Protect Your Brands in the New Domain Name Regime: The Trademark Clearinghouse Is Open for Business

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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ICANNNew generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner.  ICANN recently published a “hypothetical” timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013.  Whether this date is ICANN’s wishful thinking or not, the new gTLDs are coming, and maybe as early as this fall.  With the first delegations in sight, this is a good time for a reminder that the Trademark Clearinghouse is open and accepting trademark information for its database.

The Benefits of the Trademark Clearinghouse

As previously discussed in detail, by recording its various registered trademarks in the Trademark Clearinghouse, a company can take advantage of two key processes upon the launch of each new gTLD.  First, as the owner of trademarks recorded in the Trademark Clearinghouse, a company can participate in the “sunrise” period of each new gTLD, such that it will have a better chance of securing the second-level domain name corresponding to a specific trademark. 

For instance, by recording the FOLEY HOAG trademark in the Trademark Clearinghouse, Foley Hoag would be able to file a sunrise application to register the domain name foleyhoag.law upon the launch of the .law gTLD.  Without a Trademark Clearinghouse recordation, Foley Hoag would have to wait until the “general availability” period and compete against a large pool of potential domain name registrants on a first-come, first-served basis. 

Second, the owner of marks recorded in the Trademark Clearinghouse will be able to take advantage of the Trademark Claims service, which will operate upon the launch of each new gTLD and provide notice to the trademark owner in the event an unaffiliated individual or entity registers a second-level domain name corresponding to a recorded trademark. 

Additional details regarding these programs is available here.  Note that unregistered trademarks are not eligible for recording in the Trademark Clearinghouse unless they have been validated by certain courts, or unless they are protected under statute or treaty.

What is the Recordation Process?

The process is relatively straightforward, but unfortunately the instructions on the Trademark Clearinghouse website are not, so we will endeavor to simplify:

A.  Registering the Trademark Owner

First, you will need to register the entity that will be recording trademarks with the Trademark Clearinghouse by visiting the secure Trademark Clearinghouse website and clicking the “Register” button on the top right.  On the following page, you fill in contact information for the trademark owner (referred to as the “contracting party”), as well as the name of the individual who will be handling the application process.  You will then be e-mailed a username and password to log in to your account

B.  Recording the Trademark Registration

Once you follow the e-mail instructions to log into your account, you will be brought to an account launch page.  From here, you can begin recording a trademark by clicking on the “Submit Mark” button on the right.  This will bring you to the main account control panel, where you will click on yet another “Submit Mark” button on the top right.  On the following page, you will fill in the details of the trademark registration in question. 

If you wish to take advantage of the sunrise process (and you probably do), then you will also have to upload a declaration of use and a specimen demonstrating use of the mark.  The use declaration form, naturally, is hidden on another website entirely. 

An acceptable specimen, which should be attached to the declaration in a single .pdf file, should be a printout showing the mark on labels, tags, or packaging (for goods) or advertising and marketing materials (for services). 

Once you have filled in all of the required information and uploaded the declaration and proof of use, you click the submit button at the bottom of the page, which will allow to pay and complete the recordation.  The cost of recording one trademark is $150 per year, with small savings for registering multiple years at a time.  For high-volume users (or trademark agents registering marks on behalf of others), an advanced fee structure is available for further savings.

Once the recordation of one or more marks is completed, you can view all of your recorded trademarks and their Trademark Clearinghouse details from the control panel.

Further Information

For additional information regarding the Trademark Clearinghouse, please visit the Trademark Clearinghouse website or check out the complete Trademark Clearinghouse guidelines.   

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.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

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