Trademark Clearinghouse: An Inside Look – YouTube Video

Enrico Schaefer - August 29, 2014 - Trademark Clearinghouse: ICANN, Trademark Law

This is a PowerPoint presentation on an overview of the Trademark Clearinghouse presented by Robert Kriner of Corsearch Digital Brand Management Consultants, and Vicky Folens of Deloitte.

Janice – Webinar Commentator: Thank you for joining today’s webinar on the Trademark Clearinghouse: An Inside Look.  Our presenters are Rob Kriner, Corsearch Digital Brand Management Consultant and Vicky Folens, Senior Manager of IP & Internet Services and Strategy at Deloitte. Vicky is a member of the Trademark Clearinghouse team and her roll involves protection IP on the internet and leading an IP team.  She has years of experience helping clients with trademark registration, drafting license or transfer agreements, IP litigation matters, compliance with data protection laws, as well as managing large scale IP audits in relations to sunrise periods for new gTLDs and ccTLDs such as .eu, .asia and .co.

Rob Kriner has been in IP status for over five years working in domain name registration management, internet monitoring and other areas of online branding registration. He recently led the development of the Trademark Clearinghouse filing service at Corsearch. For those unfamiliar with the Trademark Clearinghouse, it is the essential repository for verified brands to be protected in the new gTLD or generic top level domains program introduced by ICANN. The Internet Corporation for Assigned Names and Numbers.

Rob will discuss the benefits of filing with the Trademark Clearinghouse and describe Corsearch’s agent services. Then he will share an inside look at the Trademark Clearinghouse processes and other key details. The event will not qualify for CLE credit but is primarily designed to be an informational update. If you have any questions during the presentation, please enter them in the chat box and we will address them, as many as we can at the end of the webinar.

Rob Kriner will now explain the importance of the Trademark Clearinghouse.

Rob Kriner Speaks: Thank you Janice. Thank you everyone on the phone for attending this webinar on the Trademark Clearinghouse. My name is Rob Kriner and I am going to just a brief introduction to the Trademark Clearinghouse, some of the important aspects to keep in mind as to why you should be filing with Clearinghouse. Some of the services that you get once you are successfully validated with the Clearinghouse once your marks are successfully validated. Then I am going to just touch upon core searches, agent services, and help you submit your marks to the Clearinghouse and then I will turn it over to Vicky who will do some of the statistics within the Clearinghouse and some of the things with the Clearinghouse (inaudible).

One of the questions you might be asking is why is the Clearinghouse important? Why should I be submitting my mark with the Clearinghouse? Well, as Janice had mentioned, the new gTLD program or the new generic top level domain program, which has been an ongoing effort by ICANN to release hundreds of new generic top level domains to the internet space is slowly creeping upon us to being a reality. I am not really sure if everyone has heard the news from ICANN Durbin meeting in South Africa, but four registries have gone ahead and signed their registry contract with ICANN making them the first four registries who will be able to go live eventually. So, the program is really taking its course and eventually will be leading to hundreds of new domain names becoming available on the internet, whether it is .fashion or .app or .house. The choices will be limitless.

So, why it is important to register in the Trademark Clearinghouse? Well, once you are successfully validated in the Clearinghouse you obtain the rights to take part in certain services that are beneficial to brand owners as they begin to plan for the new gTLDs and their launch. So, as you see on the slide here, it is broken down into three different service types. The first is the 30 Day Pre-Sunrise Notification and this requires all new gTLDs registries to provide at least a 30 day advance notice that a Sunrise period will be opening. So that will be the brand owners time to evaluate participation in a particular gTLD 30 days before that Sunrise period ends giving you added time to actually evaluate the domain name and its usefulness to your client from a defense registration and/or a “offensive registration” standpoint. After the 30 day period notification will be the 30 Day Sunrise Period. So this requires that all new gTLDs registries provide at least a 30 day window for brand owners to submit their registration to a particular registry. So this is before the domain goes public … with public registrations, brand owners will be able to submit their marks for registration 30 days prior. Each validated trademark within the Trademark Clearinghouse will obtain a Sunrise key that will need to be presented to your registrar in the Sunrise Period. So this key is actually your ticket to participating in the Sunrise Period in getting your registration before the general public has the opportunity to register in that particular domain. After that, you will get the 90 Day Claims Period. So notices will be sent to anyone who tries to register a domain matching a trademark that has been registered in the Clearinghouse letting the particular registrant know that the name they are trying to register may have certain rights associated with it within the Trademark Clearinghouse. The registrant will then have to acknowledge when it is proceeding with the domain name registration clicking a ‘yes’ box or something to this effect, which will then trigger an advance notice in the Claims Period as well. So basically they will notify you if somebody goes and registers a domain name that is exactly identical to the trademark you have validated in the Trademark Clearinghouse.

