New gTLD Trademark Clearinghouse

Overview

There are currently 22 generic top-level domain names (gTLDs), including.com, .org, .net, and .biz.  The internet is about to go through a dramatic expansion with the release of nearly 1,500 new gTLDs.  Examples include well-known brand names—.honda, .chevrolet, .dell, .apple, .microsoft and .statefarm—as well as generic words—.golf, .love, .home, .hotel, .movie, .christmas and .law.  Click here for a full list of potential new gTLDs.  New gTLD registrars are expected to start offering domain name registrations (e.g., knobbe.law) to the public in the fourth quarter of 2013.

With the expansion, trademark owners are concerned that the new gTLDs will cause trademark infringement, cybersquatting, and cybercrime to dramatically increase.  In response, ICANN (the Internet Corporation for Assigned Names and Numbers) has developed a rights protection mechanism called the Trademark Clearinghouse.

The Trademark Clearinghouse allows trademark owners to register their trademark information in a centralized database that all new gTLD registrars must use.  The Trademark Clearinghouse provides trademark owners with protection prior to the launch of each new gTLD (“Sunrise Service”), and during the first 90-days that each gTLD is open to the public (“Trademark Claims Service”).

Knobbe Martens recommends that trademark owners utilize the Trademark Clearinghouse together with other trademark watching services.

Trademark Clearinghouse Benefits

(1) Sunrise Service

NOTE: gTLD registrars may have additional requirements for registering a domain name.

(2) Trademark Claims Service

Trademark Clearinghouse Requirements

(1) A valid trademark:

(2) Proof of Use:

(3) Renewal Application (if applicable)

(4) Select protection term: 1 year, 3 years, or 5 years.

NOTE: A mark subject of a pending trademark application can be recorded with the Trademark Clearinghouse, but the trademark owner cannot participate in the Sunrise Period or Trademark Claims Service period until the application matures to registration.

Trademark Clearinghouse Recordation Fees

There will be additional costs if trademark owners want to purchase a domain name during the Sunrise Period for a specific gTLD.  Each gTLD registrar will set the specific cost for registering a domain name.

Also, there will be additional costs if trademark owners want to cancel a registered domain name based on the owner’s trademark rights.  These costs will vary depending on the trademark and the registered domain name.

Conclusion

Many elements of the Trademark Clearinghouse are still changing.  If you are interested in recording your trademarks with the Trademark Clearinghouse, please contact us as soon as possible to develop a strategy.  The first new gTLDs are estimated to launch in the fourth quarter of 2013.