R Tindal comments

[Richard Tindal <richardtindal@xxxxxx>]

I support the proposed Trademark Clearinghouse (TMCH)  and endorse its new 
feature that provides for the validation of marks where substantive review was 
not previously undertaken.   The TMCH will be a powerful tool for the 
protection of rights holders in new TLDs. 

There is only one feature in the TMCH that I believe will harm rights-holders 
and consumers.   This new feature was not in previous versions of the TMCH, nor 
was it in the recommendations of the IRT or the STI.    In previous versions of 
the DAG a registry had the discretion to decide which trademark classifications 
were applicable to its implementation of Sunrise or Claims service.  For 
example, the .SHOES registry could run a Sunrise for all TMCH registrations in 
classifications applicable to its TLD (footwear, apparel, etc).  The registry 
did not need to run a Sunrise in .SHOES for trademarks in unrelated 
classifications like software (for example).  Similarly,  the .SOFTWARE 
registry did not need to include footwear related trademarks in its Sunrise.  

This latest version of the TMCH limits the discretion of registries to do this. 
 Now, in order to apply discretionary judgment as to which classifications are 
applicable, the registry must apply (and presumably enforce) second level 
eligibility restrictions during its regular registration process (i.e.  for 
ongoing registrations after Sunrise or Claims).  For example the SHOES registry 
would have to, on an ongoing basis, enforce some sort of policy that decides 
who can and cannot purchase .SHOES names.  

I think this new requirement in the TMCH is unnecessary and harmful to rights 
holders and consumers.   Let's first take the scenario where the registry 
chooses NOT to enforce eligibility restrictions in its TLD (i.e. there are no 
ongoing rules about who can register names).  In this scenario a rights holder 
for the word 'cool' in the trademark classification 'footwear' and the rights 
holder for the word 'cool' in the classification 'software' have equal rights 
to cool.shoe in the SHOE registry.  The proposed mechanism gives no preference 
to the holder of the more applicable classification.  Even more harmfully, the 
new rule penalizes legitimate users of a mark who are not in the TMCH.   Let's 
say there is a common law user of the term 'Fine Shoes' and there is also a 
Fine Building company  that has a validated trademark for 'fine' in the 
classification  'construction equipment'.   In this situation the new rule 
forces the registry to give preferential access to the building company over 
the shoe company.

Let's now take the scenario where the registry decides it WILL enforce ongoing 
restrictions regarding who can register names.   This will harm consumers in 
two ways: (i) first, by definition,  some consumers will be prevented from 
getting .SHOES names (i.e.  there cannot be ''restrictions' unless someone is 
prevented from getting names).  Yet arguably something as generic as SHOES 
should be available to all consumers;  (ii) second, enforcing registrant 
eligibility restrictions is expensive for registries and this cost, like all 
costs, will flow to consumers in the form of higher registration fees.

I think there are unintended and harmful consequences to this new rule.  I 
believe we should return to the original wording which did not require 
'registration restrictions' before a registry could use discretion in applying 
trademark classifications during Sunrise or Claims.   The absence of a 
'registration restrictions' rule will not make Sunrise or Claims any less 
effective, and it will mean fewer unintended harms to rights holders and 
consumers.

Richard Tindal