So, in order to help brand owners submit their marks to the Trademark Clearinghouse, Cosearch has put together Agent Services in conjunction with the Trademark Clearinghouse to help you file your trademarks with them, get successfully validated and then obtain access to those three services that I was just mentioning. So our services are built within the platform and those of you who are familiar with the global platform on, it is very similar for you to login with your current Corsearch account and place an order for the Trademark Clearinghouse. The platform is built to save you time. So we have built in some population for trademark registration data, so all you need to do is provide a registration number and our system will go out and get your trademark information from our list of Corsearch in-house databases. So, a very time saving feature that will quickly populate the order information you need to set up your order. We have also created some features that will automatically populate the domain name labels that you are able to submit to the Clearinghouse. So based on certain matching rules that have been created if your trademark has a space in it or if your trademark has an ampersand or some kind of special character there are certain labels that are also available to be submitted to the Clearinghouse. Our system will automatically populate those for you so that you have the ability to pick and choose the ones that you would like to submit.

We have also built in error checking features that will check your order for accuracy making sure that you have provided all of the fields that are necessary and that you have uploaded all the necessary documents that you need to submit. As a reminder if you are not familiar with the Clearinghouse, in order to submit a trademark to them you need to provide not only your trademark registration details and owner information but you also need to provide a sample of use and a signed declaration. All of which is available on our website and you are able to upload that to your order. Our system is also informative and we have built in email alerts which will send out emails to you when your submission to the Clearinghouse become validated. It will also send out emails when you receive a Claims Notice that you need to review on our platform or submit a correction to Clearinghouse with something that maybe an issue on your registration. You will also be able to pick up and download your Sunrise SMD files. This is the file that you will need to provide your domain registrar once you take part in the Sunrise period. All of that information will be kept on the platform so you can easily obtain it at any time when you need it. Pricing for our submissions is also shown on this slide. For a one year submission in the Clearinghouse, it is $250. A three year submission is $690. And a five year submission is $1,100. So, on top of all this with the platform, we also have a team here within Corsearch who are readily available to answer any questions that you have on your submissions. We also can provide you assistance with inputting your information, uploading documents or anything to that effect. So if you do have any questions on how to place an order or how to get started, please feel free to contact us or your local account manager to get the process started. With that, I am now going to turn it over to Vicky from the Clearinghouse to go over some statistics and some information dealing with regards to submissions. So Vicky, please take it away.

Vicky Folens speaks: For the Trademark Clearinghouse, our presentation is to give a little information on how the Trademark Clearinghouse works. So, if follow-up on the next slide, we will just go quickly over the agenda items. So just a brief introduction again on the verification process, the common errors that we see, the trademarks in non-Latin script, and some statistics. Before we go to the next slide, we just want to give you again a small overview as to the Trademark Clearinghouse so that everybody is as fully aware of the fact that it consist out of two (inaudible). You have the verification services that is provided by Deloitte, which allows you to submit the application, and then you have the database that actually is provided by ICANN, where the registrars and registries connect to and provide the necessary information to that database or retrieve the necessary information that is managed by IBM. So that is why you sometimes when (inaudible) about the Trademark Clearinghouse, you sometimes see the names Deloitte and the IBM on there. That is just to give you an overview. So for verification services, it is Deloitte all over the world that are providing these services. And that will start my introduction to the verification services so if you can follow … as I said, Deloitte is providing verification services. What does this entail? This actually means that each trademark record is verified under a four-eye review process. So two verifications per trademark records meaning two people look at the trademark records and if the two persons do not agree on a particular item on that trademark record, it actually goes to a third verification which is then done by Q&A (inaudible) a consistent match. Proof of use is also verified twice so in the event the verification agents do not agree on the Proof of Use, then the Proof of Use automatically is actually put on incorrect and a request to provide an additional Proof of Use sample. I will get to that more in a couple of sites further.

