Q & A: ICANN's Global Trademark Clearinghouse

by Baker Donelson

The Internet Corporation for Assigned Names and Numbers (ICANN), the body tasked with coordinating and preserving global Internet stability, is embarking on its largest expansion ever of the domain name system.  Last week, on March 26, ICANN launched a global Trademark Clearinghouse (Clearinghouse) as part of its generic Top Level Domain (gTLD) program.  The newly-formed Clearinghouse will dramatically change the landscape of our domain name system, creating thousands of new domain names in addition to those existing gTLDs (that is, the words that appear to the right of the "dot" in a domain name).  Currently-available gTLDs that you may be familiar with include .com, .org, .biz, and .net, but ICANN has already received over a thousand applications for new gTLDs, such as .baby, .food, .law, and more.

1.  Why Register With The Clearinghouse?

Registration with the Clearinghouse is not mandatory, but may provide trademark holders with additional safeguards against cybersquatting, counterfeiting and other types of infringement as new gTLDs go live.  Registration with the Clearinghouse also provides trademark owners with access to two new services: the Sunrise Service and the Trademark Claims Service.

  • The Sunrise Service
    The Sunrise Service allows Clearinghouse registrants an opportunity to register domain names for their trademarks before a new gTLD launches to the general public.  During these Sunrise periods, trademark holders who have registered a trademark with the Clearinghouse will have at least 30 days before names are generally available to the public in which to register their mark(s) with the new gTLD. These Sunrise periods occur on a rolling basis as new gTLDs are introduced.
  • The Trademark Claims Service
    The Trademark Claims Service follows the Sunrise period, and runs for a period of at least 90 days after a new gTLD opens for general registration.  During this period, if a third party attempts to register a domain name that is identical to a trademark registered with the Clearinghouse, that third party will receive a warning notification with the registered trademark information.  If, after receiving the notice, the third party registers the disputed domain name, the Clearinghouse registrant will receive notice that someone has registered a domain name that is identical to his Clearinghouse trademark record.  The notice to third parties serves as actual notice of possible infringement, which may be used as evidence of that party’s bad faith in registering the domain name in any resultant litigation.?

2.  Who May Seek Clearinghouse Protection?

Four types of word marks are eligible for inclusion in the Clearinghouse:

  • nationally or regionally (that is, multi-nationally, such as CTM registrations) registered word marks from all jurisdictions;
  • word marks that have been validated through a court of law or other judicial proceeding;
  • word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; and 
  • other marks that constitute intellectual property.

Certain marks are ineligible for registration with the Clearinghouse, including, but not limited to, trademark applications, trademark registrations issued by a city, state, province or sub-national region, and registered marks that were subject to successful invalidation, cancellation, opposition or rectification proceedings.

3.  How Do I Register A Trademark With The Clearinghouse?

The Clearinghouse began accepting applications for registration on March 26.  Trademark holders may now submit their trademark data to http://www.trademark-clearinghouse.com/ before any new gTLD registries launch.  To register, trademark holders (or their agents) will need to provide certain information related to an eligible trademark.  This information includes, without limitation: the name of the mark, registration number, registration date, jurisdiction, a detailed description of goods and services, the status of the trademark holder, and contact information for the trademark holder, among other information.  The Clearinghouse reviews this data to determine whether the mark is eligible for protection, and may request additional documentary evidence if it determines the submitted trademark data is incomplete or incorrect.

If the trademark holder wishes to opt in for the Sunrise Service when submitting a trademark for registration with the Clearinghouse, he must also submit proof of use of the mark.  This proof of use must have two elements: (1) a signed declaration of use, and (2) a sample showing the mark in use (such as a product label or marketing materials).

4.  How Much Does It Cost To Register?

Under the basic fee structure, trademark registrations with the Clearinghouse can be designated for one, three, or five years.  The costs for such registrations are: $150 per mark for one year; $435 per mark for three years; and $725 per mark for five years.  The basic fee structure requires payment by credit card and is limited to 10 trademark registrations per card.  There are no additional fees for opting in or out of the Sunrise and/or Trademark Claims Services.

There is also an advanced fee structure for users who set up a prepayment account. The Clearinghouse also offers discounted pricing to trademark holders based on the volume of marks registered or renewed.

5.  Is The Clearinghouse For Me?

Registration with the Clearinghouse will not necessarily prevent cybersquatting or other trademark infringement and does not guarantee that you will automatically get your trademark as a domain name in all new gTLDs.  However, with the launch of the Clearinghouse, ICANN has added another weapon to the arsenal of trademark holders in policing their marks.  Taking advantage of these new safeguards may be a worthwhile way to protect the value of your brands.  Our intellectual property team is available to discuss whether Clearinghouse registration is right for you.

If you have any questions or need further information, please contact one of the authors, or any of the other members of our Intellectual Property Group.

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.

© Baker Donelson | Attorney Advertising

Written by:

Baker Donelson

Baker Donelson 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.