[Tmch-iag] Trademark Clearinghouse IAG - Authorized Record Holders

[Winterfeldt, Brian]

Dear Trademark Clearinghouse IAG,

I would like to submit the following comment regarding authorized record holders:


The Model notes that "A commonly-expressed request by rights holders is the option to submit rights data to the Clearinghouse either directly, or by use of an agent (i.e., a party engaged to act on the rights holder's behalf for this purpose)," and then discusses whether such an agent needs to be accredited.  The Model then goes on to state that this will not be required and that there will be no limit to who can submit a Clearinghouse application.  It is agreed that any third party should be authorized to act as a submitting party on behalf of a rights holder to best and most fairly accommodate the different business models and legal needs of various rights holders and should more specifically identify what evidence is required and will be deemed sufficient to demonstrate authorization.



In the case where the record holder name submitted to the TMCH is not the same as the rights holder name of the registration submitted, the Model states that the submitting party will need to submit "evidence such as assignment documentation...to ensure that the entity asserting the rights is authorized by the rights holder to exercise those rights" and that "These cases will require specific review steps by the Clearinghouse to authenticate the supporting documents."  The Model does not make clear what level of authorization is necessary nor what documentation would be sufficient.  The model does provide the example of assignment documentation as evidence that the name submitted is authorized by the rights holder to obtain a TMCH record, but since the Model does not specify what is involved in the review process, it is not clear whether such assignment would need to be recorded in the relevant jurisdiction to be deemed sufficient evidence of authorization.  Recordation of assignment, license, or other rights transfer/agreement should not be required as this may not be legally required in all jurisdictions.  Licenses or other authorization-to-use agreements, on the other hand, should not be acceptable unless they specify that the record holder has the specific right to obtain a TMCH Record, as a rights holder may have multiple licensees in different jurisdictions and their licensees should not be able to obtain greater rights than their licenses were intended for by obtaining TMCH records and subsequent Sunrise registrations without the rights holders' permission.  For ease of submission, perhaps a model licensing agreement specifying the right to obtain the Clearinghouse record could be created that would be the only non-assignment document acceptable to support these kinds of records.



Finally, one possible requirement that could deter fraud is notarization/legalization of the evidence submitted.  To the extent that there are disputes as to authorization or suspected fraud in submissions to the TMCH, these can be best addressed through a robust dispute resolution mechanism.



Thank you,



Brian

Brian J. Winterfeldt, Esq.
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
TEL 202.429.6260 | FAX 202.261.7547

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