With all of the news about the new generic top-level domains (gTLDs), where do trademark owners even start? The Internet Corporation for Assigned Names and Numbers (ICANN) is currently reviewing over 1,000 applications for new generic top-level domains, such as “.food,” “.bank,” “.app,” “.movie,” “.wine,” etc. The first new gTLDs are expected to go live as early as June 2013. With many new Internet extensions to rival the current “.com,” “.net,” and “.org,” top level domains, we expect to see major changes in the way customers find information on the Internet and how companies will want to structure their online presence.
ICANN has set up a Trademark Clearinghouse (TMCH) to be a centralized repository for registered trademarks. The TMCH’s main purpose is to provide a database of information to assist the new gTLD registries with their Sunrise Registration and Trademark Claims services, not to provide additional protection for brand owners or trademark owners. The TMCH’s notification and limited watch services are intended to facilitate the process of setting up new gTLD registries and to help them meet ICANN standards of service.
Trademark owners can register with the TMCH only marks that have been nationally or multi-nationally registered, validated through court proceedings, or protected by statute or treaty. There are some limitations regarding what kinds of marks can be registered. For example, design marks cannot be registered with the TMCH, nor can marks that include any existing top-level domain names – “.com,” “.org,” and “.net.”
The new gTLD registries will be able to access the TMCH’s database of registered marks and domain names in order to provide two services to trademark owners: 1) notice of its Sunrise Registration Periods whereby owners can apply for second-level domains before the general public; and 2) a limited-time notification of any applications that have been submitted to that gTLD to register exact matches of their mark or their associated domain names. These are the two main advantages of registering with the TMCH. A new gTLD operator will provide 30-day notice of the opening of its Sunrise Registration Period, which will be open for at least 30 days before the general public will have an opportunity to register. In order to receive notification of the Sunrise Registration Periods, a brand owner will need to submit a one-time proof of use of the mark to the TMCH. If a mark owner misses the Sunrise Registration Period, he or she will still have the opportunity to register their mark once the new gTLD registry is open to the public. If there is a concern about cybersquatters registering your mark with particular gTLDs, however, registration with the TMCH is the only way to get notice of the Sunrise Registration Periods.
Registration with the TMCH will not register your mark or guarantee your ability to register your mark with any gTLDs, even during their Sunrise Registration Period. Each new registry is required to have a Sunrise Dispute Resolution Policy that will allow challenges to registrations. Each gTLD registry may implement its own process for determining registration among competing trademark owners, such as an auction or other bidding process.
Even if you have registered your mark, the TMCH does not block others from registering your mark with any gTLD. The TMCH will only provide a mark owner with notice of another person submitting an application to register an exact match for the first 90 days from a gTLD’s opening. In addition to the registered mark, a brand owner may also submit up to ten other domain names for exact match that have been acquired through infringement actions. For example, if Graham & Dunn had obtained transfer of the domain “grahhamdunn.com,” through a URDP action, we could submit “grahhamdunn” as part of our clearinghouse record, and we would receive notification if someone tried to register that particular misleading misspelling of Graham & Dunn’s mark. Again, the TMCH will assist the gTLD registries with providing this very limited watch for a short period of time. If you are concerned about some of the new gTLDs that will be launching soon, registration with the TMCH can provide some security while you evaluate and implement an external watch service. Trademark owners will have the use of existing enforcement procedures, such as the Uniform Domain Name Resolution Procedure (UDRP) and the new Uniform Rapid Suspension (URS) procedure. We will have more information about these dispute resolution procedures in our next Cyber-Graham.
The registration fee for the TMCH is $150 for a year, $435 for three years, or $725 for five years. This is the filing fee only, and does not include any legal assistance, help with preparing an application, or submitting proof of use. Again, this is only for registration with the TMCH, and not with any gTLDs. Each gTLD can set its own pricing. If you want to register with the TMCH, the best time to sign up will depend on which gTLDs you may want to register, and when they are scheduled to go live. For example, if we registered “grahamdunn” with the TMCH now for one year, with the goal of registering the domain name “grahamdunn.law,” but the gTLD “.law” did not go live until the end of 2014, we would be stuck having to renew our TMCH registration for another year. The TMCH registration clock will start when the first new gTLD is released, which will be as early as next month.
If you are thinking about whether or not to register your mark with the TMCH, here are a couple of initial things to think about:
- Take a look at the new gTLDs that are on the list (listed by priority).
- Consider whether you would want to immediately register any of your marks with particular gTLDs.
If there are new gTLDs that contain words that are part of your core brand, you may want to register your mark with that gTLD early, before another person tries to register a mark that is similar to your brand. For example, if there were a new gTLD that was “.dunn,” and we had a mark for “graham,” we might want to register the domain “graham.dunn,” and register it early. Otherwise we might consider registering the mark “grahamdunn” or “grahamanddunn” with gTLDs that are associated with our goods or services, such as “.law,” “.legal,” “.attorney,” “.partners,” or “.associates.”
Once you have determined what combination of your marks and new gTLDs, if any, make sense to register, then you are in a much better position to determine whether or not registration with the TMCH is something you need to do now, or if you might be better served by waiting to see which domains get the most traffic, and what areas you might be most concerned about infringement. Going back to our earlier example, we may be tempted to register “graham” with a hypothetical new gTLD “.dunn,” but we may later find out that “.dunn” gets absolutely no traffic and the potential for infringement is minimal.
Regardless of whether or not you choose to register with the TMCH or with any of the new gTLDs, it would be to your advantage to enlist a good watch service to alert you to registrations that may be infringing on your mark, because the TMCH only provides notice of registration of exact matches, and only for the first 90 days of a new gTLD.
So is registering with the TMCH a good choice for your business? The TMCH is just another tool that is available for mark owners and it may be a good strategy to register those marks that contain your core brands. It would be very useful in many cases, but it may not be imperative to register every mark. The onset of the new gTLDs and the TMCH is a great time to take a good look the advantages and disadvantages and formulate a cost-effective strategy to use them to your best advantage.
