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					    Trademark Clearinghouse


    IRT Recommendation             Staff Proposal                    Staff Rationale                                STI Notes


                                                                     Different name suggested to reflect the fact   Question whether Common Law
                                   Call it the Trademark             that only trademarks and not other forms of    Rights are to be included;
1   Call it an IP Clearinghouse.
                                   Clearinghouse.                    intellectual property such as copyrights or    Concern that TC should not
                                                                     patents are the subject matter.                change any existing rights;


                                                                     Not necessary because the Clearinghouse
    Holders would grant a license
                                                                     is storing information. It should be clear that Relationship between ICANN/
    to ICANN to use the data and No licenses to ICANN to use
2                                                                    in so storing that no rights to use the data    Clearinghouse-- is it a contract
    ICANN would sublicense that data.
                                                                     exist separate and apart from the purpose or an accreditation
    right to the Clearinghouse.
                                                                     of the Clearinghouse.



                                                                  It is difficult to develop uniformly acceptable
    Maintenance of and
                                  The provision for a GPML is not standards can be developed - it might lead
    dissemination of information                                                                                  Should the GPML be
3                                 included in this set of         to the creation of new rights. It would create
    related to Globally Protected                                                                                 considered or is it out of scope?
                                  recommendations                 only marginal benefits because it would only
    Marks List.
                                                                  apply to a relatively small number of names.

                                                                     While combining the functionality of the
    Information (Clearinghouse)                                      URS and Clearinghouse presents
    repository to interact with                                      opportunities for efficiency, they remain
                                   Pre-registration complaint
4   URS such that marks                                              separate for now - in order to avoid
                                   process in URS not included.
    registered in Clearinghouse                                      additional complexity in considering the
    are pre-vetted in the URS.                                       proposals. The efficiency can be introduced
                                                                     later.
                                                                                                                      Regional Clearinghouses v.
                                  Two providers, each global, one
    Single global provider                                          Public comments pertaining to sole source         One centralized Clearinghouse;
                                  charged with database
    performing both the                                             providers suggest this approach to prevent        Naming of the database
5                                 administration (including IP
    validations and clearinghouse                                   abuse - such as removing an incentive to          function – should it be a
                                  claims and sunrise services),
    operating roles.                                                falsely validate trademark claims.                ―database‖ or a ―repository‖
                                  one with data validation.


                                                                                                                      Should it be separated by
                                                                   The detriments of establishing of regional         script/language? Separation of
                                 There were suggestions that
                                                                   clearinghouses seem to outweigh the risks:         functions: Should separation of
                                 regional clearinghouses be set
                                                                   a single database can be made secure and           the verification function be
                                 up to avoid risks associated with
                                                                   restricted; multiple clearinghouses might          regional to allow for local
                                 a single database and to
                                                                   increase costs, result in inconsistent             expertise on the validity of the
                                 address local cultural issues
                                                                   decisions and lead to forum shopping.              rights




                                                                    A renewable license or accreditation is
                                                                    preferred to a contract (a relationship akin to
                                                                    that between ICANN and a UDRP provider)
                                                                    to limit ICANN's participation or involvement
    Contract between ICANN and
                               Specific term nor form of            in operational aspect of the clearinghouse.
6   provider of five years
                               association not proposed             Some sort of instrument will be required as
    recommended
                                                                    there will be one clearinghouse at any one
                                                                    time and an approach is needed so that if
                                                                    the service provider is not performing
                                                                    adequately a successor can be found.
                                                            Holders of common law rights can also gain
                                                            entry to the Clearinghouse upon the
    Specific standards for                                  appropriate showing of use. The criteria
                             Standards (not be based on the                                             Registered rights: should
    acceptance into the                                     selected are a balance of the need to weed
7                            laws of any particular                                                     national, state and/or provincial
    clearinghouse were not                                  out fraudulent applications without
                             jurisdiction) include:                                                     rights be included
    specified.                                              burdening the verification process while
                                                            insuring that only true trademark "use" can
                                                            be admitted to the Clearinghouse.


                                                                                                         Definition of match or identical
                             a) ownership of a valid
                                                                                                         is different between the Staff
                             trademark registration from an
                                                                                                         proposal and the IRT proposal-
                             entity authorized to grant such
                                                                                                         Will there be semantic or
                             registrations and that verifies the
                                                                                                         meaning matches or language
                             validity of the trademark; or
                                                                                                         translations?

                             b) in the absence of a
                             registration, evidence of
                             continuous use of the mark in
                             connection with the bona fide
                             offering for sale of goods or
                             services for a period of five
                             years prior to the application for
                             membership.

                             Specific recommendations as to
                             how to validate data in
                             connection with b) including
                             copies of labels, tags,
                             promotional materials, and
                             invoices.
                                                                                                               How we make this
                                                                                                               determination--- a subjective
                                                                                                               decision on a country's process
                                                                                                               would need to be made—two
                                                                                                               types of processes—1-
                                 Same, except registrations that                                               Examination based upon on
                                 include top-level extensions not                                              absolute basis - looking at the
    Clearinghouse will validate
                                 included so that "ICANN" could Deters second-level registrations made for mark and determining if it is a
    any registered mark issuing
8                                be registered but not            the purpose of establishing trademark rights trademark capable of having
    from a jurisdiction that
                                 "ICANN.org," even if it was      filings.                                     trademark significance; and 2-
    conducts substantive review.
                                 registered in some jurisdiction                                               Comparison on relative grounds-
                                 conducting substantive review.                                                examiner looks at it and looks at
                                                                                                               the database and looks to see if
                                                                                                               it is similar to other names in the
                                                                                                               database; Not all countries
                                                                                                               follow this two pronged
                                                                                                               approach;



                                                                                                                 Minimizing Chilling Effects-
                                                                                                                 language for the IP Claim
                                                                                                                 Process and how can it be
                                                                                                                 drafted to minimize chilling
                                                                                                                 effects; Should it provide clear
    IP Clearinghouse to be used
                                                                                                                 guidance to help protect the
    for IP Claims Service,      Trademark Clearinghouse to be
                                                                                                                 registrant both of what rights
9   Sunrise Registrations, URS, used for IP Claims Service, and
                                                                                                                 exist and rights they might have;
    GPML, and Trademark         Sunrise Registrations
                                                                                                                 Whether to clarifying the goods
    Watch Notices
                                                                                                                 and services in the notice?Will
                                                                                                                 the notice be translated into
                                                                                                                 other languages? Will there be
                                                                                                                 a Use of the IP Clearinghouse
                                                                                                                 after initial launch?

				
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posted:11/12/2011
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