What do we check? We check … sorry … well we check the accuracy and the completeness of the information provided and we make sure that it is complete and in compliance with eligibility requirements. There is a big manual called “The Clearinghouse Guidelines”, which actually provides an overview of all the eligibility requirements as laid down by ICANN. We have tried to put that in the publication as well but, of course, it is a big document or a long document and we have noticed that not a lot of people read these documents. That is why we are going to go over some brief items that we check before you can actually have a verified trademark. Number one is the jurisdiction. So you have to have a national protective trademark. It’s a registered trademark and the jurisdiction has to be of national protection. If you have a court validated or marks protected under statute or treaty, either the statute treaty or the court also has to have national protection or national (inaudible) in it. A registration number or a reference number depending on which mark you are submitting, the name of the trademark and in all cases has to make sure that this is matching the Trademark Certificate or what is mentioned on the court case, for example. The registration date, the NICE classification number when applicable, the detailed description of goods and services. This is also something that we are very hard on to make sure that the detailed description of goods and services matches what is on your trademark certificates because the detailed description of goods and services is actually provided in the notice that goes out during the 90 day trademark claims period. It explains you have the 90 days trademark claims period so this actually allows you to be notified when somebody registers a domain name that matches your trademark but on the other hand also provides a pre-informed message to the domain name applicant before he actually registers the domain name that states that this mark in these classes … these goods and services are protected. So that is why we are very strict on the detailed description of goods and services. You also need to provide us with a type of Holder. So you can either be the owner of the trademark certificate, the licensee or the assignee. If you are the licensee or assignee, we do require some other documents and we will get to that in a minute as well. The name of the Holder needs to match the address of the Holder and when you are submitting a registered trademark, there is an additional legible requirement that you need to submit an example Proof of Use and a Declaration of Proof of Use in order to obtain Sunrise services. For court validated marks or marks protected under statute of treaty, this is not necessary. This is only for registered trademarks. Can we go to the next slide?

Now that we have briefly discussed how … what information is … needs to be provided in a trademark records, if information is provided which is sometimes incorrect, a re-correction process is initiated. This entails that you actually receive an external comment as to what is wrong with the trademark and the … you can correct … you can edit your trademark records and you can correct it again and submit (inaudible) checked again in accordance to the eligibility requirements. The reasons for initiating a re-correction process are, of course, all the items that I just went over (inaudible) … and for each of them something could go wrong. So that is of course a reason to initial a re-correction process. We are strict on all of the items, so for each item there could be a re-correction process needs to be initiated. What is also important is there is an online database document (inaudible) … we provide an online list of databases. We verify all information against an official online databases and if we cannot verify because the online databases is not available, then you need to provide us with a trademark certificate. If you do not provide us with a copy of the trademark certificate in the first time of submission, then your trademark record will be deemed invalid … sorry, incorrect. Even though we couldn’t verify that information (inaudible) … time around the copy of the trademark certificate and at that moment, there is still something incorrect, then your trademark record will go to invalid because you actually needed to provide us with a copy of the trademark certificate in the beginning with your records submission. It is important to note that is a reason why your trademark records will go into incorrect and if you have, for some reason, we detect that there is still some information incorrect, then we will automatically go into invalid. That is important to note when you are providing this information.

