With the launch of possibly hundreds of new generic
top-level domains (gTLDs) on the horizon, the Internet Corporation for Assigned
Names and Numbers (ICANN) will open on March 26, 2013 the Trademark
Clearinghouse (TMCH), in which brand owners can record their trademarks. The
TMCH is a centralized repository for validated trademark information that can
help protect against unauthorized registrations of trademarks as second-level
domains (SLDs) within the new gTLD program.
Trademark owners are concerned about their principal brands being registered by
third parties as SLDs (i.e., the word "before the dot") in new gTLDs open to
the public, e.g., DellComputer.store or NewYorkTimes.news. The TMCH is designed
to assist in protecting against such unauthorized uses.
Recording a mark with the TMCH provides two principal
benefits to a trademark holder:
In addition, the TMCH simplifies the process of opposing
SLDs for trademark owners who have registered their marks with the TMCH. Once
the trademark owner has documented its registered rights in a mark with TMCH,
this information is used each and every time the trademark owner lodges a
challenge to an attempt to register a SLD incorporating the mark. It also will
give gTLD Operators easy access to information in order to better review and
assess claims by trademark owners.
While recordal of a trademark with the TMCH delivers
these benefits, it is important to understand its limitations. It is primarily
a repository of verified information. Recordal in the TMCH will not act as a
bar to registration of any SLD. The obligation to give notice (item no. 2
above) is mandated for only the first 60 days following the opening of a gTLD.
In addition, notification is required only with respect to SLDs that are
identical to the recorded mark. No notification will be sent with respect to
even slight misspellings or variations on the recorded mark.
Even with these limitations, trademark owners should
consider recording key brands with the TMCH. The greatest benefit is likely to
be the sunrise registration period, which will give trademark owners an early
opportunity to register their mark as a SLD, thereby foreclosing a proactive
third party from registering the brand and forcing the brand owner to spend
time and money challenging the registration.
In order for trademarks to be eligible for inclusion in
the TMCH, they must be (1) a federally registered trademark (a trademark
registered only at the state level does not qualify); (2) a court-validated
trademark; or (3) a trademark protected by statute or treaty. Detailed
information proving the validity of a mark may be requested and proof of actual
trademark use is required in order to participate in the sunrise registration
period detailed below. Registration fees for one year will cost around $150
with modest discounts for a three- or five-year registration.
Detailed information about the TMCH is available here.
To learn more about the new gTLDs and the history of the
TMCH, please refer to Foley Legal News Alert, ICANN Reveals List of Applied-for gTLDs: What Trademark
Owners Can Expect.
Legal News Alert is part of our ongoing commitment to
providing up-to-the-minute information about pressing concerns or industry
issues affecting our clients and our colleagues. If you have any questions
about this update or would like to discuss this topic further, please contact
your Foley attorney or the following:
Dayna M. Frenkel
Richard J. McKenna
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