[Tmch-iag] comments on draft Trademark Clearinghouse implementation model

Tue May 1 18:12:52 UTC 2012

Karen,

Thanks for the update on the timing of the comments and the call. Is there any update to the timing of the reveal of the TMCH provider? Do you believe we will have the provider on the call that is scheduled for the week of May 14-18 to discuss implementation?

Jeff

From: Karen Lentz <karen.lentz at icann.org<mailto:karen.lentz at icann.org>>
To: "tmch-iag at icann.org<mailto:tmch-iag at icann.org>" <tmch-iag at icann.org<mailto:tmch-iag at icann.org>>
Subject: Re: [Tmch-iag] comments on draft Trademark Clearinghouse implementation model

All,

Thank you for the comments and the interest in having a call.  I am working on scheduling a call during the week of May 14-18.  In light of this, comments can continue to be submitted through Friday, 18 May.  I will provide more call details as soon as I can confirm the date/time.

Best regards,

Karen Lentz
ICANN

From: Hong Xue [mailto:hongxueipr at gmail.com]
Sent: Tuesday, May 01, 2012 2:54 AM
To: Karen Lentz
Cc: tmch-iag at icann.org<mailto:tmch-iag at icann.org>
Subject: Re: [Tmch-iag] Keith Barritt comments on draft Trademark Clearinghouse implementation model

Dear All,

I agree with the proposal that a call be scheduled to discuss the details of the implementation model. Q&A would be useful. If taken the call into account, the commentary period should be reasonably extended.

With respect to the substance of the draft,  I welcome its reference to the IDN readiness. "The Clearinghouse will accept trademark
information in its native form (i.e., using the Unicode character set); specific variant character mappings must be handled by the
registry." It seems each Registry are obliged to handle IDN variants issues but are not provided any guidance for handling. It would inevitably result in discrepancies. Also, should a Registry notify the TMCH of its variants management policy so as to ensure TMCH to implement that policy in authentication and validation? I feel many details are missing and gaps are wide open.

P.33 refers to "Local Caching at Registry", does it refer to new gTLD registries, not local CH providers? If data could be locally cached, why then service provider must be centralized as one?

Hong

--
Dr. Hong Xue
Professor of Law
Director of Institute for the Internet Policy & Law (IIPL)
Beijing Normal University
http://www.iipl.org.cn/<http://iipl.org.cn/>
19 Xin Jie Kou Wai Street
Beijing 100875 China

On Tue, May 1, 2012 at 3:10 AM, Karen Lentz <karen.lentz at icann.org<mailto:karen.lentz at icann.org>> wrote:
Keith, thank you for these comments which we are reviewing.

As a reminder to all, the draft implementation model and summary of IAG input are available on the wiki and comments are requested by Friday, 4 May.  I will send out a reminder notice shortly.

Best regards,

Karen Lentz
ICANN

From: Keith Barritt [mailto:barritt at fr.com<mailto:barritt at fr.com>]
Sent: Wednesday, April 25, 2012 4:07 PM
To: Karen Lentz; tmch-iag at icann.org<mailto:tmch-iag at icann.org>
Subject: Keith Barritt comments on draft Trademark Clearinghouse implementation model

Dear All:

I appreciate and commend all the hard work that ICANN has put into summarizing input from the IAG and in preparing the draft implementation model.  However, I do have a few comments below on the draft implementation model.

My primary concern is that there are many instances where the recommendations are somewhat vague and the relative roles of ICANN and the TMC are unclear.  In the absence of specific requirements from ICANN upon which to comment, I am concerned that at some point in the future we will be presented with a “final” document that was not fully vetted by the community   For example:

Page 4:  “Standards ensuring that the Clearinghouse is in the role of ‘fact verifier’ will be in place, limiting the discretaion that can occur in any result, and creating consistency across the process.”  While the goal is beyond question, the question remains as to precisely what those standards will be.

Page 10:  It is unclear to me if ICANN is proposing to allow entities other than the rights holder to obtain Sunrise registrations.  Page 10 refers to the submission of “assignment documentation” if the names do not match, but does not clarify if licensees can qualify.  Section 6.2.3 of the “Trademark Clearinghouse” Section of the final Applicant Guidebook states that the “proposed” Sunrise eligibility requirements include ownership of a mark, so a licensee would not qualify under the earlier “proposed” requirements, but what is the final rule going to be?  As I have commented during the IAG process, I believe only the rights holder as reflected in the TMC’s records should be eligible, for ease of administration and to allow third parties to challenge undeserved Sunrise registrations.

Page 11:  “Penalties should be in place to help deter fraudulent submissions.”  While we all want to deter fraud, it would be helpful to have an opportunity to comment on specific proposed penalties and their triggers.  See also page 17 that states “Penalties for failing to keep the information current can include removal of a record.”  The “can include” leaves the full scope of potential penalties unknown.  Will ICANN be specifying the penalties, or will the TMC have discretion that is not subject to community input?

Page 12:  It is not clear what “equitable treatment” with respect to verifying registration numbers really means.  Does it mean that all rights holders should pay the same to have their rights recorded in the TMC, or that rights holders from jurisdictions where information is not on-line should pay more, since the verification process will be more complex?

Page 13:  “[I]t is recommended that the TMC verify that the court existed as of the date of the order . . .”   Is this really an ICANN “recommendation” or mandate?  Will the TMC have discretion on how to verify certain factual information?