Follow along on the next slide. (Inaudible) … Correction process. The following slides will provide some overview as to what the common errors are and what to note when you are submitting that information. In the first instance, the name of the mark. So the general rule is it needs to be an exact match on the trademark certificate. What does that actually mean? Well, that means that if your trademark has a space in it, you need to report it with a space. Why is that important? Because that moment because of the matching rules, for example, if you implement the matching rules, the (inaudible) are replaced by a hyphen. If you do not provide that space in the name of your mark, then you will not receive a notification on … if your trademark, for example, would be TM space X, then you would receive a notification on (Inaudible) hyphen X or TM X. So that is why it is so important and that’s why we also put this on incorrect because of the fact it’s not the exact match. If you have an ampersand or exclamation mark or whatever special character even in your trademark, please submit this in your trademark records as you submit it (inaudible). There is one exception at this moment that is the Dots spool. The Clearinghouse Guidelines state that trademarks with … that include a dot are not accepted in the Clearinghouse. Originally, the (inaudible) book mentions that, for example, .ICANN or or anything that has a source indicator would not be accepted. However, when we discussed as to what is a source indicator and all the different TLDs, the problem that we had when we originally started with this was the fact that we could not … I mean, today we know which point to extension there are but tomorrow their might be a thousand extensions. For example, the trademark X-Green is not an extension, while tomorrow if .green would be a TLD then it becomes an extension. So it wasn’t … not clear to us as to what would be the source indicator taking it into account (inaudible). So that is why we came up together with the rule that nothing with the dot would be accepted. However, because of the examples we have received there were a lot of trademarks that were submitted. For example, doctor whatever, so you have doctor with the dot starting with an abbreviation. We are currently discussing this with ICANN to make sure that we can be more lenient on the rule as such. So the Clearinghouse Guidelines will be updated shortly so it will be normally be acceptable and as of September in some cases to allow trademarks with the dot. But more information will be made available as soon as everything has been finalized.

For the next, Common Errors, the registration (inaudible) we see in a lot of cases that the application date is provided instead of the registration date so that is also a reason why a trademark record goes into incorrect. We do ask to provide the registration date and not the application date. The application date is also a field but not a mandatory field, so you are not required to provide that information.

Follow to next slide, Name of the Holder. So, as I said earlier, you have to provide us with the name of the holder and the type of the holder. There are three types of holders. You have an owner, assignee and licensee. We see a lot of cases that people submit (inaudible) they are the owner while the name of the trademark owner is no longer on … is no longer matching what is on the trademark certificates. In a lot of cases, especially in the U.S., in most cases the assignment is recorded. We do check to see the assignment that there is a match there between the assignment and the reported owner in the Clearinghouse records. However, in some cases that is not provided because there has been, for example, a change of name or one company took another company over and the name of the holder has been changed and hasn’t (inaudible) on the trademark certificate. In those cases, we ask you to provide us with the documentary evidence or an official certificate that actually states the facts that change of name has been provided. So you can upload that in your records. We do accept that but if you don’t provide us with that information and there is no assignment recorded, then we have to come back to you and say to please correct the name of the holder. As for assignee or licensee, if you are an assignee or licensee, then you need to provide us with (inaudible) or a license declaration. These are standard documents that are available so you can just complete those and provide that information. For the address … there are two reasons that the address goes on into incorrect. So this is the address that relates to the trademark holder (inaudible) either. It’s because the address has changed. So you moved and your address has changed and the trademark certificate has not been updated and in that case we ask you to provide us with a certificate of the change of address. So we acknowledge the fact that the databases are not always up-to-date and that is why we ask you to provide us with additional documents that we can definitely verify that the address is indeed now the address of the owner. In the second instance, you have trademark certificates that were … where there is no address provided. In those instances, we ask you to provide us either with the company that provides with the address or we ask you to provide a screenshot of the website, for example, where it clearly states what is the address of the company or trademark holder at that time? So, we are quite flexible (inaudible) nevertheless, that does mean that you need to provide us with more information so that we can verify that information.

Following the next slide: Detailed Description of Goods and Services. And as I said, we are very strict on the detailed description of goods and services because this is the information that goes out to domain name applicants and so we need to make sure that information that goes out to them is indeed correct. For U.S. Trademarks, we note that (inaudible) … beginning now we are seeing less and less errors on this matter is that the goods and services are sometimes listed in brackets on a U.S. Trademark Certificate, which means in the U.S. that the trademark is no longer protected for these goods and services. So we had people that copied and pasted everything what is on the trademark certificate, however, if you no longer have protection, then you will not receive (inaudible) these goods and services. So that was also a reason to put a trademark application on incorrect. For other countries, when it’s between brackets, this actually just provides and additional clarification and it is not considered as a deletion or cancellation. For other trademarks that are registered in other countries where the detailed description of good and services are not in English but in another language like French, German, Japanese, here we actually ask you to provide the detailed description of goods and services in the language as provided on the trademark certificate so we can do a 100% match as to what is on the trademark certificate. Should you wish to consider to provide it another language than what is on the trademark certificate, so for example if you have a Spanish trademark and you still want to provide it in English, then we need to have a certified translation of these goods and services. So we do not provide translation services. So it is important to get the detailed description of goods and services provided correctly.

