Foley & Lardner: ICANN Opens Trademark Clearinghouse as Part of Imminent Domain Name Expansion

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:

1. "Sunrise" Registration Period: Prior to each new gTLD launch to the general public, the gTLD Operator must offer a sunrise registration period of at least 30 days during which brand owners who have registered with the TMCH can register a second-level domain identical to their trademark, thereby preventing a third party from doing so.
2. Notification Service: For at least 60 days following the time a new gTLD is open for registration to the general public (i.e. after the sunrise period closes), third-party applicants who apply for a SLD name that is identical to a trademark recorded with the TMCH, but not previously registered as a SLD name by the owner during the sunrise period, will receive notification of the trademark owner's prior rights. If the domain name applicant proceeds to register that domain name anyway, brand owners also will receive notification of the third party's registration.

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
Milwaukee, Wisconsin
414.297.5745
dfrenkel@foley.com

Richard J. McKenna
Milwaukee, Wisconsin
414.297-5723
rmckenna@foley.com

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