As you may be aware, over 1400 new generic top-level domains (gTLDs) should become available on the Internet starting Q2 2013. More than half will be open to register domain names. Given this situation, companies must carefully consider how to adapt their digital strategy and prepare for the new landscape.

The Trademark Clearinghouse (TMCH): what is it?

The TMCH is a centralized database of registered trademarks where rights’ owners can submit their eligible trademarks prior to and during the launch of new gTLDs.

The TMCH has two distinct functions in the new gTLD program: the Sunrise service and the Trademark Claims service. Its use for the dedicated extrajudicial procedure like the URS has been considered but as the URS is not defined yet, this function has not been confirmed.

The Sunrise service is a period of at least 30 days that must be offered by all new gTLD registries during which eligible trademark owners can register domain names matching their trademarks before domain names are offered to general public. In order to benefit from the system, trademark owners have to provide proof of use of their trademarks.

The Trademark Claims service is a notification service that provides notice to a potential domain name registrant that a domain name registration matches a trademark in the TMCH. Such notification is not blocking but alerts the applicant that it could infringe trademark. In case of litigation, proof of bad faith by the applicant is facilitated as it will not be in a position to allege that it was unaware of the existence of the trademark’s right. If the registration is completed after all, the trademark owner is notified of said registration during at least the first 60 days of the general registration period of any new gTLD.

These two services only apply to identical matches that is to say domain names, which consist of complete and identical textual elements of the trademark. The matching rules are strict. Only spaces, punctuations or other IDN-impermissible characters (!, +, =) may be omitted or replaced by hyphens. The signs @ and & may be replaced by a hyphen, omitted or translated into the applicable language(s) corresponding to the language of the trademark’s right jurisdiction.

For example, the possible matches for a Canadian trademark Dreyfus & associés are as follow:

  • dreyfusassocies
  • dreyfus-associes
  • dreyfusandassocies
  • dreyfusetassocies

Registration of a trademark within the TMCH allows to link up to 10 domain names per registration at no additional cost. Additional names may be added at an extra cost.

What are the eligible trademarks?

The eligible rights are as follow:

  • nationally or regionally registered word trademarks from all jurisdictions (EU, US, AIPO, ARIPO);
  • any word trademark that has been validated through a court of law or other judicial  proceeding;
  • other word trademarks protected by a statute or a treaty in effect at the time the trademark is submitted;
  • other trademarks that constitute intellectual property (to be determined).

All such trademark rights are eligible irrespective of their date of registration.

The following trademarks are not eligible:

  • device trademarks, word and device trademarks, 3D marks, sound trademarks,
  • any trademark’s application still subject to an opposition procedure;
  • any registered trademark that was subject to successful invalidation or cancellation proceedings;
  • any trademark that reproduces a TLD or a first level domain.

Required documents

  • copies of registration and renewal certificate if any. Trademark registrations have to be checked easily by the operators of the TMCH. It is advisable to select trademarks registered with trademark’s offices having online database access such as French NIIP, USPTO or OHIM. All the rules are not clear at this stage;
  • affidavit from the trademark’s owner attesting the accuracy of the data provided;
  • undertaking from the trademark’s owner to notify the TMCH of any update with regards to the trademark’s right such as renewal, assignment or abandonment. According to our knowledge, it is not specified if financial penalties will be applied or only restriction of access to the TMCH;
  • proofs of use to be eligible to Sunrise periods (one proof of use per trademark registered in the TMCH).

Acceptable proofs of use and revalidation

The types of proofs of use are quite usual but the standard is lower than the one required by trademark laws.

Said proofs of use may be:

  • labels, tags or containers from a product showing the product is available for the consumers;
  • advertising and marketing materials including brochures, catalogues, products manual, press releases showing that the trademark’s owner is communicatingwith consumers. Such documents may be produced if some trademarks are used for marketing purposes only and not displayed on the products.

Copies or photographic submission will be acceptable.

Some proofs of use are unacceptable such as domain name including the trademark, email messages, licenses agreement to use a trademark or business cards.

Proofs of use are subject to revalidation once every 5 years to maintain Sunrise eligibility. Annual renewal will only be required when the sample is no longer eligible.

Upon verification of the trademark’s data and proofs of use a Sunrise code will be generated. This code will be delivered to the registrar during Sunrise periods and will avoid  rights’ holders having  to provide supporting documents. All Sunrise codes are handled in our dedicated system Dreyfus IPweb.

Fee Structure

The registration cost in the TMCH is 145 USD per trademark per year (435 USD for 3 years and 725 USD for 5 years). Depending on the number of registrations, the cost could be less (for example 95 USD per trademark per year over 100,000 trademarks). The cost does not vary with the intended use i.e. Trademark Claims Service only or participation in Sunrise periods.