For the Proof of Use Sample, here … as I said in the beginning, registered trademarks, it will be (inaudible) of use. One example, is sufficient. You do not need, if you have multiple trademarks, then you need to provide Proof of Use for these multiple trademarks but if you have a trademark registered in different classes of goods and services, it is sufficient to provide one sample of use for all classes. What is very important is the name (inaudible) trademark as it appears on the Proof of Use and it needs to be an exact match as to your trademark records. What does this mean? That if you have, for example, a trademark with … here in this slide, the word ‘café’ with a le tableau de bord, then your Use of Proof also needs to have a le tableau de bord and not one without. Because this is the way you are indeed showing the fact that your trademark is used as it is protected. We note that there are some big clients that want to go ahead and register for the (inaudible) there trademark without the accent, but they have not been able to provide a Proof of Use, this means that you will not be sent (inaudible). We are really strict on the Proof of Use so make sure that you show that you are using the trademark as the way it is protected. (Inaudible) in the meantime, we have received a bunch of different (inaudible) samples. There is a list of samples that are accepted. We are updating this list as we go on and see the different samples as well. However, invoices for (inaudible) that we receive sometimes (inaudible) sample of use. General terms and conditions of your website is not a sample of use. It does not show the fact that you are using your trademark in a consumer business. Print screens from a website is acceptable when the print screen shows or demonstrates that you are using in the manner as protected. So when you have a print screen with just the trademark and the URL, your website itself does not mention your trademark at all then this is not a (inaudible) substantial (inaudible) demonstrating that you are actually using the trademark.

Going to the next slide. Declaration of proof of use, as Robert said, the declaration of proof of use needs to be submitted. This is a template that needs to be signed and dated. We do note that a lot of people do not date this or forget to sign it and this is also a reason as to why your trademark … or your proof of use will go to incorrect. So you will be requested to upload the documentary or the proof of use. And as I earlier said the copy of the trademark certificate is very important if there is not an online database available.

Going to the next slide: Are Trademarks in non-ASCII accepted by the TMCH? So that means if you have a trademark in Chinese characters or Japanese characters or whatever characters, the answer is ‘Yes’. We do accept trademarks from all over the world. As I said in the beginning, we do have global teams working on the Clearinghouse so there is (inaudible) as well. So when we have trademarks in other languages, it goes to the right person and to give you an update, we have about four hundred trademarks or four hundred fifty trademarks in non-Latin script at this time. What is new though with these non-Latin scripts, is the IDNs … is that your label or your domain name is also an exact match to (inaudible) for example ‘café’ with an accented ‘e’ is also an as-key … is a non-as-key trademark because of the ‘e’ accent. That also means that you will only get Claims certifications or Sunrise certifications on ‘café’ with an accent and you do not receive these services for a (inaudible) name with the accent unless, of course, you have an underlying registered trademark. That protects that.

Following the next slide. The fifty abused labels – UDRP or Court Cases are Stroman model. What is this? Well, it was announced last year … at the end of last year, beginning of this year, the Clearinghouse would also provide protect to trademark holders who already had a UDRP case and based on this UDRP case and the trademark (inaudible) will receive trademark claims notifications on these domain names that were previously contested and won. And so we are currently setting up the Clearinghouse to be able to (inaudible) abuse labels and this will be provided somewhere in October, the possibility to submit these UDRP cases or court cases based on a verified trademark records. So that is important … you first need to successfully have your trademarks (inaudible) be able to submit any UDRP case or court cases. ICANN has announced that the labels or domain names that will be linked to your trademark records has been limited to maximum fifty labels (inaudible). UDRP case with more than a hundred labels in there where you wish to want to receive trademark claims notifications, you will have to submit two trademark records at that time to receive notification on the hundred labels. Names or labels are not included in the SMD file because you don’t receive Sunrise services so you won’t actually be able to register a domain name, but you will receive a notification when somebody else registers a domain name.

