[Editors note: The Trademark Clearinghouse is a unique way for brand owners to protect themselves with the introduction of top level domain names. Jan Corstens, a partner at Deloitte (which operates the Trademark Clearinghouse), explains some of the common misconceptions about the service in this guest post.]
With upcoming drastic changes to the Internet, including new generic Top Level Domains (gTLDs) such as .nyc and .boston to .book and .lol – it is crucial that brand owners understand how to effectively protect their intellectual property in the online space. The first step is properly navigating ICANN’s Trademark Clearinghouse (TMCH), which involves clearing the air on some of the top misconceptions surrounding its key features.
The TMCH is the central database of validated trademarks that helps defend brand owners against cybersquatting or other types of trademark infringement. Protection is offered in the form of two unique services – first is the Sunrise Period, which gives brand owners early access to proactively register domain names that match their trademarks ahead of wider public availability; second is the 90 day long Trademark Claims Services which alerts brand owners any time another individual or company attempts to register domain names that as an match to their marks. Despite these two key offerings, since the launch of the TMCH in March there has been a fair amount of confusion surrounding the overall benefits.
Fiction: Brand owners must individually submit their trademarks with each TLD in order to be protected
Fact: While this may have been true in the past, the TMCH marks the first time ever that brand owners have access to a single, global repository of registered trademarks. This includes trademarks from almost all of the world’s jurisdictions and in multiple scripts, meaning widespread protection of intellectual property both domestically and internationally. Brand owners simply need to provide a detailed description of goods and services in the same language as on their trademark certificate. For U.S. trademarks, any detailed descriptions that appear between brackets denote that the trademark is no longer protected for those specific goods and services and should thus be omitted.
Fiction: Brand owners should wait to enter their trademarks into the TMCH
Fact: Advanced preparation is key to avoiding any unexpected challenges with registering a domain name during Sunrise. As such, brand owners are encouraged to submit their trademarks early to ensure that enough time is reserved for dealing with potential administrative corrections. Brand owners particularly interested in taking advantage of registrations during Sunrise Periods should be the most focused on early submissions, as delays could lead to the inability to register a domain names. Furthermore, a proof of use declaration of a trademark must be signed, dated and uploaded in the TMCH for participation, including one sample of use of the trademark in the Sunrise Period.
Fiction: There Sunrise Period presents no real benefit for brand owners
Fact: The Sunrise Period is the easiest and most cost-effective way to secure trademarks as domain names ahead of competitors, since registered marks verified by the Clearinghouse get first choice of purchasing second-level domain names for new gTLDs before the name is made available to the general public. Any intellectual property owner wishing to secure a domain name associated with their trademarks during this period must have submitted the relevant marks into the TMCH. Additionally, since the TMCH reviews marks from all jurisdictions according to the same requirements, use of the TMCH provides a consistent basis for accepting Sunrise registrations. It’s all critical to note that gTLD registries also have the ability to establish additional registration criteria, and may offer additional limited registration periods to establish additional opportunities or protections.
For an even further breakdown of the TMCH, view this video with a step-by-step guideline of its key features.
gpmgroup says
“Fact: The Sunrise Period is the easiest and most cost-effective way to secure trademarks as domain names ahead of competitors”
Has ICANN put in any measures to prevent price gouging during Sunrise Periods?
Do Founders’ investors get first refusal ahead of Sunrise applicants?
James says
Excellent Post! Very enlightening.
Mory says
Will Trademarks that happen to be for generic names, be allowed in the TMCH?
Correct me if I’m wrong, but if they have a legit TM then it will be allowed.
So what will happen if the registry decides to reserve those generic names b/c they have value as a generic? Clearly they can do so and the TM holder will not get priority over that name.
However, once its delegated to whomever the registry decides,(auction/jv etc..) a Notice will be sent to the existing TM holder within the TMCH. So wont this deter potential buyers of those reserved names?
Imagine them closing a quiet deal for a cool name with one of the registries and then once its delegated to them they will get an email saying that their name has a TM on it and that a notice will be sent to that TM holder. All this in addition to them being asked by the notice sent to them whether they really want to register the name, since its trademarked??
They are not aware that very soon after they will be open to UDRP etc.Yes this might happen in any event, but by sending a Claim Notice to the TM holder after these reserved names are delegated is asking for trouble from everyone. ICANN in effect is waving a red sheet in front of the TM holders and saying: “ Hey we just gave the name you have a TM on to someone else. You TM holder don’t have enough rights to get it at Sunrise period but now you can go after the company that just bought./got it from the registry. “ Beware potential buyers- as to what you are getting into. Was this addressed by Frank and the other registries?
Andrew Allemann says
@ Mory – I believe the TMCH notice is only displayed on screen when you register a domain name. There’s no emailed notice, so if you transfer a domain you shouldn’t see the message.
Mory says
@Andrew – Interesting. Any chance one can validate that?
From what I read I’m not sure the Registries are allowed to register them on their name and then have them transferred to someone else, and by that avoiding the TMCH Notice when transferred.
What you are suggesting means that the Notice will be sent the moment its registered by the registry, which also wouldn’t make a potential buyer too happy. Since at that moment the TM owner is alerted about the domain, and can prepare for a udrp once it gets delegated from the registry. It would be better if reserved names by definition would be exempt from the TMCH.