ICANN gTLD Trademark Clearinghouse FAQs

The Trademark Clearinghouse launched on 26 March 2013. It is part of a cluster of rights protection mechanisms devised through the ICANN multistakeholder policy development process, as a bid to mitigate costs for brand owners targeted by cybersquatting.

In January 2012, ICANN launched a process to create an unlimited number of new generic Top Level Domains (gTLDs). Currently there are 22 gTLDs, of which the best known are .com, .net and .org. Previous expansions of the domain space in the past decade have added .biz, .info, .xxx and lesser known .aero, and .museum.

That’s all going to change in the coming year. Over 1900 applications were received for over 1400 strings. Results have been published for the first 30, and all that have completed the initial evaluation stage so far have passed. This indicates that the Application Guidebook criteria are being applied permissively. So, we can expect the majority of applications to succeed.

The Trademark Clearinghouse is now up and running, and brand owners have started to use the service. This set of FAQs is aimed at brand owners who may not be familiar with ICANN or its processes, or the jargon of the domain name business.

What is the Trademark Clearinghouse, and what are its benefits?

The Trademark Clearinghouse is one of several new brand protection mechanisms which will come in along with the new gTLDs. The Clearinghouse is a single, central database of validated trade marks, which all those running new gTLDs are required to refer to when they launch.

Here are the benefits of registering your mark with the Clearinghouse:

• it’s more straightforward to manage registration in Sunrise periods
• you will be notified of any attempt to register an exact match of your trademark during the Trademark Claims period.

What’s a Sunrise period, and how does the Trademark Clearinghouse help?

Before every new gTLD opens its doors to general registration, it is required to go through a “Sunrise Period”. This is an initial stage, lasting at least 30 days. This allows trademark holders to register domains exactly matching their trademarks, before the general public get to register.

Every new gTLD provider is required to give notice of their Sunrise Period to all trademark holders in the Clearinghouse. This is a real benefit for two reasons. First, it will be much easier to keep track of what is going on. Secondly, your mark will only have to be verified once (on registration with the Clearinghouse) reducing time and costs all round.

What’s Trademark Claims, and is it worthwhile?

Trademark Claims is one of a range of brand protection mechanisms which will be introduced with the new gTLDs. As they have not been tried out before, there’s no track record to go on.

Every new gTLD will be required to run a Trademark Claims period, for at least the first 60 days after the Sunrise period. So, it coincides with the start of general registrations.

For brands registered in the Clearinghouse, the Trademark Claims service does two things:

• If someone tries to register a domain name that exactly matches your trademark, they will get a notice informing them of your rights
• If they go ahead and register, you will be informed.

Is it worthwhile? Well, it doesn’t prevent someone registering your mark, and it doesn’t cover similar domains – only exact matches. One benefit is that if you end up in a UDRP with the registrant, the notice will be good evidence that they were aware of your rights prior to registering the domain name.

On it’s own, it’s probably not worthwhile because it doesn’t cover similar domain names (such as typos or brand+descriptive term, which are often targeted by cybersquatters). However, since there are no additional fees for participating in Trademark Claims, why not? At least you’ll be notified when someone registers your brand in a new gTLD. Best used alongside domain name watching services.

How do I register my mark with the Trademark Clearinghouse?

• You file your trademarks, plus evidence of use, with a central provider for validation.
• The service also covers “court validated trademarks” or “protected by statute” (eg Olympic symbol, Red Cross).
• Assuming the validation works out, you get a code.

There’s loads of advice provided on the Clearinghouse website. A number of lawyers and brand protection specialists can help you with your application to the Clearinghouse.

What are the fees for the Trademark Clearinghouse?

The official fees are published in full on the Trademark Clearinghouse website. For a single trademark, the Trademark Clearinghouse fees are US $ 145 per trademark. There is a complex Advanced Fee Structure where price reductions are earned through “status points”. It is difficult to imagine many qualifying for reductions (perhaps this is recognised in the hasty revision, and introduction of “early bird” discounts a few days ago).

I’ve missed 26th March 2013. Am I too late to register with the Trademark Clearinghouse?

As Michael Winner would have said “Calm down, dear!”. You’re not too late. Although the first 30 gTLD applications were approved by the ICANN board recently, no launch dates have yet been published. It is likely to be at least few months before any go live.

It is, however, worthwhile getting the trademark validation done and dusted during this relative lull before the first new gTLDs launch.

All in all, should I bother with the Trademark Clearinghouse?

Yes, because it will make the Sunrise periods much easier to manage. Your mark will have already been verified, and you will be notified when each Sunrise period is about to start.