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.

WHAT ARE THE BENEFITS OF RECORDING?

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.)

HOW CAN WE HELP?

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.