The Internet Corporation for Assigned Names and Numbers (ICANN) has opened up the ability for organizations and individuals to create their own Top Level Domains (gTLDs) beyond the current twenty-two gTLD names currently in use (e.g., “.com”, “.net”).  At present, there are 22 generic top-level domains, however, these numbers are set to increase significantly.  These new gTLD’s will fall into several categories, including:

  • Brand names– such as .nike and .hersheys
  • Geographic locations– such as .newyork and .capetown
  • Industries– such as .bank and .auto
  • Generic works– such as .blog, .coupons, and .cool

There is both good and bad news for trademark owners in the release of new gTLDs.  The good news is that this system gives trademark owners more Internet address choices, including those specific to the nature of a brand owner’s business.  The bad news is that the increase in gTLDs will increase the number of potential infringement and cybersquatting of trademarks through the new domain names.

As a protection mechanism, ICANN has launched the Trademark Clearinghouse (“Clearinghouse”), a central database designed to help trademark owners protect their marks from infringement and cybersquatting.  The Clearinghouse is designed to provide trademark owners early registration of new gTLDs, as well as notice regarding potentially infringing domain name applications.  The Clearinghouse and registration process are described below.

Trademark Clearing House-“Clearinghouse”

The Clearinghouse is a database containing validated trademarks to provide infringement protection for trademark owners.  Registration with the Clearinghouse will allow the following benefits:

(1)  Priority Registration of Domain Names During a “Sunrise Period”.  Trademark owners will be given a time period prior to the public launch of a new gTLD in order to reserve domain names based on those trademarks registered with the Clearinghouse.

(2)  Trademark Claims Notification.  Trademark owners will be notified for a time after the sunrise period if a third party is attempting to register a domain name that matches their mark.

“Sunrise Period”:

As each new gTLD launches, there will be an initial “sunrise period” of at least 30 days during which trademark owners registered with the Clearinghouse can register domain names that match the marks registered before they become open to the public.  Once a new gTLD is made available, this 30-day sunrise period will begin.  If another trademark owner is seeking registration of the same mark, a notification will be sent to each registered trademark owner.  For example, a Clearinghouse registration of the PEPSI trademark will allow PepsiCo to register “pepsi.food” and others including the PEPSI mark within 30 days before the general public has the ability to do so.  In order to receive the sunrise period benefit, trademark owners must also submit a signed declaration of use and a single sample of proof of use of the mark.  The Clearinghouse will make registration of the Sunrise period available with the Signed Mark Data (SMD) application once the trademark has been validated.

Trademark Claims Notification

Following the sunrise period (the point at which a gTLD is open for public registration), trademark claims notification services will be provided for at least 60 days.  During this period, if a third party attempts to register a domain name that is an identical match to a trademark registered with the Clearinghouse, the domain name applicant will be notified of the trademark rights claimed in the relevant mark.  In order for the third party to proceed with registration of the identical mark, he or she must sign a statement acknowledging the notice and that to the best of the applicant’s knowledge, the requested domain name will not constitute an infringement.  If the third party elects to proceed, the trademark owner will then be notified of the potentially infringing domain name registration.  Using the above example, if an applicant registers “pepsi.food,” that potential registrant will be sent a notice of PepsiCo’s trademark rights.  If the registrant moves forward, PepsiCo will be notified and can then decide to take further action.

Clearing House Registration

The Clearinghouse accepts registration of the following marks:

(1)  A registered trademark, which is nationally or regionally registered;

(2)  A mark that has been validated by a court of law; and

(3)  Marks protected by statute or treaties (e.g. geographical indications)

Certain marks are ineligible for registration, such as those that do not contain any letters, words, or recognizable symbols..

Trademark owners can register their marks by visiting the Clearinghouse website at:https://secure.trademark-clearinghouse.com/tmch/public/.

In order to complete the registration process, trademark owners will need to submit an application with the following information to the Clearinghouse:

  • The name of the mark;
  • Registration number;
  • Registration date;
  • Country/region of registration;
  • Description of goods and/or services that corresponds the goods and/or services for which the mark is used/protected;
  • Status of the trademark owner (e.g. owner, licensee); and
  • The full name, business organization type (e.g., LLC or Inc.), address and contact information for the trademark owner.

Once the trademark has been validated, the Clearinghouse will subsequently provide a trademark owner with a Signed Mark Data (SMD) for the registration of the Sunrise period.  The Clearinghouse charges $145 to register one mark for one year, $435 for three years, and $725 for five years.  While there is no deadline for registering a mark with the Clearinghouse, it is recommended that trademark owners start the process as early as possible in order to take advantage of the benefits, such as the sunrise period as discussed above.

ICANN is currently in review of its first gTLD applications set to be released by the second quarter of 2013. The earlier trademark owners register their marks with the Clearinghouse, the sooner the registration benefits can be had.  ICANN has made public a list of the domain names currently in application review.  In the event that any names are a threat to trademark owner rights, a dispute can be initiated and submitted to ICANN during the final gTLD application review.  To review these domain names, please visit:

http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en.

The benefits of the Clearinghouse are important and although the Clearinghouse will not protect marks from all potential infringements, it is my recommendation that trademark owners take advantage of the registration benefits and register key marks with the Clearinghouse as soon as possible.