I have an example where multiple registrations of the same trademark in the TMCH did not cause any issues or trouble. I had a client that registered a trademark (let's call it EXAMPLE) in the TMCH. Another entity clearly registered the same trademark (EXAMPLE) in the TMCH. It was clear from various activity that the other EXAMPLE owner was taking a more active role in responding to claims notices, Sunrise registrations, etc., which was fine with my client. Greg On Thu, Jan 19, 2017 at 10:44 AM, Mary Wong <mary.wong@icann.org> wrote:

Dear all,

As a follow up to the Working Group call held yesterday, please note that much of the informational materials referenced or requested on the call is available for viewing and download on our wiki pages, for example:

· Community concerns as raised in public comments to various reports and papers published prior to our PDP (e.g. the 2015 RPM Staff Paper, our PDP Preliminary Issue Report, the 2011 Preliminary Issue Report on the Current State of the UDRP, and the 2009 Special Trademark Interests (STI) and Implementation Recommendations Team (IRT) reports): https://community.icann.org/x/4SWAAw

· We have also created specific informational pages for each RPM that we are reviewing; for the TMCH, you can find operational, functional and other documents defining the scope of the TMCH (including the 2012 Implementation Assistance Group (IAG) report mentioned on the call), other background to the development of the TMCH, and current metrics and reports here: https://community.icann.org/x/0AusAw

Several questions and observations emerged from the discussion yesterday, for which we hope discussion can be continued on this mailing list and the call next week. On the call, discussions focused on the first two questions under TMCH Charter Category 1 (Education). *Please provide your further thoughts and comments on the following discussion points:*

1. *On whether the TMCH is “clearly communicating” its criteria and process (including for submission of entries by rights holders and objections to specific entries and recordals in the TMCH)*:

· It is possible that the TMCH Guidelines themselves (e.g. criteria and process for submission of entries) are clearly communicated – the problem could be with a perceived inconsistency of approach (e.g. it is not always clear what the grounds for rejecting submissions are) and an apparent piecemeal approach to implementation (e.g. it is not clear what else will be accepted as proof of use). Comments?

· Has anyone reported or does anyone know if there has been any issue or trouble concerning multiple registrations of the same trademark by multiple trademar holders?

· Can we get more information about what the TMCH’s “learning curve” has been between its establishment and initial operations, and now?

· Is there any publicly-available information on how to object to TMCH entries and recordals? How can objections be lodged if the TMCH database is not publicly searchable?

2. *On whether the TMCH should be responsible for education*:

· Who should the TMCH be educating besides rights holders – e.g. registrants, users, the community at large?

For those Members who were not on the call, you may wish to review the MP3 recording and meeting transcript to see the context and remarks relating to the above points. These – along with the slides that were used during the call - have been posted to the wiki page at: https://community.icann.org/x/JZ3DAw.

Thanks and cheers

Mary

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names and Numbers (ICANN)

Email: mary.wong@icann.org

Telephone: +1-603-5744889 <(603)%20574-4889>

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