Michael, Thanks for your proposal. This seems reasonable and appropriate. I would note that the criticism just received is misplaced. First, nowhere does this proposal state or imply "the flaky [sic] that the inclusion of a trademarked string within a larger domain registration string, is per se confusion." A claims notice is not a notice or claim of per se anything. (Actually, there's fairly little that is per se anything in any legal system for any type of claim, that I know of -- but I digress.) It's merely a notification of a match. The applicant can then make a more informed decision, as noted by Michael, to the benefit of both the applicant and the TMCH registrant. Second, the example given, "The mark: "BOB's Red Barn" triggering notices for any combination of the above," appears to be the *opposite* of the way the proposal would work. Rather than triggering a notice for any combination of Bob's and/or Red and/or Barn, the notice would *only* be triggered when the *entire* string "Bob's Red Barn" appears in an attempted application *plus* additional characters (e.g., "Bob's Red Barn Tomatoes"). (Of course, I could be parsing the example incorrectly, since the phrasing is ambiguous.) Since the notice will show the mark, it should be clear to the potential applicant whether there is a real issue. If the registration is for a furniture store, then the applicant should feel a heightened degree of comfort in continuing to registration. On the other hand, if it's for fresh produce, the degree of comfort would be lower. [Disclaimer: this not legal advice and no attorney/client relationship is formed by reading this email.] Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@law.es> wrote:
Michael,
I cannot agree to your proposed expansion.
"The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks."
Not only does this continue the flaky that the inclusion of a trademarked string within a larger domain registration string, is per se confusion.
This would also led to numerous nonsensical notices such as:
The mark: "BOB's Red Barn" triggering notices for any combination of the above.
Sent from my iPad
On 20 Apr 2017, at 19:29, Michael Graham (ELCA) <migraham@expedia.com> wrote:
The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks
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