Go to the next slide. Multiple court cases and/or UDRP cases can be submitted per trademark record. So if, for example, you have a court case and a UDRP case for one trademark then its fine and you can submit both those but you will always be limited to the fifty labels per record. So if you would have, for example, a court case with twenty domain names that were contested and were one, then you could put those in and you could add a UDRP (inaudible) trademark record to include the next thirty domain names or labels. So it is possible. For UDRP cases, only ICANN approved service providers are allowed. So no national arbitration (inaudible) are actually … for example, we have here a European arbitration court that won’t be accepted so the case or the decision itself has to come from an ICANN approved service provider. For court cases, it needs to be a national court case so court cases of national effect will be accepted.

Next slide. What will you be requested to provide in order to receive the trademark claims notification? Well, for instance, you need to provide us with the name of the service provider and as I said it must be ICANN accredited. The number of the UDRP case or the reference number so we can look up this case in the database. The language of the UDRP case so that we can facilitate our verification services as well for the global team and the associated labels. So that is the information that we will request from you to provide and for court cases, the next slide. Name of the court, the reference number of the court’s decision, as well. The language here. The copy of the court case will be requested as there are no … or very little online databases where these court cases can be founded, and again, the associated labels. Just for your information, what is the difference between the label and the domain name? A domain name, for example, is, is a domain name because it includes the TLD, and the label itself is Deloitte. So you will receive the information on Deloitte and not on for example. So that is why we sometimes use labels and domain names in the same sentence because for some people they don’t make the distinction between labels and domain names.

Then following the next slide. What will we check before you receive these services? We need to check the name of the mark as listed within the UDRP case or court case is actually listed in the trademark records. We need to ensure that the registration number or reference number as provided (in audible) for UDRP case is listed on the trademark records on what you already provided. And jurisdiction and country also needs to match. So if you have a trademark that was registered in Japan and you have an UDRP case based on a trademark registered in the U.S., then you will not be able to submit that UDRP case with the Japanese verified trademark records. And, of course, labels need to match as well. What does this mean? If you have a UDRP case, for example, Deloitte and say Deloitte is the trademark and the domain name (inaudible) was Deloitte with three T’s or with one T, then both of these labels can be added by you and we will check to make sure that these labels are indeed listed in the court case or UDRP case. There is only one-time verification … so here as the trademark has already been verified and we want to see if we can move quickly with the verifications with the UDRP there is only one time verification and that also means that this does not have to be renewed. So if you register a trademark record with the Clearinghouse for three years and you submit a UDRP case as well, then you will receive these services for three years without any additional costs on verification level.

What are the prices? Again, these are not official prices yet. We have not updated or published any prices because we are still currently looking into different options and different models. However, the range can be between fifty and seventy-five U.S. dollars per case. So these are just our fees for the verification. For court case, one hundred fifty and two hundred and labels also depending … one dollar per year per label. So, these are our arranged prices that will soon be published as well on our website.

And following the next slide. Going over some statistics now. This is going to be the final part of the presentation on my end. How many number of holders do we have going directly is eight hundred fifty holders at this time. How many number of agents do we have? We have one hundred forty agents. And as you can see on the slides here, we have about eight thousand five hundred trademark records. However, of the eight thousand five hundred trademark records, actually sixteen percent of these are represented by the trademark holders going directly. So that is (inaudible) holders going directly. The number of trademark holders going through a trademark agent is indeed much higher. That is mostly of the fact that holders sometimes register and then all of a sudden they … when they start submitting their trademark information, they actually see that it is sometimes a quick cumbersome process that they move forward to registering with an agent and working with them. And the number of labels here, so eight thousand five hundred trademark records (inaudible) sixteen thousand nine hundred. Why is there such a big difference? Is because of these matching rules, that’s the ampersand and the accent line, is for example translated into difference languages when which … the different languages of your country in which your trademark is protected or the spaces are replaced with a hyphen. So that is why the number of labels are so much higher than the actual number of marks in the Trademark Clearinghouse.

And following the next slide. Just again, the number of records per country for more than 20 records. So as you can see, US and France, UK, Switzerland (inaudible), Sweden, Japan, Canada and Australia, actually have the biggest section within the Clearinghouse. And there are more and more, you see, that the US was in the beginning very high and we see that there are a lot more European trademarks coming in or trademarks registered nationally from the European side. Also, Africa is gaining some impact. China as well. So in quite some time we will see different statistics or different pie chart as we move forward as well.

