Re: [gnso-sti] Questions raised on Clearinghouse Strawman; consensus?

[Alan Greenberg <alan.greenberg@xxxxxxxxx>]

Two brief comments.

At 30/11/2009 12:56 PM, Kathy Kleiman wrote:

> Many things passed quickly during the last Clearinghouse discussion,
> including many new ideas,
> presented by one person, disagreed by another, and then written up, we
> found, as consensus.
>
> So let's go back to a few issues we do not think have been decided, and
> may block the process,
> which, has come so far.
>
> A. Marks need to come from jurisdictions a substantive evaluation and
> verification. (That was an IRT idea.)
We may have discussed this to death in the meeting, but in case not, 
I see the issue of what goes into the clearinghouse (appropriately 
flagged of course) as being very different from what is judged to be 
important in a URS (where to my un-schooled mind, a TM which has 
undergone evaluation is quite different from one that has not).

> B. Response to #2 and #6:
> We/ NCSG does not support any specific requirement or language for
> ancillary services.  **Content of the Clearinghouse
> is a policy issue, not an implementation detail.** We support ICANN
> contracting for a separate and independent Trademark Clearinghouse
> database,
> along the lines we discussed; all other databases and ancillary services
> are a market detail.
>
> C. Response to #7:
> We don't recall discussing pre-registration for URS, and certainly not
> to any level close to consensus. Detail sought.
AS I understood it from the IRT, one of the services the 
Clearinghouse could offer was to tell a URS provider that it had 
verified that a TM had been legitimately registered in a specific 
jurisdiction and with specific characteristics. This would save the 
URS provider significant time and expense (and they would presumably 
pay for this service), and such pre-registration would reduce the 
delay before a URS notice could be sent to the registrant (benefiting 
the TM holder and giving more justification for paying the 
Clearinghouse registration fee).
The URS provider would still have to satisfy itself that the 
jurisdiction issuing the TM was one that it want to have faith in 
regarding how rigorously they validated the mark (just as it would if 
it did its own leg-work).
Alan



> Kathy
> ----------------------------------------------------
>
> Great concern about the use of "consensus" here:
>
> #6 Voluntary Pre-Launch Use of the Trademark Clearinghouse
> Mandatory use to support pre-launch of a registry for either a sunrise
> process or a IP Claims Service (no requirement that a registry use
> both);  Sunrise registrations should allow for specialized gTLDs to
> restrict eligibility for sunrise registrations to fit the purpose of the
> registry (example, .shoe could restrict sunrise to only trademark
> registrations in class of goods and services related to shoes).  No
> requirement of use by existing registries since the mandatory use is
> only for pre-launch activities.
>
> #7 Voluntary Use of the Trademark Clearinghouse Post-Launch
> Voluntary use as a pre-registration process for URS;  no requirement
> that the TC be used to support post-launch IP Claims;
> TC may provide post launch IP Claims Service as a separate nonexclusive
> service, with implementation details left to Staff to address possible
> monopoly and competition concerns (such as making information available
> to competitors);  Report to indicate that registries should consider
> providing post launch IP Claims protection for common law rights if it
> fits the registry's purpose.