United States: Protect Your Brands In The New Domain Name Regime: The Trademark Clearinghouse Is Open For Business

Last Updated: August 9 2013
Article by Joshua S. Jarvis

New generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner.  ICANN recently published a "hypothetical" timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013.  Whether this date is ICANN's wishful thinking or not, the new gTLDs are coming, and maybe as early as this fall.  With the first delegations in sight, this is a good time for a reminder that the Trademark Clearinghouse is open and accepting trademark information for its database.

The Benefits of the Trademark Clearinghouse

As previously discussed in detail, by recording its various registered trademarks in the Trademark Clearinghouse, a company can take advantage of two key processes upon the launch of each new gTLD.  First, as the owner of trademarks recorded in the Trademark Clearinghouse, a company can participate in the "sunrise" period of each new gTLD, such that it will have a better chance of securing the second-level domain name corresponding to a specific trademark. 

For instance, by recording the FOLEY HOAG trademark in the Trademark Clearinghouse, Foley Hoag would be able to file a sunrise application to register the domain name foleyhoag.law upon the launch of the .law gTLD.  Without a Trademark Clearinghouse recordation, Foley Hoag would have to wait until the "general availability" period and compete against a large pool of potential domain name registrants on a first-come, first-served basis. 

Second, the owner of marks recorded in the Trademark Clearinghouse will be able to take advantage of the Trademark Claims service, which will operate upon the launch of each new gTLD and provide notice to the trademark owner in the event an unaffiliated individual or entity registers a second-level domain name corresponding to a recorded trademark. 

Additional details regarding these programs is available here.  Note that unregistered trademarks are not eligible for recording in the Trademark Clearinghouse unless they have been validated by certain courts, or unless they are protected under statute or treaty.

What is the Recordation Process?

The process is relatively straightforward, but unfortunately the instructions on the Trademark Clearinghouse website are not, so we will endeavor to simplify:

A.  Registering the Trademark Owner

First, you will need to register the entity that will be recording trademarks with the Trademark Clearinghouse by visiting the secure Trademark Clearinghouse website and clicking the "Register" button on the top right.  On the following page, you fill in contact information for the trademark owner (referred to as the "contracting party"), as well as the name of the individual who will be handling the application process.  You will then be e-mailed a username and password to log in to your account

B.  Recording the Trademark Registration

Once you follow the e-mail instructions to log into your account, you will be brought to an account launch page.  From here, you can begin recording a trademark by clicking on the "Submit Mark" button on the right.  This will bring you to the main account control panel, where you will click on yet another "Submit Mark" button on the top right.  On the following page, you will fill in the details of the trademark registration in question. 

If you wish to take advantage of the sunrise process (and you probably do), then you will also have to upload a declaration of use and a specimen demonstrating use of the mark.  The use declaration form, naturally, is hidden on another website entirely. 

An acceptable specimen, which should be attached to the declaration in a single .pdf file, should be a printout showing the mark on labels, tags, or packaging (for goods) or advertising and marketing materials (for services). 

Once you have filled in all of the required information and uploaded the declaration and proof of use, you click the submit button at the bottom of the page, which will allow to pay and complete the recordation.  The cost of recording one trademark is $150 per year, with small savings for registering multiple years at a time.  For high-volume users (or trademark agents registering marks on behalf of others), an advanced fee structure is available for further savings.

Once the recordation of one or more marks is completed, you can view all of your recorded trademarks and their Trademark Clearinghouse details from the control panel.

Further Information

For additional information regarding the Trademark Clearinghouse, please visit the Trademark Clearinghouse website or check out the complete Trademark Clearinghouse guidelines.  If you have questions regarding the benefits of recording your marks with the Trademark Clearinghouse or the recording process itself, or would like Foley Hoag to assist, please contact us at your convenience.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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
Events from this Firm
15 Dec 2017, Seminar, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

 
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.