United States: Under Construction And Open For Business: New gTLD Trademark Clearinghouse Set To Open March 26

Last Updated: April 9 2013
Article by Gregory S. Shatan, Brad R. Newberg and Judith L. Harris

Most Read Contributor in United States, October 2017

ICANN (the Internet Corporation for Assigned Names and Numbers) is rushing headlong in its efforts to bring the world a massive expansion in the number of new gTLDs (the part of an Internet address that follows the dot, such as .com). As ICANN developed this plan over the past several years, various groups raised concerns regarding the potential for a corresponding massive expansion of trademark infringement, cybersquatting, and cybercrime. In response, ICANN grudgingly developed a very limited set of additional "rights protection mechanisms" (RPMs) that solely apply to the new gTLDs.

As part of the RPM process, ICANN outlined a Trademark Clearinghouse (TMCH), which opened for business on March 26. Brandowners will need to register their marks in the TMCH in order to take advantage of two RPMs for new gTLDs: Sunrise registration periods and Trademark Claims notices. Only trademarks registered in the TMCH will be eligible to participate in Sunrises and only trademarks registered in the TMCH will trigger Trademark Claims notices.

The Sunrise registration period in each new gTLD launch allows trademark owners to register domain names that exactly match their trademarks (whether they want to use them or merely want to keep them away from cybersquatters and the like), prior to the general registration open to the public. The Trademark Claims notice will be sent to domain name applicants during the first 90 days of open registration if the name the third party is applying for is an exact match to a brandowner's trademark (the brandowner gets a notice as well if the applicant elects to go forward after seeing the notice).

Just days before the TMCH opened for business, ICANN made some last-minute renovations. In response to pressure from brandowners and business users of the Internet, ICANN changed three features of the TMCH and the related RPMs. First, the Trademark Claims notice period, originally 60 days, was extended to 90 days. Second, the TMCH will now provide 30 days prior warning of each new Sunrise period. Third, brandowners will now be able to register up to 50 variations on their marks in the TMCH, if those variations had previously been the subject of successful litigation or UDRP arbitration due to abuse by third parties. Regrettably, ICANN declined to put in place Limited Preventative Registrations, which would have allowed brandowners to buy defensive registrations of their marks across all eligible new gTLDs for a reduced price using a streamlined procedure.

Since Sunrise registrations require brandowners to spend massive amounts of money to preempt third-party registrations, and Trademark Claims notices evaporate after 90 days, the value of both RPMs is dubious. Nonetheless, this is the result of the "multi-stakeholder process" of ICANN (which pits a "minority party" of trademark owners against a multitude of stakeholder groups generally opposed to any rights protection mechanisms at all).

Brandowners must now decide whether to register some or all of their trademarks in the TMCH to take advantage of these limited protections. In order to be eligible for registration in the TMCH, trademarks must be either (1) registered in a national or regional (e.g., EU Community Trade Mark) registry, (2) validated by a court proceeding "at the national level," or (3) protected by statute or treaty. Proof of use (including a statement and a specimen) must be submitted for all registered marks. If the registration will expire during the term of protection in the TMCH, a copy of the renewal application must be submitted as well.

Trademark licensees, as well as owners, may place trademarks in the TMCH. While this allows licensees to trigger Trademark Claims, one can imagine the mischief and misunderstandings that could arise from this as well.

Not all trademarks will be eligible. If trademarks contain a design element, the words must be "predominant" and easily separable from the design. Trademarks containing a dot (".") are not eligible. Trademarks with characters not usable in domain names (e.g., "&") must be registered in a modified form (and if multiple modified forms are registered, each will be a separate registration at full cost).

Trademark owners may register directly with the TMCH or through "Trademark Agents" – which, in TMCH-speak, means third party service providers (and perhaps a few intrepid law firms) that will act as middle-men for trademark owners.

The TMCH is not cheap. Recording a trademark in the TMCH will cost $150 per year. There are some modest discounts – if a trademark owner registers for five years up front, they will "only" pay $725, rather than $750. Assuming the new gTLDs are launched over a five year period, a brandowner with 100 marks will pay at least $72,500 in TMCH fees. Payments must be made by credit card, unless the trademark owner goes through a Trademark Agent or registers for the Advanced Fee Structure, which requires a $15,000 deposit account to be set up with the TMCH. Further discounts are available to those in the Advanced Fee Structure, but the lowest level discount doesn't kick in until at least 334 five-year registrations (or 3,001 one-year registrations) are placed in the TMCH. Clearly, this fee structure favors Trademark Agents rather than brandowners. While Trademark Agents (and a few very big brandowners) will qualify for larger discounts, the extent to which Agents will pass these discounts on to trademark owners is unknown (like so much else in the TMCH universe).

The TMCH is also not user-friendly. Full details of each trademark registration must be entered manually, including full descriptions of goods and services (probably for each class – TMCH representatives weren't sure as of last week). There is no interface provided to allow automated input (e.g., from docketing software or spreadsheets). The TMCH has provided application program interfaces (APIs) to allow applicants and Agents to build their own interfaces. This will not appeal to the small brandowner or the faint of heart, especially since the APIs have not yet been fully tested. This also seems to push brandowners toward using Trademark Agents unless they intend to register only a few marks.

Trademark owners should be aware that, if they go through a Trademark Agent, the agent, not the owner, will receive the Trademark Claims notice that a third party has registered a domain name identical to a TMCH-listed mark. Owners will need to rely on their agents to forward these notices.

The two RPMs that use the TMCH are not particularly attractive, but they are arguably better than nothing. If trademark owners want to participate in even a single Sunrise – whether for defensive purposes or because they actually believe a registration in a new gTLD will be useful, they will need to pay the piper at the TMCH. Similarly, no matter how much of a "paper tiger" Trademark Claims notices are, if trademark owners want third parties to receive notice of their marks, they will need to sign up and pay the price. In sum, trademark owners should carefully strategize regarding those marks that they wish to place in the TMCH and those marks for which they will take a "wait-and-see" approach and enforce on a case-by-case basis.

Many elements of the TMCH are still under construction and it remains unclear how well it will all work. For those who like moving into houses while they are still being built, you will feel right at home. For the rest of us, we'll need to watch for construction debris.

This article is presented for informational purposes only and is not intended to constitute legal advice.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.