traverselegal - September 26, 2013 - Trademark Clearinghouse: ICANN, Trademark Law
The countdown to a whole new universe of web extensions is underway. From the Summer of 2013, hundreds of new top level domains, or gTLD’s, will begin to appear in the online space, resulting in a whole universe of new domains. But while the new extensions offer many exciting opportunities for businesses online, brand owners also need peace of mind that their trademark is protected within this new universe. For this reason, ICANN, the organization that oversees domain names on the internet, has created the Trademark Clearinghouse. This is a centralized database of validated trademarks operated by world- class providers Deloitte and IBM. The Trademark Clearinghouse is the only authorized and universal means of a brand owner protecting their trademarks during the launch and take-off periods of every new gTLD.
From March 26, 2013, the Clearinghouse will open its doors to brands around the world. Recording trademarks in the Trademark Clearinghouse offers brands unique services. Sunrise periods occur before the launch of every new top-level domain to the general public. These Sunrises enable intellectual property owners to secure domain names associated with their rights, ahead of wider availability, by providing priority access. So any business or intellectual property owner wishing to secure domain names associated with their trademarks during new TDL Sunrises must have already submitted the relevant marks into the Trademark Clearinghouse. Once Sunrise is over and a domain name opens for general registrations, a brand owner who has a trademark recorded in the Clearinghouse will have the assurance that domain name applicants will be warned of any match between the domain name they’re trying to obtain and the brand in the Clearinghouse before they register. If a domain name applicant goes on to register in spite of the warning, the rights owner will receive a notification via the trademark claims system telling them that a registration has been made and so putting them in a good position to take any enforcement action they deem necessary. For a single fee, rights owners can choose to record their terms in the Trademark Clearinghouse for a period of either one, three, or five years. The fees are universal for any type of trademark regardless of its nationality.
The cost of recording marks in the Clearinghouse is inclusive of access to every Sunrise period, as well as warnings and notifications services about any potential infringement of the term in the Clearinghouse, and any on-going customer support services. To protect trademarks within the first round of the TLD’s, we recommend committing to a minimum of three years. This is because the roll-out of the new TLD’s will not simply be a big bang, but will be staggered to ensure an orderly introduction and so will be spread over more than a single year. Submission of marks can be made directly into the Trademark Clearinghouse, or via an official agent, who can offer specialist support on the process helping ensure trademark owners are properly protected ahead of each domain launch.
To find out how to protect your brand in this new universe of TLD’s go to: www.tm-clearinghouse.com
