After years of preparation, the Internet Corporation for Assigned Names and Numbers (ICANN) recently announced that it is prepared to introduce up to 1,300 new generic top-level domains (gTLDs) beginning in the second half of 2013. The new gTLDs will provide mark owners, domain name squatters and others, millions of opportunities to register new domain names and the new gTLDs are expected to influence mark owners’ marketing and enforcement strategies, on-line search engine technology and how companies do business on the Internet.

To help protect brand-owners’ interests against cyber piracy, ICANN established an independently operated “Trademark Clearinghouse” (TMCH) that allows mark owners to record their marks in a global database prior to the introduction of the new gTLDs. Beginning March 26, 2013 mark owners may apply for recordation of their marks in the TMCH database. Although there is no announced date for the TMCH recordation window to close, it is recommended that interested mark owners apply for recordation with the TMCH prior to the “Sunrise Period” launch of the first new gTLD, which is currently expected in three to five months.

What is the TMCH and What Are Its Benefits?

The TMCH will not provide substantive rights but it can provide significant procedural benefits for mark owners seeking to register domain names with new gTLDs and/or protect their marks against squatters during the new gTLD registration procedures. Recordation of a mark in the TMCH database provides two main benefits for mark owners:

  1. Enables Sunrise Applications. Recordation of a mark with the TMCH will allow a mark owner to register domains names with new gTLDs during the “Sunrise Period” for each such new gTLD. All new gTLDs must provide a limited pre-registration Sunrise Period of at least thirty (30) days to allow mark owners who have recorded their mark with the TMCH the option to register the domain name that is an exact (or in limited cases, near exact) match for their mark. While recordation with the TMCH does not afford a mark owner with automatic protection in any new gTLD, it is a prerequisite if a mark owner wishes to make any applications for second-level domains during a Sunrise Period.
  2. Notifications of Possible Mark Infringement. After expiration of a Sunrise Period, a new gTLD will typically open up for general registration of second-level domains to the public. During a limited time period after expiration of a Sunrise Period (likely to be at least sixty (60) days, possibly longer), mark owners having marks recorded with TMCH may obtain additional “Trademark Claims” services. Provided a mark owner records a mark with the TMCH, during the Trademark Claims period, all new gTLD registries must: (a) warn domain name registrants of possible infringements prior to consummation of registration; and (b) upon actual registration, notify relevant mark owners of the possibly infringing domain name registration, so that trademark owners can choose to pursue various enforcement mechanisms. There is no additional fee for the Trademark Claims notification services.

In addition to Sunrise Period services and Trademark Claims services, prospective registries and registrars for certain new proposed gTLDs have announced they are likely to provide additional benefits, offers and further registry services available only to mark owners registered with the TMCH.

What is Required to Apply for Recordation With the TMCH, and What Are the Costs?

Inclusion in the TMCH is voluntary and carries significant benefits for mark owners. Four types of marks are eligible for entry and recordation with the TMCH: (i) nationally or regionally registered word marks from all jurisdictions; (ii) court validated word marks; (iii) marks protected by statute or treaty; and (iv) upon the request of gTLD registries, other marks that constitute intellectual property may be eligible for recordation.

Pending trademark applications and common law rights may not be recorded with the TMCH.

A Trademark Holder may record with the TMCH directly, or through a Trademark Agent, such as an ICANN authorized domain name management provider. It is anticipated that many major domain name service providers (including many registrars and domain management companies) will offer Trademark Agent services to assist mark owners in navigating the TMCH, Sunrise Period and Trademark Claims processes. To participate, a mark owner must provide specific information to identify its registered trademarks, the respective jurisdiction, goods/services, and other relevant details, which are then verified by the TMCH provider. To participate in the Sunrise Period, a mark owner is also required to submit a signed declaration and proof of use of its mark, which may include labels, tags, advertisements, website screenshots, etc.

Registration fees to participate in the TMCH are estimated at $150 per year, per trademark record, with multi-year options and bulk registration discounts available.

Complete registration rules for the TMCH are available at: http://trademark-clearinghouse.com

A list of the proposed new gTLDs is available at: http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en