As early as April 2013, the first new generic top level domain (gTLD) could be approved for launch (the proposed new gTLDs include .amazon, .love, .nike, .soccer, .tokyo and .wine).
The Trademark Clearinghouse, which is designed as a mechanism for rights holders to protect their registered trademarks in the second-level domains (e.g., the “sideman” in sideman.com) when new gTLDs are in place, is expected to go live March 26th.
What Is The Trademark Clearinghouse?
The Trademark Clearinghouse enables a rights holder to submit information to the Clearinghouse about its registered trademarks. The Clearinghouse will then serve as a single database for authenticated registered trademarks from all over the world. Once the new gTLDs are operational, all new gTLD registries will be required to use the Clearinghouse data to ensure that certain mechanisms to protect trademark rights are applied to all new domain name registrations – namely, (1) a “sunrise” period for trademark owners to register their trademarks as second-level domains before the general public can; and (2) a trademark claims period, during which the Clearinghouse will alert a rights holder when there is a second-level domain that is registered that matches the rights holder’s trademark and the trademark owner is then permitted time to contest the registration.
Rights holders should be aware that the Clearinghouse is not proof of any right; it only acts as a repository of verified rights information and the data in the Clearinghouse will be used to support sunrise and trademark claims periods, which are required of all new gTLDs. (For example, if a rights holder is alerted during a trademark claims period for a new gTLD that someone has registered a domain name that matches the rights holder’s registered trademark, the rights holder will have to file a complaint with WIPO through a Uniform Dispute Resolution Policy (UDRP) proceeding or through ICANN’s new Uniform Rapid Suspension (URS) system.)
It is also important to note that a rights holder must submit its registered trademark(s) to the Clearinghouse in order to take part in sunrise and trademark claims periods as the new gTLDs come online.
Guidelines for the Trademark Clearinghouse
Deloitte will act as the administrator for the Trademark Clearinghouse. In preparation for the launch of the Clearinghouse, Deloitte recently published guidelines for how the Clearinghouse will work. According to the guidelines, the Clearinghouse will accept and verify, among other intellectual property rights, nationally registered trademarks.
If a rights holder wants to take part in sunrise periods for the new gTLDs, the Clearinghouse will require proof of use (which will consist of a signed declaration and a sample of the proof of use) at the time that the rights holder submits its registered trademark(s) for verification to the Clearinghouse.
Deloitte also recently revealed that rights holders will need to pay $150 to register a mark for one year and that there will be an advanced pricing model in place, in which rights holders will receive discounts for registering and reviewing trademarks in the Clearinghouse.
What This Means For You
With the announcement that the Trademark Clearinghouse will go live on March 26th, companies should consider the registered trademarks that they want to submit to the Clearinghouse when it opens later this month.
Once you have had a chance to review this Legal Update, we welcome you to contact one of our attorneys in our Intellectual Property Group for assistance with submitting your registered trademarks to the Trademark Clearinghouse and to discuss your company’s unique circumstances and positioning with regard to the introduction of the new gTLDs in 2013.
