Trademark Clearinghouse Launch March 26, 2013

The Internet Corporation for Assigned Names and Numbers (ICANN) has the responsibility for administration of domain names. ICANN developed a program for the expansion of new generic top level domain names (new gTLDs) beyond the standard .com, .org, .net, .edu and .biz. Applications were accepted through April 2012.
ICANN has now announced that it plans to launch the first of the new gTLD registries in the summer of 2013. In association with the launch, ICANN developed a Trademark Clearinghouse as a protection mechanism for trademark owners. The Clearinghouse is designed to help address potential conflicts between trademarks and second-level domains. For example, Nike.sneakers (Nike is the second-level domain and .sneakers is the new gTLD).

The Clearinghouse is intended to function as a central trademark repository permitting brand owners to “validate” their marks. The Trademark Clearinghouse will begin accepting submissions on March 26, 2013.

Submissions to the Trademark Clearinghouse will:

1. Enable brand owners to register their trademarks as domain names during the “Sunrise Periods” (early registration periods). Before new domain names can be offered to the public, brand owners will be permitted to register or block their trademarks under each new domain extension during the sunrise period. For example, if the gTLD “.sneakers” was granted, Nike will have the opportunity to reserve “nike.sneakers” during the sunrise period. However, brand owners have to record their trademarks with the Clearinghouse in order to register their trademarks as domain names during the sunrise period. If brand owners have not validated their marks with the Clearinghouse they will not be eligible to register domain names during the sunrise periods.

2. Provide notifications to brand owners if a domain name containing an identical match to their recorded trademark(s) is registered by a third party during the first 60/90 days of “general availability” registration. It is important to note that “identical match” means a domain name that contains an identical match to the recorded trademark. If the recorded trademark is ňň, than the identical match is ňň and not nn. Moreover, a domain name containing a plural version of the recorded trademark is not considered to be an identical match.

3. Provide notifications to third parties that attempt to register a domain name which includes an identical match to a brand owners’ recorded trademark. If the third party proceeds to register the domain name the brand owner will be alerted (as discussed in 2 above).

The Trademark Clearinghouse must obtain sufficient information to confirm the validity of the submitted trademarks. The following information must be submitted to the Trademark Clearinghouse: Name of mark, registration number, registration date, application number, application date, jurisdiction, expiration date, description of goods and services, status of trademark holder, trademark holder name, address and contact information. Moreover, the Trademark Clearinghouse may request additional information such as corporate documents (article of incorporation), licensee declaration, assignee declaration, copy of trademark certificate of registration, copy of renewal requests, etc. In addition, brand owners who intend to participate in “sunrise periods” will be required to submit a declaration of use and a sample of proof of use.

The Trademark Clearinghouse will charge $150.00 to register a trademark with the Clearinghouse for one year.

We recommend recording important trademarks, and service marks with the Trademark Clearinghouse. Abelman, Frayne & Schwab is available to assist with these matters and submit the required information to the Clearinghouse on behalf of the trademark owners. Please contact us with your inquiries.

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