The Trademark Clearinghouse: What You Need to Know

by White & Case LLP

The Internet Corporation for Assigned Names and Numbers ("ICANN") will be expanding the number of generic top-level domains ("gTLDs") as a result of the application process that commenced in January 2012. It is expected that more than 1200 new gTLDs will be made available in late 2013 through 2014. Examples of some of the new gTLDs are .money, .art, .law, .lawyer, .bank, .software and .brand. Also gTLDs that contain non-Latin script, known as Internationalized Domain Names ("IDNS"), including Chinese, Arabic and other alphabets will launch first, some as early as May.

In anticipation of the scramble to register new domain names using these gTLDs, ICANN has introduced the Trademark Clearinghouse ("TMCH") which will streamline the process for registering and protecting trademarks used in these new domains by providing a single, global repository for verified trademark rights. The TMCH database, which launched on March 26, 2013, also provides sunrise and claim notice services with regard to use of those identical trademarks as second-level domain names.

The types of trademarks that can be registered with the TMCH are nationally or regionally registered trademarks, court-validated unregistered trademarks, and statute/treaty protected trademarks. The TMCH may accept and verify other types of trademarks upon the request of the domain name registries. There are also some exceptions to what is considered "identical" including, for example, the word "and" for "&". Furthermore, some non-identical but "abused" domain names (for example, typo domain names won as a result of court or UDRP proceedings) will benefit from the notice service if they are registered with the TMCH.

Advantages of Registering Trademarks with the TMCH

1. Sunrise Services
Sunrise is an initial period of at least thirty days prior to the launch of each new gTLD for trademark owners who have filed their trademarks with the TMCH to obtain second-level domain names before those domain names are offered to the general public. For example, when the gTLD for .law becomes available, White & Case would have priority to secure the domain name in advance of .law being made available to the public, provided it had previously filed one of its global trademark registrations for WHITE & CASE with the TMCH. Submitting a mark to the TMCH does not achieve registration of any specific domain name; a trademark owner would need to separately register the domain name with the appropriate registry, subject to that registry's rules and requirements. If the trademark owner successfully registers the desired domain name, it can either use the name for its own business purposes or simply park the name to prevent cybersquatters from doing so.

2. Notification Services
For a period of ninety days after launch of a new gTLD, a trademark owner who has filed a mark with the TMCH will receive notification when anyone attempts to register a domain name containing an identical match to the trademark validated by the TMCH. The party attempting such registration will automatically receive notice of the trademark owner's prior rights. If the domain name applicant proceeds to register the domain name, the trademark owner is notified again and can then take appropriate action through UDRP or court proceedings. It will, however, be easier to establish bad faith of the party registering the domain name since they proceeded after receiving notice of the prior validated trademark rights.

The TMCH Registration Procedure

A trademark owner (or a licensee or assignee) may submit trademarks directly to the TMCH as a "trademark holder" or they may use the services of a third party "trademark agent." Trademark agents are required to create deposit accounts of $15,000. The fees for trademark holders who file their marks directly with the TMCH can be as low as $150 per mark annually. A range of discounts are available for multiple filings and longer registration periods. Such fees should also be factored into the trademark holder's budget.

Next Steps for Brand Owners

  • Develop a strategy for filing trademarks with the TMCH.
  • Review the new gTLDs and consider registering those that may affect your business.
  • Register early.
  • Monitor the new gTLDs for non-identical but confusingly similar domain names.

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.

© White & Case LLP | Attorney Advertising

Written by:

White & Case LLP

White & Case LLP 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 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:

- 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.