adding a SDRP challenge) I would  recommend the ability for
third-parties to challenge and remove non-used trademarks from the data
set for Sunrise Eligible trademarks.   

 

Furthermore, as discussed on the last conference call, after entry into
the TMCH, I would recommend a periodic renewal (between 1 and 3 years)
of the trademark data that would be easy and quick for registrants.  See
Trademark Clearinghouse Section 3.9.  I would suggest an process similar
to the maintenance of domain name registrations that would have the
following qualities.  First, electronic submission such as an email
reminders providing a link and/ or a website registrant portal should be
used whereby the trademark owner reaffirms that the data initially
provided is accurate and pays its renewal fee.  Second, the owner of
TMCH records should be able to renew those records within a set period
of time so that they have the option of renewing early to synch all of
their records to one periodic renewal date.  Third, I would suggest that
trademark owners could opt in for renewal fees to be automatic charges
to a credit card account.  This would ensure that records are not
accidentally lost for non-payment of renewal fees.  In order to make
sure, however, that information is reaffirmed correctly and timely, late
charges and penalties could be assessed via this method.  See Trademark
Clearinghouse Section 3.8.

 

John

 

 

John C. McElwaine

Nelson Mullins 

Nelson Mullins Riley & Scarborough, LLP

Charleston Office

151 Meeting Street, Ste. 600  |  Charleston, SC 29401  |

d: +1 843.720.4302  | f: +1 843.534.4269 | m: +1 843.209.8988|

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