Trademark Clearinghouse Open For Business

With the arrival of over one thousand new Generic Top Level Domain Names (gTLDs) only months away, the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Trademark Clearinghouse is now accepting applications for trademark registration. The Clearinghouse is a tool intended to help trademark owners identify and prevent unauthorized use of registered trademarks in the second level of the new gTLD’s, for example, yourtrademark.newgtld.

Registering with the Clearinghouse provides trademark owners with Sunrise and Claims services. Sunrise services will provide trademark owners with a pre-launch period during which trademark owners can register corresponding domain names before each new gTLD is offered to the general public. Claims services begin after the expiration of Sunrise period. Trademark owners will receive alerts of attempts to register domain names that are identical to the owner’s marks. The party attempting to register the domain will likewise receive notification that the domain name incorporates a trademark registered with the Clearinghouse.

While the Clearinghouse provides a centralized option that can lessen the administrative burdens of having to monitor each new gTLD registry for infringements, there are limitations. First, the Clearinghouse services do not automatically block potentially infringing registrations. Trademark owners are left to resolve their disputes through other means. Second, the Clearinghouse services apply only to domain names that are exact matches to the verified marks. That is, the trademark owner will not receive an alerts for attempts to register confusingly similar—but not identical—domain names. Lastly, the Clearinghouse registration fee is $150 per mark, per year, with no discounts for registering multiple marks and only slight discounts for registering for 3 and 5 year periods.

The Trademark Clearinghouse will not prevent trademark infringement and misuse in new gTLDs. It could, however, be part of an overall trademark policing and watching strategy, as the Clearinghouse affords trademark owners priority to register new gTLD domains corresponding to their trademarks and monitors attempts to register domains identical to their trademarks. As part of our trademark policing and watching program implementation and counseling services, RatnerPrestia can help you weigh whether registering with the Clearinghouse makes sense for your marks.

If you are interested in trademark policing and watching or would like to learn more about the Trademark Clearinghouse, please contact John W. McGlynn.