United States: New Generic Top-Level Domains Are Coming — Consider Protecting Your Mark Using The Trademark Clearinghouse Now

In early July 2013, the International Corporation for Assigned Names and Numbers (ICANN) passed one of the last checkpoints on the path to introducing new generic Top-Level Domains (gTLD) by promulgating a registry agreement that will be entered into by successful gTLD applicants prior to delegation of the new domain space. This means that ICANN could delegate the first of the approved gTLDs (of which there are over 1000!) very soon, consistent with its earlier estimation that the first of the new domains would be operational by the end of July, 2013. Applicants interested in registering their marks in any of the new gTLDs, or those concerned about defending against cyber-squatting or other misappropriation of their marks, should consider submitting their marks to the recently created Trademark Clearinghouse as soon as possible.

The Trademark Clearinghouse, which has been available since March 2013, is a centralized database for trademark registrations that serves as the basis of certain rights protection mechanisms that operators of the new gTLDs will be implementing. In particular, the Trademark Clearinghouse provides two main benefits to participating trademark holders: (1) "sunrise" registration opportunities in the new gTLDs, and (2) trademark claims notifications.

The "sunrise" registration period provides an opportunity for trademark holders participating in the Trademark Clearinghouse to register their marks in a new gTLD before registration is opened to the public. The sunrise period is brief, however, as domain operators need only provide 30 days advance notice and need only hold the sunrise period itself open for 30 days. As a result, trademark holders interested in utilizing sunrise registration should submit their mark information to the Trademark Clearinghouse as soon as possible.

The second main benefit provided by the Trademark Clearinghouse is a claims notification service. In particular, for the first 90 days of open registration (following the sunrise period described above) the gTLD operator must notify applicants and trademark holders of possible infringement from matching domain registrations. For example, if a third party attempts to register a domain name in the new gTLD space that matches a trademark in the clearinghouse, the gTLD operator will first notify the third party of the potential conflict. It is important to note that the third party can elect to continue registration despite this notification. If the third party so elects, the gTLD operator then notifies the trademark holder of the potential conflict. The trademark holder can then determine what, if any, action to take against the potentially infringing registration.

There is no deadline for submitting registered marks to the Trademark Clearinghouse, and there is a fee for using the clearinghouse that is on the order of $150 per mark per year. Submission can be made by a trademark holder directly or by a trademark agent, and in some cases a signed declaration of use and other proof of use of the mark may be required.

Those considering using the Trademark Clearinghouse should note that participation does not prevent infringement, as duplicate identical marks can coexist in the clearinghouse. In addition and as mentioned above, third parties registering in a new gTLD can register an infringing domain despite being warned of a potential conflict. Still further, the sunrise and claims services are limited to identical matches with few exceptions. The exceptions can cover things like punctuation and special characters, but do not extend to misspellings and other common near-matches. As a result, diligence by trademark holders will continue to be necessary in the gTLDs of interest, and trademark holders will have to avail themselves of different procedures for taking further action against an identified infringing third party.

Despite these limitations, however, trademark holders should at least consider using the Trademark Clearinghouse given the defensive registration and notification benefits, as well as the relatively low cost of participation. Further, while no formal deadline exists, trademark holders potentially interested in taking advantage of the sunrise registration period for the first group of new gTLDs should act fast given ICANN's continuing progress toward delegation.

For the Trademark Clearinghouse website, click here.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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