gTLD

April 2, 2013

The Trademark Clearinghouse – What Brand Owners Need to Know

Trademark Clearinghouse is designed to provide some protection for holders of registered trademarks.

In anticipation of the new generic top-level domains, the Trademark Clearinghouse is designed to provide some protection for holders of registered trademarks.

Background

The current Internet Domain Name System features just 22 generic top-level domain names (gTLDs), including .com, .net., .org, and .biz.  In 2012, the international body that oversees the use of Internet domains, known as ICANN, began accepting applications to register new gTLDs.  

 According to ICANN, nearly 2,000 applications to register new gTLDs were received during the application window.  Examples of the applied-for gTLD strings are .amex, .book, .fashion, and .google (for a full list, click here).  ICANN expects the first new gTLDs to be delegated as early as April 23, 2013.  

 The launch of the new gTLDs is expected to bring with it an increase in cybersquatting and trademark infringement.

What is the Trademark Clearinghouse?

The Trademark Clearinghouse is a central database of validated trademarks designed to help protect the rights of brand owners within the new gTLD program.

 For a fee, trademark holders may submit their trademark(s) for validation directly with the Clearinghouse, or have a Trademark Agent do so on their behalf.  

What are the Benefits?

All new gTLD registries will be required to interface with the Trademark Clearinghouse. This means that once your trademark is submitted to and validated by the Clearinghouse, you will not need to monitor the launch of each new gTLD or register in multiple databases to access the following services:

i) Sunrise Service – gives you priority access to register a domain name that matches your trademark for all new gTLDs as they are launched, before domain names are offered to the general public.  

ii) Trademark Claims Service – potential domain name registrants will receive a warning notice if their chosen domain name matches your trademark.  If they proceed with the registration, you will be notified.  This does not stop others from registering your trademark as a domain, but may alert you to potential infringers so that you can take any appropriate action.  

 When Should You Register?

There is no deadline per se.  The Trademark Clearinghouse opened for registrations on March 26, 2013.  As the date of the first sunrise period has not yet been confirmed, you still have time to take full advantage of the Clearinghouse.  

 Now is a good time to review your trademark portfolio, update any ownership information, compile evidence of use, etc.

What if you don’t have a registered trademark but want to take part in the Clearinghouse?

 While there are exceptions, unregistered trademarks are not generally eligible for the Trademark Clearinghouse.  If you have not done so already, you should speak to a Trademark Agent about filing applications to register your important marks.  

Even if you don’t ultimately record your mark with the Trademark Clearinghouse, a trademark registration carries a myriad of benefits.  Should you require information on the trademark registration process, please contact one of our Registered Trademark Agents.