And the next slides provides you with what countries now has less than twenty … represent less than twenty records. So that is a low number. And as you can see here, Norway, China, well actually China at this moment has had a boost from … has gone up to seventy trademark records on the current … over the weekend. So that has been moving forward as well. China … to get these trademark records because as you might be aware, the first couple of new TLDs will be either in Arabic string or a Chinese string. So that is why a lot of trademark holders are submitting their trademark records or trademarks that are protect in China to the Clearinghouse to make sure that they are getting their notifications on time.

And then the next slide. Number of records submitted for one, three or five years. So, as Robert said, there is the possibility to submit your trademark records for one, three or five years. You will see that the majority is still going for one year. However, more and more people are submitting it for three years. Why is that? Because the TLD program once it launches, it will take up to most likely three or even longer up to five years, so people are submitting it now for three years so that they can go ahead and get these notifications and services for the next three years. The revalidation is done automatically. There is no need to renew your trademark record. So it is much more easier if … from the start to register for three years than going back and forth every year and renewing your trademark certificate. Because, as you know, the renewal process there is always some time that goes around it. So, it could be that you will miss out for a particular Sunrise because you were in the renewal phase of your trademark records. So that is one of the key considerations to take into account when you want to submit for three or five years or one year.

And here are, as I said in the beginning, and I am going up to my last slide, this shows actually … even though that there are eight hundred and fifty trademark holders joined directly, we see that about 1,600 trademark applications are actually submitted by the trademark holder while all the rest are really going through agents. And from the 1,600 that are submitted by the trademark holders, thirty percent of these trademark records are on incorrect. So, they have … its noted that trademark holders that go directly have a lot more issues in getting their trademark records verified in time to be Sunrise legible because they don’t understand the process or they are not aware of what is going on. That’s why it is really … we believe that it is important to go through agents, as they can help customize you and help you out as well instead of going directly to the Clearinghouse.

And that ends up my slides so I will handed back to you, Robert.

Robert Kriner speaks: Thank you Vicky. Thank you for your time and presentation. Lots of helpful information here. I do apologize to the callers for some of the technical difficulties that we had, but it seems that we had those issues cleared up and I would encourage that if there are any questions to please send them through the chat now so that we can at least try to answer a few of the ones that have come in. Vicky, we did have some questions come in. I will start off with one that I think that you might want to take. The question is, “Why did Deloitte create the section in 2.2.5 of its guidelines when the Applicant Guidebook does not require this limitation?” Do you want to touch on that question for us?

Vicky Folens speaks: Sure. So that was the dots clarification. So why … first of all, it is important to note that we … Deloitte doesn’t create any policies. Deloitte actually executes the policies of what as ICANN has provided to us. But as I said for the dot rule, there we had an issue of the fact that if, for example, you have the trademark, as a registered trademark, if they say now that is not accepted because it includes a TLD extension and I have the trademark, for example, Deloitte Green at this moment for, and, which today is not an extension, so it will be accepted in the Clearinghouse but as soon as it becomes a TLD, for example, then it won’t be accepted in the Clearinghouse. So we had a really hard issue figuring out what was the … where was the boundaries and also, for example, you have trademarks now with the company DeloitteCo with Do with a dot. And … but CO is actually a TLD extension. It is a ccTLD but it is a TLD extension. So are we able to accept this or are we not able to accept it? So that is why it was a very strict rule and no dots were allowed but as I said, we are currently discussing to me more lenient and as soon as the updates can be provided, it will be provided on … in the guidelines.

Robert Kriner speaks: Great! Thanks Vicky. One more question for you, I believe, is in regards to the SMD file. Can you just provide some information on how the SMD file will be presented? How will it work? There are some questions with regards to what needs to be done with that SMD file to register during a Sunrise period. So, just hear your comments (inaudible).

Vicky Folens speaks: Definitely, so SMD file or Sunrise key or token, this is actually pretty much the same thing, but used in different (inaudible), but what does it actually mean? Well, a SMD file is actually an … a token or key that allows you to register your domain name during a Sunrise period. You receive the SMD file through the application where you can open it through a text editor, which is Notepad in windows, for example, or a text edit in Macro, so it is really a text editor where you open this. And it’s (inaudible) it contains a human readable part and it contains encrypted parts. The human readable part provides you information of the trademark, and the encrypted part is really something that the registrars or registries can open up with a key that they receive from ICANN, and they are able to read it to make sure that information is valid and correct. And how will it actually work? Well, you will actually be able to take this SMD file and you can download it and you can provide it to the registrar at the moment the Sunrise opens and the registrar will either request you to upload it in their system or they will request you to copy/paste the contents of the SMD file into a certain text box. And at that moment in time, the registrar will also be able to read it because he has access to the key and he will provide that information to the registry. So that is how the SMD file or Sunrise key will work.

