[Tmch-iag] N3 and N4 Comments

Fri Mar 2 21:23:59 UTC 2012

Dear IAG,

I agree with the N3 and N4 comments submitted by John McElwaine and Keith Barritt's as well as those submitted by Brian Winterfeldt.  On the periodic renewal I would favor the longer term of two or three years which comes closer to the general global use requirements of three to five years.  In addition. a longer renewal period has the added benefit of lessening the burden placed on the TMCH.

Daretia Austin
Director - Trademarks
Time Warner Inc.
One Time Warner Center
Office 14-257
New York, NY 10019
Tel: (212) 484-7832
Fax: (212) 937-4621
Email: daretia.austin at timewarner.com<mailto:daretia.austin at timewarner.com>

[cid:549191621 at 02032012-0111]

________________________________
From: tmch-iag-bounces at icann.org [mailto:tmch-iag-bounces at icann.org] On Behalf Of John McElwaine
Sent: Friday, March 02, 2012 12:36 PM
To: tmch-iag at icann.org
Subject: [Tmch-iag] N3 and N4 Comments

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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