TMCH Individual Proposals #4 & #5

TMCH Individual Proposal #4 (1 of 2 proposals concerning geographical indications)

1. Geographical Indicators (GIs) may not be registered in the TMCH Database used for Sunrise or Trademark Claims under the theory that they are marks protected by statute/treaty. If they are not also eligible for the TMCH Database as trademarks, any GIs presently in the TMCH Database should be removed.

2. “Other marks that constitute intellectual property” are not eligible for Sunrise or Trademark Claims. If and when the TMCH provider adds ancillary databases covering “other marks,” it should revise its public-facing materials to make this distinction clear.

3. Proposals for amended language in the Applicant Guidebook (new language in bold):

“3.2.3 Any word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.” This language should be amended to read “3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; the word mark protected by statute or treaty must be a trademark.” An explanatory footnote to 3 should be added:

The Clearinghouse is for word marks that are trademarks. “Trademarks” here includes trademarks, service marks, collective marks, and certification marks. Geographic indications (that are not also protected as trademarks) are not trademarks.

"3.2.4 other marks that constitute intellectual property" should be amended:

Marks not eligible for inclusion in the Trademark Clearinghouse: Other marks or identifiers that constitute intellectual property may not be used for the purposes of Sunrise or Claims under the existing RPMs, as set forth in Section 7. Such marks or identifiers may be collected to support the services any given registry operator chooses to provide, solely for the purpose of providing ancillary services as set forth in Section 3.6.

3.5 should be amended for consistency with the revisions to 3.2.3.

Finally, 3.6 should itself be amended to clarify: “Data supporting entry into databases that are separate from the Clearinghouse and used to provide ancillary services of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse, or other provider chosen by the registry operator, based on the services any given registry operator chooses to provide, consistent with 4.1.”

For reference: Current 4.1: …There shall be no bar on the Trademark Clearinghouse Service Provider or other third party service providers providing ancillary services on a non-exclusive basis.

TMCH Individual Proposal #5 (2 of 2 proposals concerning geographical indications)

1.0 The main database function of the TMCH is for trademarks, specifically: trademarks registered at the national or regional level; trademarks protected under common law which are confirmed by court decision(s); and trademarks protected under national or international laws by Statute or Treaty. 

1.1 The main database function of the TMCH shall be solely used for supporting the Mandatory RPMs, including TM Claims and Sunrise.

1.2 The TM Claims and Sunrise mechanisms are mandatory RPMs for the protection of trademarks; other signs or source identifiers, such as "Geographical Indications" or "Appellations of Origin" shall not be eligible for protection in the mandatory Sunrise or Claims periods, unless such "Geographical Indications or Appellations of Origin" are also independently registered as trademarks.

1.3 Section 3.2.3 of the Applicant Guidebook should be amended as follows (new language in bold): "3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion, and which is identified within the Statute or Treaty as a mark that functions as a trademark/source-identifier."

2.0 The TMCH Service Provider may provide Ancillary Services, including the creation of Ancillary Database(s), as long as those services and any data used for those services are kept separate from the main Clearinghouse database.

2.1 Ancillary Services may be used to support Voluntary RPMs, including the Limited Registration Period, and/or other mechanisms that may be designed by the Registry Operator at the sole discretion of the Registry Operator, and as permissible under the terms of the New gTLD Registry Agreement.

2.2 Ancillary Services, and Ancillary Database(s), may be used for the recordation of trademarks, Geographical Indications, Appellations of Origins, or other identifiers, at the discretion of the Registry Operator and TMCH Provider, or other Provider(s), and as permissible under the terms of the New gTLD Registry Agreement. There is no prohibition on multiple Registries using the same database for Ancillary Services.

2.3 Data supporting entry into databases that are separate from the Clearinghouse and used to provide Ancillary Services of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 of the Applicant Guidebook above shall be determined by the Registry Operator and the TMCH Service Operator, or other Provider(s) chosen by the Registry Operator, based on the services any given Registry Operator chooses to provide. There is no prohibition on multiple Registries using the same database for ancillary services.