ICANN Publishes Pricing for Trademark Clearinghouse

by Morgan Lewis
Contact

As ICANN moves toward its expansion of Internet top-level domains, trademark owners should consider strategies to protect their brands.

The Internet Corporation for Assigned Names and Numbers (ICANN) has announced the fee structure for the Trademark Clearinghouse, a centralized repository for authenticated information pertaining to the rights of trademark owners. The Trademark Clearinghouse will be established in connection with ICANN's new generic Top-Level Domain (gTLD) program.[1]

Role of the Trademark Clearinghouse

The Trademark Clearinghouse has not been created as a rights protection mechanism per se, but it will be integral to many of the mechanisms that ICANN has adopted to mitigate the risks that the new gTLD program may pose to trademark owners. For example, many expect that the introduction of 1,000 or more new gTLD extensions will give rise to increased cybersquatting, counterfeiting, and Internet fraud.

In particular, the Trademark Clearinghouse will facilitate the "Sunrise Period" for each new gTLD registry. Sunrise Periods are required under ICANN's program and will provide trademark owners with the first opportunity to register domains that correspond with their marks in each new gTLD. The Trademark Clearinghouse will validate all applications for domain registrations submitted during these Sunrise Periods. It appears that only trademarks recorded with the Trademark Clearinghouse may be eligible for early registrations during Sunrise Periods.

In addition, the Trademark Clearinghouse will be essential to the operation of ICANN's Trademark Claims Service, a notice system that each new gTLD registry must offer for at least 60 days after the mandatory Sunrise Period has expired and its registry is open for general registration. If someone registers a domain name that corresponds directly with a mark that has been recorded with the Trademark Clearinghouse, the Trademark Claims Service will provide automated notice to the applicable trademark owner and the registrant for the domain. The domain name registrant will also be required to represent that its registration and use of the requested domain name will not infringe the trademark owner's rights. The Trademark Claims Service will not block the registration of a potentially infringing domain name by an unauthorized party. Instead, it will notify the applicable trademark owner and the registrant of the potentially infringing domain name, so the trademark owner can consider taking action.

Recording Trademarks with the Trademark Clearinghouse

A trademark may be recorded with the Trademark Clearinghouse if it is registered, protected by statute or treaty, validated by a court or a judicial proceeding, or otherwise constitutes intellectual property in any jurisdiction. Trademarks that are the subject of pending applications or invalid or cancelled registrations may not be recorded. Further, only word marks and the textual elements of design marks may be recorded with the Trademark Clearinghouse, as only words may be reflected in a domain name.

The Trademark Clearinghouse will charge trademark owners $150 to record an eligible mark for one year. Multiyear recordation is also contemplated, with a charge of $435 per mark for three years and $725 per mark for five years. Although trademark owners may record their marks directly with the Trademark Clearinghouse, the Trademark Clearinghouse's payment procedures may impede individual action because credit card payments are limited to 10 trademarks per card and all other payment options require a $15,000 minimum deposit to the Trademark Clearinghouse. Accordingly, some trademark owners may wish to have agents record their marks with the Trademark Clearinghouse and, therefore, will likely be subject to additional fees.

Implications

It remains unclear when the Trademark Clearinghouse will begin accepting applications from trademark owners. ICANN is currently evaluating more than 1,900 new gTLD applications on a rolling basis and plans to announce the results of its review beginning in late March 2013, with an expectation that the first new gTLD registries will open for business before the end of 2013. Therefore, the Trademark Clearinghouse may commence operations within the next few months absent further delays.

With this current announcement, trademark owners should begin to strategize on how best to protect their portfolio of marks given the imminent introduction and exponential expansion of gTLDs. Trademark owners should also consider which of their marks they plan to record with the Trademark Clearinghouse to (1) facilitate the registration of corresponding domain names in one or more new gTLD extensions during the relevant Sunrise Periods and (2) take advantage of the benefits of the Trademark Claims Service. Similarly, trademark owners should review the list of applied-for new gTLD extensions and begin to consider the relevance of any of these new gTLDs to their businesses or for implementing defensive measures.[2]

These actions all involve increased costs for trademark owners. Although these costs still remain difficult to quantify with certainty, trademark owners are likely to experience increased costs in 2013 and beyond due to these upcoming developments.

[1]. For more information regarding ICANN's new gTLD program and the limited protections afforded to trademark owners by this program, view our September 9, 2011, LawFlash, "Decision Time: Trademarks and the New World of Domain Names," available here, and our June 13, 2012, LawFlash, "ICANN Publishes List of New gTLD Registry Applications," available here.

[2]. View the list of gTLD extensions here.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morgan Lewis | Attorney Advertising

Written by:

Morgan Lewis
Contact
more
less

Morgan Lewis on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.