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Patricia O'Connell
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David Weslow Comments on New Internet Trademark Clearinghouse Rules

Bloomberg BNA’s Electronic Commerce & Law Report
March 8, 2013

David E. Weslow, a partner in Wiley Rein's Intellectual Property Practice, was interviewed for a March 6 article in Bloomberg BNA's Electronic Commerce & Law Report about new guidelines that should help clarify how trademark owners can protect combination word/design marks when registering trademarks for protection in relation to new generic top-level domains (gTLDs).

Deloitte Enterprise Risk Services, appointed last year as of one of the two companies that will manage a trademark clearinghouse (TMCH) for the Internet Corporation for Assigned Names and Numbers (ICANN), recently issued new rules addressing the requirements and limitations for recordation of trademarks in the TMCH. The rules come as Deloitte prepares to begin accepting trademark recordations for the TMCH on March 26.

The requirements of the TMCH and the manner in which the TMCH would review trademark recordations had been the subject of some debate after ICANN issued its gTLD applicant guidebook, Mr. Weslow told the publication. Deloitte's new TMCH guidelines will define the trademark recordation rules. "[T]he process will be similar to the submission of trademark maintenance declarations and specimens of use. It appears that the TMCH will examine declarations, specimens, and chains of title in much the same manner as the USPTO," he said.

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