Our law firm offers to manage all your records in the TMCH benefiting from a service similar to managing a trademark portfolio. Our fees are based the mission undertaken and the number of trademarks involved.

When will the TMCH become operational?

Technical work on the TMCH is still in progress. The system should be ready soon, perhaps at the beginning of Q2 2013.

What strategy should be adopted regarding the TMCH and the launch of the new gTLDs?

The strategy to be put in place includes marketing and legal issues.

The TMCH as a tool for trademark protection is of limited interest. As a matter of fact, the Trademark claim service will only be effective for 60/90 days after the launch of a TLD. In addition, this service does not prevent the registration of domain names matching the trademark’s rights or prevent third parties from registering trademarks as domain names. It only enables trademark owners to receive notification when exact-match domain registrations are made during the first 60/90 days of the general availability.

It becomes even more essential to set up a global monitoring of trademarks among domain names with our law firm since this alert service detects not only domain names that are identical but also similar names. For companies having already subscribed to a worldwide domain name watch service with our law office, this service is of low interest as we are able to notify not only identical domains to a trademark but also similar ones.

But the TMCH is an efficient tool to register trademarks as domain names during the Sunrise periods. It will avoid providing supporting evidence of trademark rights for each Sunrise period. It therefore facilitates the registrations and limits the costs.

Besides, it seems difficult today to implement the naming strategy in place for costs reasons. Registering the whole domain name portfolio in 5 or 10 new gTLDs would dramatically increase budgets. For a domain name portfolio of 1000 domain in .com, the costs would roughly be of 15,000 Euros. The costs may be ten times this amount for a portfolio of identical domain name in 5 new gTLDs.

Registering only the blockbuster trademarks in the TMCH could put the company at risk on several grounds:

  • the opportunity to register domain names in line with the digital strategy at the time the new gTLDs are launched,
  • the registered trademarks in the TMCH may not be eligible in the chosen new gTLDs. Some of the new gTLDs have put in place restrictive rules such as geographical criteria or specific scope of business.

Finally, the process currently undertaken by ICANN leads to the introduction of an average of 20 new gTLDs  per week starting mid 2013 and for at least 18 months. Analysis and decision on a daily basis then becomes very difficult in the light of such a large number of new gTLDs.

Our advice: prepare as soon as possible

With regards to the issues at stake, the decision to be made and the strategy to put in place, it is urgent to prepare now even if the TMCH is not yet fully functional.

We offer two types of consulting including the following steps:

Right’s protection strategy

  1. Identify trademarks to protect
    1. selection of major trademarks ;
    2. selection of TLDs based on business activities and countriesinvolved.
  2. Prepare trademarks selected for inclusion in the TMCH
    1. pre-validation of trademarks and proofs of use to include in the TMCH;
    2. selecting domain name footprints for each mark.
  3. Manage trademarks in the TMCH
    1. registration of marks in the TMCH (trademarks, proofs of use, domain name footprints);
    2. monitoring and updating of renewals through our dedicated and secure tool Dreyfus IPweb;
    3. management of Sunrise codes for each trademark.

Digital strategy in the new gTLDs

This strategy is implemented in collaboration with specialists in e-marketing and e-commerce.

  1. Detailed analysis of the risks and opportunities
    1. identification with your teams of the opportunities and risks according to the current digital  strategy (domain name registration and use policy, SEO strategy especially on Google, online sales);
    2. analysis taking into account the factual elements : TLDs of interest, TLDs at risk, competitive environment.
  2. Establish a course of action taking into account the TMCH urgent deadlines
    1. analysis of trademarks and domain name portfolios;
    2. anticipate the evolution of the management strategy of domain names portfolios, SEO, ranking and prioritization;
    3. establishment of a new digital strategy and naming policy adapted to the objectives of the company.
  3. Deploy the strategy
    1. selection of TLDs;
    2. selection of domain names to register in the different phases (Sunrise, general availibility).
  4. Prepare trademarks selected for inclusion in the TMCH
    1. pre-validation of trademarks and proofs of uses to include in the TMCH;
    2. selecting domain name footprints for each mark.
  5. Manage trademarks in the TMCH
    1. registration of marks in the TMCH (trademarks, proofs of use, domain names footprints);
    2. monitoring and updating of renewals through our dedicated and secure tool Dreyfus IPweb;
    3. management of Sunrise codes for each trademark.

We remain at your disposal for any further information and to set up a meeting regarding this crucial matter.