ICANN's Trademark Clearinghouse to Launch March 26

by BakerHostetler

ICANN will make its Trademark Clearinghouse available for trademark recordation on March 26, 2013. All companies who value protection of their brands on the Internet should consider recording their brands in the Clearinghouse. The Trademark Clearinghouse is intended to be the sole global repository of trademark data to be used in conjunction with the issuance of new generic top level domains "gTLD's" slated for later this year. These new gTLD's will greatly expand the "space" of the Internet. Whereas now gTLD's are limited to just a handful of domains (".com", ".info", ".net", etc.), there are currently nearly 2,000 applications pending for new gTLDs. Rights holders who submit, and then have their trademarks validated by ICANN's Trademark Clearinghouse, will have access to a range of services to protect their rights as the Internet expands rapidly into this new space.


There are two clear benefits to owners who record their trademarks with ICANN's Trademark Clearinghouse. First, those who record their marks will have the benefit of "sunrise registration." Sunrise registration is a priority period during which those who have had their trademarks validated by the Trademark Clearinghouse will be able to record domains that match their trademarks for a period of at least 30 days before the general public. For example, if a new gTLD called ".shoes" issued, shoe companies would be able to register domains corresponding to their respective rights they had recorded with the Trademark Clearinghouse, e.g. "nike.shoes" or "adidas.shoes", before any other entity. Proof of use must also be recorded in seeking sunrise registrations.

Second, by recording their trademark rights with the Trademark Clearinghouse, rights holders have access to ICANN's Trademark Claims service. This notification service will alert rights holders when a domain has been recorded (under any gTLD) that matches that rights holder's mark. A current proposal would expand coverage to specific additional strings that have been previously abused by cybersquatters. With so many potential gTLD's set to issue, the Trademark Clearinghouse could become an important rights management tool.

There will be a $150 filing fee per trademark, per year, with moderate discounts for multi-year recordation. This fee includes recordation in the Trademark Claims Service. However, this fee does not cover sunrise notifications in specific gTLD's. Those prices are to be set by the specific gTLD's and will likely be approximately $200 in each gTLD (e.g., registration of one brand for sunrise registration across 50 gTLD's would require fees amounting to $10,000.)


BakerHostetler can help you navigate the risks and benefits the new gTLDs present to you and your trademark portfolio. Our team can help you determine an efficient strategy to record with the Trademark Clearinghouse and ultimately protect your rights. For more information on how we can help, please contact David A. Einhorn at 212.589.4644 or deinhorn@bakerlaw.com; Deborah A. Wilcox at 216.861.7864 or dwilcox@bakerlaw.com; or your regular BakerHostetler contact.

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.

© BakerHostetler | Attorney Advertising

Written by:


BakerHostetler 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):

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.


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.