Intellectual Property Client Alert: Trademark Clearinghouse Adds to Brand Protections

Brand owners can now increase protection for their federally-registered trademarks and service marks by registering them with the ICANN Trademark Clearinghouse. The Clearinghouse was set up by the Internet Corporation for Assigned Names and Numbers, or ICANN, in connection with ICANN’s establishment of new generic Top-Level Domains (gTLDs). The Patton Boggs Intellectual Property practice group is ready to assist with those filings, to help brand owners obtain this additional protection.

BACKGROUND: NEW GENERIC TOP-LEVEL DOMAIN PROGRAM

The Trademark Clearinghouse is part of the launch of new gTLDs on the Internet – such as .book, .cloud, .global, or .tech. These new gTLDs will be added to the current .com, .org, .net and similar TLDs. The gTLD initiative, officially known as the “New Generic Top-Level Domain Program,” was developed by ICANN to increase competition and choice in the domain name space on the Internet.

Roughly two dozen Top-Level Domains (like .com) are now in use, but there soon could be hundreds. Nearly 2000 applications for new gTLDs were filed last March, and ICANN is now vetting the applications. For a complete list of potential new gTLDs, see https://gtldresult.icann.org/application-result/applicationstatus.

The creation of new TLDs creates the potential for increased trademark infringement and cybersquatting, as infringers might seek to register new domain names incorporating trademarks owned by other companies. For example, an individual might attempt to obtain a domain name that uses another company’s mark, such as www.coke.soda. To discourage such infringements and give brand owners certain pre-emptive rights, ICANN created the Trademark Clearinghouse.

SIGNIFICANT PROTECTIONS FOR MARK OWNERS

The Trademark Clearinghouse affords mark owners significant protections for registered marks, such as: 

  • Sunrise Period: Clearinghouse registrants will be able to apply for domain names matching their registrations during the Sunrise Period for each registry. Each new gTLD registry must offer a Sunrise Period of at least 30 days before the registry opens for general domain name applications. At least 30 days before a Sunrise Period opens, the registry operators must give public notice about the Sunrise rules and time periods. This prior notice will give brand owners some advance warning and time to prepare their submissions.

    For example in the above hypothetical, if the Coca-Cola Company had registered the COKE® trademark with the Clearinghouse, it could apply for the “coke.soda” domain name during the Sunrise Period for the .soda domain. The registry operators for the .soda domain would have to accept Sunrise applications for at least 30 days before domain name applications are accepted from the general public.
  • Trademark Claims Service: For a limited period after a registry opens for general registration (after the Sunrise Period), an alert will be sent to the registrant if someone purchases a domain name that is an identical match to a trademark registered with the Clearinghouse. The notice period must last for at least 90 days after a registry opens for general registration. The mandatory notice period had been 60 days, but was recently lengthened to 90 days.
  • The Clearinghouse will send warning notices to new domain name applicants proposing domain names that include a mark previously registered with the Clearinghouse.

Significantly, a Clearinghouse registration will not prevent the registration of a domain name that infringes a mark registered with the Clearinghouse. The mark owner will be notified of the conflicting domain name if the conflicting domain name is registered during the 90-day notice period. The mark owner will need to take further steps to halt infringement and enforce its intellectual property rights. ICANN’s Uniform Rapid Suspension Process (URS) is a new dispute resolution process that seems promising as an enforcement mechanism. Brand owners may also send a cease and desist letter, file a complaint under the existing WIPO Uniform Domain Name Dispute Resolution Procedures, or file a lawsuit in a court with jurisdiction over the infringer.

The Trademark Clearinghouse charges a fee of $150 per mark per year for registering a mark. A copy of the owner’s national or regional mark registration must be filed with the application. In order to apply for domain names during the Sunrise Period, proof of actual use of the registered mark must also be submitted.

LIMITATIONS

While Trademark Clearinghouse registration offers definite advantages, there are some limitations to Clearinghouse registrations, such as:

Only nationally registered and regionally registered marks are eligible for Clearinghouse registration, with a few exceptions not likely to apply to U.S. trademarks. No common law or unregistered marks are eligible for Clearinghouse registration, unless the mark has been validated by a court or is protected by statute or treaty.

  • Design marks without words are not eligible for Clearinghouse registration. If a word mark is stylized or has a design element, only the word portion may be registered.
  • Marks that include any of the existing top level domain names, such as .com or .org, or that include a dot (“.”) are not eligible for registration in the Clearinghouse.
  • Protection is given only for the precise mark registered. Clearinghouse notices about possibly infringing domain name applications will be given only for “exact matches” of the registered mark. For example, a Clearinghouse registrant will not be notified of applications for a plural, or a sound-alike, of a registered mark.
  • Proof of use of the mark is required to obtain a domain name registration during the Sunrise Period for a particular registry. The fees for the domain name registration must be paid to the registry and are not included in the Trademark Clearinghouse fee.
  • Since there will be many hundreds of new top level domains, brand owners will need to prioritize among the various domain registries.


The Trademark Clearinghouse is accepting registrations now. There is no deadline for submitting registered marks to the Clearinghouse for registration. Registration in the Clearinghouse is a precondition to submitting an application to register a domain name during the Sunrise Period for each new gTLD, however. No Sunrise Periods are open yet, as ICANN has not yet approved any new gTLDs.

THE NEW GTLD FRONTIER

The Trademark Clearinghouse provides brand owners with additional protections in the new gTLD frontier. Brand owners interested in obtaining domain names during the new gTLD Sunrise Periods, and brand owners interested in receiving notice when third parties attempt to usurp their brands through unauthorized domain names, should consider registering their marks with the Trademark Clearinghouse. The Patton Boggs Intellectual Property trademark team would be pleased to discuss how we can help companies prepare for the gTLD frontier and increase their valuable trademark assets through Trademark Clearinghouse registration.