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Launch Date for Trademark Clearinghouse Revealed by ICANN




by:
Greenberg Traurig LLP - Miami Office

 
March 7, 2013

Previously published on March 1, 2013

Businesses eligible to register and protect intellectual property across all new Top-Level Domains beginning March 26, 2013

On February 25, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that the Trademark Clearinghouse (TMCH) will open for registrations starting March 26, 2013. The TMCH is a single database of validated trademarks, set up for the purpose of protecting trademark rights in ICANN’s new gTLD program. ICANN is positioning the TMCH as a one-stop foundation for safeguarding trademarks in domain names across the multiple new gTLDs that are anticipated to go live in the summer of 2013.

The TMCH is the centralized repository of validated trademarks for the purpose of protecting brands in ICANN’s new gTLD program. The Trademark Clearinghouse consists of two primary functions: the authentication of contact information and verification of Trademark Records and the storage of such Trademark Records in a database in order to provide information to the new gTLD registries to support the providing of Notifications of Registered Name (NORN).

Dual Protection

ICANN describes TMCH as the cornerstone of the rights protection mechanisms built into ICANN’s new gTLD program. Deloitte will operate TMCH and will be tasked to perform the trademark verification services. IBM will serve as the database provider. The TMCH is open to any holder of eligible trademarks whether a private individual or company. The TMCH is set-up to be able to provide brand protection through two mechanisms: A Sunrise Service and a Trademark Claims Service.

  • The Sunrise Service supports a limited pre-registration period during which trademark owners can register the domain name that matches their trademark. A Sunrise Period is mandatory for all new gTLDs and having a validated trademark entry in the Trademark Clearinghouse is the minimum requirement to participate in a new gTLD Sunrise Period.

  • The Trademark Claims service supports a second limited period following the Sunrise Period. It is a notification service — mandated by ICANN for all new gTLDs — to warn both domain name registrants as well as trademark holders of possible infringements. A prospective domain name registrant will receive a warning notice that the domain name matches a trademark on record with the TMCH. If the registrant continues to register the domain name, the trademark holder will receive notification of the domain name registration, allowing them to take any appropriate action.

Wide Range of Eligible Trademarks and Fees

The scope of rights eligible for entry in the TMCH includes nationally or regionally registered trademarks from all jurisdictions (EU, US, AIPO, ARIPO), any mark validated through a court of law or other judicial proceeding and marks protected by a statute or a treaty in effect before or on June 3, 2008.

It is anticipated that TMCH fees will range from US$95 to US$150 per year per trademark record, depending on the number of trademarks submitted and their registration period in the Trademark Clearinghouse. Trademark owners who are interested with registering with the TMCH can contact their usual domain name registration provider, any agent offering related services, or even go directly to the Trademark Clearinghouse at www.trademark-clearinghouse.com.

Application String Objection Filing Period

The objection-filing period for newly applied-for gTLDs opened on June 13, 2012. The filing deadline for objections is March 13, 2013. An objection will be considered by a panel of qualified experts in the relevant subject area. Anyone with standing, legitimate grounds to file a formal objection can do so by filing with one of the designated Dispute Resolution Service Providers (DRSP) on any one of four objection grounds:

  • String Confusion - DRSP: The International Centre for Dispute Resolution

  • Legal Rights - DRSP: World Intellectual Property Organization

  • Limited Public Interest - DRSP: The International Center of Expertise of the International Chamber of Commerce

  • Community - DRSP: The International Center of Expertise of the International Chamber of Commerce

All objections must be filed directly with the selected DRSP, and not with ICANN. Objection filing fees will range from $2,000 to $4,000 for String Confusion and Legal Rights objections, and 5,000 Euros for ICE Limited Public Interest or Community objections. In addition to filing fees, case administration fees will range from $4,800 to $20,000 depending on the number of expert panelists elected to hear the matter.

Go to http://newgtlds.icann.org/en/announcements-and-media/announcement-25feb13-en for more information.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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