Page 15:  Is the “recommended” declaration a suggestion or mandate to the TMC?  Will the TMC have discretion on what the declaration will say?

Page 16:  Is the “recommendation” that the sample of use be of a particular type a mere suggestion or mandate to the TMC?  I also believe that the “without the possibility of confusion” standard is asking the TMC to make a legal judgment beyond its scope.  I understand and agree that the TMC needs some discretion in the particulars of what to accept.  However, I note that under U.S. trademark law at least, an application for a business license would not be considered use of the mark, as it is not use before the public in a trademark sense.  Likewise, the appearance of the mark in a license is not public use.  Thus, these two examples should be stricken from the list.

Page 18:  “An authenticated Clearinghouse record should be renewed once per year. . . .  The renewal process should not require resubmission or re-authentication of information that was previously provided. . . . [i]t is recommended that the annual renewal for the record not require submission of a new sample [of proof of use].  However, submission of a curent sample should be required at a longer interval (e.g. every five years). . .”  Are these suggestions or mandates to the TMC?  Will the TMC have discretion in how often certain information needs to be renewed?

Page 19:  “The Clearinghouse provider should publish and supply notice of any grace period procedures that are instituted.”  Will ICANN be mandating a grace period, or will the TMC have discretion?

Page 20:  “A Sunrise code should be unique per mark.”  If a “Sunrise code” approach is adopted so that a TMC record can be relied upon only once per Sunrise per new gTLD, I believe this sentence should be “A Sunrise code must be unique per mark.”

Other issues include:

1)      I continue to believe “verifies” as a single verb suffices in place of “authenticates” and “validates.”  With each use of “authenticate” or “validate” we will likely see terms like “authenticate the contact information” and “validate the proof of use.”  Why not just “verify” for both?  It has been suggested these are two different activities, but so is checking an elecronic database to verify the trademark registration number and reviewing a paper record to verify a registration’s expiration date, but we don’t feel compelled to have two verbs for these different activities.  I suspect this is a lost cause, but I continue to resist the unnecessary introduction of terms that have specialized meaning when in practice we will likely need to specify what we mean anyway.  I can see the conversations with clients now:

Lawyer:  “Your filing has been authenticated by the TMC, but not yet validated.”

Client:  “Huh?”

Lawyer:  “The TMC has verified that your trademark registration data is correct, but hasn’t yet verified your proof of use.”

Client:  “Oh, why didn’t you say so in the first place?!”

2)      I commend ICANN for abandoning the use of “registrant” to refer to a trademark rights holder who has recorded its rights with the TMC.  However, I note that on page 37 the term “registrant” is evidently inadvertently used to refer to a rights holder that is applying for a Sunrise registration.

3)      The declaration for submission of information to the TMC referred to in Section 2.1.5 on page 12 should be “to the best of the submitter’s knowledge,” similar to the declaration to accompany proof of use (see page 15).

4)      I believe more detail should be provided regarding Sunrise eligibility disputes, and particularly regarding proof of use issues.  ICANN should specify that a third party can challenge a Sunrise registration based on lack of use.  The role of the TMC and registry in such disputes should be clarified (see pages 42-43).  Under Section 6.2.4 of the “Trademark Clearinghouse” section of the AGB, the TMC is to hear challenges regarding Sunrise eligibility requirements, which would include proof of use.

5)      Will rights holders be able to submit information to the TMC only for Sunrise, and opt out of the Claims service?

6)      Should the TMC validate proof of use only when a Sunrise application is filed to reduce the burden of validation of records for which proof of use may never be an issue, or is it unrealistic to expect the TMC to be able to validate fewer records at Sunrise but on short notice?

7)      Can a rights holder submit proof of use after a trademark is recorded in the TMC, in anticipation of a particular Sunrise filing?

Keith Barritt
[cid:image001.jpg at 01CD2785.2E58AF30]Fish & Richardson P.C.
1425 K Street N.W.
Suite 1100
Washington, DC  20005
Phone:  (202) 626-6433<tel:%28202%29%20626-6433>
Fax:      (202) 783-2331<tel:%28202%29%20783-2331>
www.fr.com<http://www.fr.com>

From:tmch-iag-bounces at icann.org<mailto:tmch-iag-bounces at icann.org>[mailto:tmch-iag-bounces at icann.org]<mailto:[mailto:tmch-iag-bounces at icann.org]>On Behalf Of Karen Lentz
Sent: Friday, April 13, 2012 8:34 PM
To: tmch-iag at icann.org<mailto:tmch-iag at icann.org>
Subject: [Tmch-iag] IAG summary and draft Clearinghouse implementation model

Dear colleagues,

Please see attached 2 documents:  (1) a draft implementation model for the Trademark Clearinghouse (reflecting many of the inputs from the IAG), and (2) a summary report compiling the feedback received from the IAG process.

These documents are for your review and comment – please submit any comments to the list by Friday, 4 May so that we can also compile these and take them into account.

We do not have any additional IAG calls scheduled currently, although we can schedule a call, or an open webinar to walk through the model, if there is interest in doing so.

These materials have also been posted on the wiki at https://community.icann.org/display/cctrdmrkclrnghsiag/Documents.  We look forward to your comments.

Best regards,

Karen Lentz
ICANN

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