Robert Kriner speaks: Perfect. Thank you Vicky. And just some of the other questions that we have received during the presentation. There was a question with regards to pricing. Is the pricing that we have shown, in what I believe was the second slide, per registration? It is. So there is the option, as we have mentioned, for one, three or five year submission periods of the Clearinghouse, and that is per trademark registration. So the fee would be per registration depending on how many you wanted to submit to the Clearinghouse. We did have another question with regards to third party attempts to register trademarks with a generic term. So as an example … let’s take Corsearch. Corsearch register their trademark within the Clearinghouse. The question then asked would the claims period cover us should someone want to register Not just, but Corsearch with some other type of generic term along with the Corsearch in the registration. And the answer to that is no. So, the SMD or Claims Notice would only cover us should someone register If somebody registers your trademark with another generic term, whatever it may be, the Claims Notice would not pick that up. So, it also might be beneficial to begin possibly thinking about a domain name watch, which will cover variations like this after the ninety day period just to ensure that you are being fully protected from all cybersquatters and things like that. So, just to reiterate the process, Vicky had explained it, but what happens is with the claims period when a registrant or potential registrant goes to register a trademark in that ninety days … register a domain name in that ninety day trademark claims period, they are presented with a notification letting them know that the mark is protected within the … maybe protected in … or is protected in the Trademark Clearinghouse and may have rights attached to it. This is not blocking anyone from registering your trademark in a particular domain. So it will not prevent the registrant from actually registering let’s say, but it will provide them with a notice letting them know that it is a protect mark in the Clearinghouse at which time they still have to agree to registration, which then will provide a Claims Notice to the brand owner. So, any confusion as to whether the Clearinghouse blocks registrations, it will not. It will just provide you with a notification of when somebody does register a mark … a domain that matches your mark that is in the Clearinghouse.

There was also another question with regards to time lines. As far as getting a mark within the Clearinghouse and being able to take part in the claims period or Sunrise period. Your registration … your trademark registration has to be in the Clearinghouse before a Sunrise period begins. So this means that if you do have trademarks, you want to get them in as soon as possible. Your mark must be in the Clearinghouse before the Sunrise period begins in order to have the benefit in taking part in not only Sunrise but also in the claims period. This also means you must have a trademark registration. So if you do a … if you might only have a domain name at this point and no trademark registration, unfortunately you will not be able to put your name in the Clearinghouse. You must have a fully registered trademark in order to take part in the Clearinghouse itself.

And the last question we had, and I know that there might be others that we might not have gotten to, but we will send out a Q&A sheet along with the presentation afterwards so that any questions we didn’t get to will be answered. But the last question was with regards to terminology. What is the difference between a record and a label? As Vicky was mentioning, a label, in some respects, can mean a full domain. Meaning, or a part of that top level domain or that domain extension. A record in this case, I believe, we are referring to trademark records. So records meaning a registered trademark in some jurisdictions and the labels are then the associated variations of a trademark that you choose to submit to a Clearinghouse based on the matching rules that Vicky also mentioned during her presentation. So as a quick example, if we have the trademark Corsearch and trademark registered, we will have additional labels we can submit based on that trademark record. Could be Corsearch A & D trademark, could be Corsearch without the & and just Corsearch trademark. Benefit of using us as your agent is that we populate all these choices for you so you have the selections there in front of you and you are able to make a decision as to which ones you want to submit to your … along with your Trademark Clearinghouse submission.

So with that, I am going to thank Vicky again for her time and the materials. I want to thank everyone for joining, and again if we did not get to any of your questions, we will be sure to get to them after the call here today, and send out a copy of the information. Thank you everyone.

GET IN Touch

We’re here to field your questions and concerns. If you are a company able to pay a reasonable legal fee each month, please contact us today.


This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.