New gTLD Trademark Clearinghouse | Firm Alert

There are currently 22 generic top-level domain names (gTLDs), including.com, .org, .net, and .biz.  The internet is about to go through a dramatic expansion with the release of nearly 1,500 new gTLDs.  Examples include well-known brand names—.honda, .chevrolet, .dell, .apple, .microsoft and .statefarm—as well as generic words—.golf, .love, .home, .hotel, .movie, .christmas and .law.  The full list of potential new gTLDs is available on the ICANN website.  New gTLD registrars are expected to start offering domain name registrations (e.g., knobbe.law) to the public in the fourth quarter of 2013.

With the expansion, trademark owners are concerned that the new gTLDs will cause trademark infringement, cybersquatting, and cybercrime to dramatically increase.  In response, ICANN (the Internet Corporation for Assigned Names and Numbers) has developed a rights protection mechanism called the Trademark Clearinghouse.

The Trademark Clearinghouse allows trademark owners to register their trademark information in a centralized database that all new gTLD registrars must use.  The Trademark Clearinghouse provides trademark owners with protection prior to the launch of each new gTLD (“Sunrise Service”), and during the first 90-days that each gTLD is open to the public (“Trademark Claims Service”).

Knobbe Martens recommends that trademark owners utilize the Trademark Clearinghouse together with other trademark watching services.

Trademark Clearinghouse Benefits
(1) Sunrise Service

• New gTLD registrars are required to offer a Sunrise Period of at least 30 days.
• During the Sunrise Period, trademark owners who recorded their marks with the Trademark Clearinghouse will have an opportunity to register domain names that exactly match their recorded marks.
• The general public cannot register domain names during the gTLD’s Sunrise Period.

NOTE: gTLD registrars may have additional requirements for registering a domain name.

(2) Trademark Claims Service

• The Trademark Claims Service period comes after the Sunrise Period, when the gTLD opens to the general public (the “Landrush Period”).

• The Trademark Claims Service period is currently set to last for at least the first 90-days of each Landrush Period.  Some gTLD registrars may offer the service for a longer period. 
• During the Trademark Claims Service period:
  • If anyone attempts to register a domain name that exactly matches a mark that is recorded in the Trademark Clearinghouse, that party will receive a notification prior to registration with information regarding the recorded trademark and its owner.
  • Before the notified party can register the domain name, it must acknowledge the trademark owner’s rights to the mark, and verify that the registration and use of the domain name will not infringe the trademark owner’s rights to the recorded trademark.
  • If the notified party registers the domain name, the Trademark Clearinghouse will alert any trademark owners with matching records in the Trademark Clearinghouse.  Trademark owners can then determine if they want to challenge the domain name registration.

• The Trademark Claims Service will only send notifications and alerts for exact matches—no variations or misspellings.

Trademark Clearinghouse Requirements
(1) A valid trademark:

• National, international or regional registered mark (no common law marks);
• Court-validated marks; or
• Marks protected by statute or treaty

(2) Proof of Use:

• For each mark, a declaration attesting that the mark is in use, and a specimen showing the mark in use.  Acceptable specimens include photos of the mark on the goods, labels, product packaging, and marketing and advertising materials.
• Proof of use is not required to participate in the Trademark Claims Service.

(3) Renewal Application (if applicable)

• If the registration will expire during the term of protection in the Trademark Clearinghouse, a copy of the renewal application must also be submitted.

(4) Select protection term: 1 year, 3 years, or 5 years.

• There is a benefit for trademark owners who register early with the Trademark Clearinghouse.  The term for marks registered prior to the Sunrise Period of the first new gTLD will not expire on the first anniversary of the registration date.  Instead, the term will expire one year from the day that the first gTLD begins its Sunrise Period.  This may extend the protection term a few months.

NOTE: A mark subject of a pending trademark application can be recorded with the Trademark Clearinghouse, but the trademark owner cannot participate in the Sunrise Period or Trademark Claims Service period until the application matures to registration.

Trademark Clearinghouse Recordation Fees

There will be additional costs if trademark owners want to purchase a domain name during the Sunrise Period for a specific gTLD.  Each gTLD registrar will set the specific cost for registering a domain name.

Also, there will be additional costs if trademark owners want to cancel a registered domain name based on the owner’s trademark rights.  These costs will vary depending on the trademark and the registered domain name.

Conclusion
Many elements of the Trademark Clearinghouse are still changing.  If you are interested in recording your trademarks with the Trademark Clearinghouse, please contact us as soon as possible to develop a strategy.  The first new gTLDs are estimated to launch in the fourth quarter of 2013.