Friday, January 14, 2011

ICANN’s Proposed Final Applicant Guidebook and the Trademark Clearinghouse

As I mentioned before in connection with my recent post on the URS, ICANN’s proposed Final Applicant Guidebook remains largely unchanged from the Draft Applicant Guidebook volume 4, at least in connection with the Trademark Clearinghouse. As you may recall, the DAG volume 4 created a bifurcated trademark protection scheme based on whether the registry chose to use a IP Claims Service or a Sunrise Registration Process. The broader IP Claims Service would protect “nationally or multi-nationally registered” word marks, whether or not those marks were registered in a jurisdiction that conducts “substantive review.” The narrower Sunrise Registration Process, however, would only protect those word marks “registered in a jurisdiction that conducts substantive examination of trademark applications prior to registration,” along with those marks validated by the Trademark Clearinghouse.

This “substantive review” requirement created a stir in the IP community, due to the vagueness of the terms and thereby lack of definition. The Board’s meeting in Trondheim spelled out both the definition of “substantive review” in connection with trademark registration jurisdictions, as well as the “substantive review” provided by the validation function of the Trademark Clearinghouse for those registries that choose to use a Sunrise Registration Process.

Substantive evaluation upon trademark registration has essentially three requirements:
(i) evaluation on absolute grounds - to ensure that the applied for mark can in fact serve as a trademark;
(ii) evaluation on relative grounds - to determine if previously filed marks preclude the registration; and
(iii) evaluation of use - to ensure that the applied for mark is in current use.

Substantive review by Trademark Clearinghouse validation service provider shall require:
(i) evaluation on absolute grounds; and
(ii) evaluation of use.

The only change from the language from the Trondheim meeting and the language included in the proposed Final Applicant Guidebook is the substitution of the word “evaluation” for the term “review” in relation to the validation services of the Trademark Clearinghouse, such that the proposed Final Applicant Guidebook reads, “Substantive evaluation by Trademark Clearinghouse validation service provider shall require …” As was the case with the DAG volume 4, the Trademark Clearinghouse is tasked with developing and publishing a list of the jurisdictions that conduct “substantive review” of trademarks upon registration.

First, there is the issue of consistency of language that may be creating confusion with regard to the new language in the proposed Final Applicant Guidebook, specifically the incorporation of “evaluation” services provided by the Trademark Clearinghouse. As can be seen in the red line version of the proposed Final Applicant Guidebook, the word “examination” has been deleted in connection with Section 7.1.3 and the term “evaluation” has been substituted. ICANN removed the term “evaluation” from the only other use of the term in the Trademark Clearinghouse in the proposed Final Applicant Guidebook as well, so, presumably, the Trademark Clearinghouse is no longer set up to examine. The problem is that “evaluation” is only used in connection with Section 7, “Protection for Marks in Clearinghouse” and not in relation to any of the other sections. Moreover, as I mentioned before Section 7.1.4 states, “Substantive evaluation by Trademark Clearinghouse validation service provider shall require …” despite the fact that this is the only section in which the Trademark Clearinghouse provides evaluation services rather than validation services. Thus, the language of Section 7.1.4 should be changed for the sake of internally consistent language to “Validation by Trademark Clearinghouse service provider shall require: (i) evaluation on absolute grounds; and (ii) evaluation of use.”

Second, Section 3, “Criteria for Trademark Inclusion in Clearinghouse,” lists proposed standards for inclusion, including standards for registered marks, judicially validated marks and marks protected by statue or treaty, but does not include standards for marks validated by the Trademark Clearinghouse. Those standards show up in Section 5, “Data Authentication and Validation Guidelines,” which references Trademark Clearinghouse validated marks and requires the mark holder to “provide evidence of continuous use of the mark in connection with the bona fide offering for sale of goods or services prior to application for inclusion in the Clearinghouse” and also offers examples of possible evidence of such use. I am not sure the relevance of including section 5.2, but it would seem to fit better into the Trademark Clearinghouse scheme under Section 3. And the language in Section 5, which, again, is titled “Data Authentication and Validation Guidelines.” supports my suggestion for a change to Section 7.1.4 since, presumably, these sections are intended to be read together in connection with validation services conducted by the Trademark Clearinghouse.

In any event, perhaps this is all an exercise proving that I am not seeing the forest for the trees. So, what do these new definitions mean for trademark holders? Outside of the important details outlined in Antony’s comment related to my previous post on the Trademark Clearinghouse below, it means that a trademark owner should be able to include its trademark registration in the Trademark Clearinghouse, whether or not the trademark was registered in a jurisdiction that provides substantive review, provided the trademark owner can submit evidence of registration and proof of use of the mark in connection with a bona fide offering of goods or services prior to the trademark owner’s application to the Trademark Clearinghouse. So most trademark holders should be able to register their word marks on the Trademark Clearinghouse.

What protection does registration on the Trademark Clearinghouse afford? The short answer to that question is that a domain name registrant in a generic new top-level domain who registers a domain name that identically matches a mark listed in the Trademark Clearinghouse will receive notification of that match in the form included with the proposed Final Applicant Guidebook. The language of said notice is clearly intended not to create a chilling effect for the domain name registrant, outlining the fact that the registrant may or may not be “entitled” to register the domain name. Nevertheless, the notice may be of more benefit to trademark holders if it could serve the function of a typical cease-and-desist letter without being overbearing. That could save trademark owners the costs of feeling the need to follow up with more substantial correspondence subsequent to the notification. Even if one sentence were inserted, such as “Your registration and/or use of this domain name may violate the trademark holder’s rights and may constitute trademark infringement, trademark dilution and/or unfair competition.” Such a statement would also likely be something the domain name registrant might want to be aware of as well.

I have used this blog largely to discuss the issues related to dispute resolution subsequent to the implementation of new TLDs and next week I would like to discuss what might happen leading up to that point over the next year or so. At least, I hope to.