ICANN’s Trademark Clearinghouse Arrives March 26th

As we have previously discussed here, the range of available generic Top-Level Domain names (gTLDs) will soon expand dramatically to include hundreds of new alternatives such as .store, .hotel, and .restaurant. Most of these new gTLDs will be offered to the general public for registration of second-level domains. To help mitigate the risk of brand abuse by competitors and cybersquatters, ICANN has created the Trademark Clearinghouse, which will launch on March 26, 2013. Now is the time for retailers and other businesses to consider how to make effective use of the Trademark Clearinghouse in the context of their overall brand protection strategies.

Trademark Clearinghouse Basics

The Trademark Clearinghouse will be a global repository for trademark ownership information submitted by trademark owners and verified by the Clearinghouse. Trademarks will be eligible for registration only if they are (i) registered at a national or regional level, (ii) protected by a statute or treaty, or (iii) validated by a national-level judicial proceeding. Thus, most unregistered marks will not be eligible for registration with the Clearinghouse. The registration process will require the submission of details concerning the trademark and its owner as well as an application fee.

The Value of Registration

Registration with the Trademark Clearinghouse does not mean that you will automatically be entitled to register your brand as a domain name in a new gTLD or to prevent someone else from doing so. After all, multiple parties may have legitimate claims to the same domain name. However, if you register your trademark with the Clearinghouse, you will be able to take advantage of two valuable rights protection mechanisms: (i) Sunrise services and (ii) the Trademark Claims service.

Sunrise. Before each new gTLD is opened to the general public, the registry will be required to offer a Sunrise period of at least 30 days. During that period, you may register the domain name in the new gTLD that matches your “registered” trademark. To participate in the Sunrise period, however, you will need to have submitted proof that you are actually using your trademark, including both a signed declaration and an example of use.

Trademark Claims. After the Sunrise period, a 60-day Trademark Claims period will follow. During that period, anyone who attempts to register a domain name that matches your trademark will receive a warning notice concerning your trademark rights. If the notified party proceeds with the registration anyway, you will receive a notice of the registration and may then take whatever legal action you deem necessary to protect your trademark.

To Register or Not To Register

In deciding whether to register any of your trademarks with the Trademark Clearinghouse, you will want to weigh a variety of factors, including cost. Registration is not free. The fee to register one mark for one year is $150, and only modest volume and multi-year discounts are available. Further, if you purchase one or more matching domain names during the Sunrise periods, you will incur costs for those registrations and any subsequent renewals. On the other hand, the registration of your core brands with the Clearinghouse together with a reasonable expansion of your domain name portfolio may be significantly less than the cost of missing out on a desired domain name or pursuing a trademark enforcement action.

Registration with the Clearinghouse will also require administrative resources. You will need to decide whether you can manage the registration process in-house or whether you are better off using a registered Trademark Agent. You will also need to keep track of registrations and renewals with the Clearinghouse and seasonably update your registrations as you launch new brands or abandon existing ones.

Fortunately, although the Clearinghouse will be open as of March 26, trademark owners will likely have a few more months to register before the first Sunrise of the first new gTLD. In fact, the Clearinghouse has indicated that the clock will not start ticking on the first year of registration until that first Sunrise period begins. Therefore, trademark owners should review their strategy in an orderly manner and, if they so choose, register with the Clearinghouse as soon as they are ready to do so.

Related topics: Intellectual Property, Retail, Technology