• UPDATE Protecting Your Brands In The New gTLD Landscape
  • March 14, 2013 | Author: Tracy L. Deutmeyer
  • Law Firm: McGrath North Mullin & Kratz, PC LLO - Omaha Office
  • We previously alerted you to the approaching expansion of the Internet domain name system, and certain mechanisms that will be available to protect your brands in this new landscape.

    The most important of those mechanisms is the Trademark Clearinghouse. You can begin registering your company’s eligible marks with the Trademark Clearinghouse on March 26, 2013 at http://trademark-clearinghouse.com.

    A Refresher: Background on the new gTLDs

    The Internet domain space is divided into top-level domains (each a "TLD"). The TLD is the part of the name to the right of the dot. Each TLD is subdivided into second-level domains, and so on. For example, as to mcgrathnorth.com, the TLD is .com, and "mcgrathnorth" is the second-level domain.

    There are different types of TLDs. A gTLD is a generic TLD. Currently, there are 22 gTLDs, including .com, .net and .org. As early as summer 2013, that will begin to change. At that time, the first new gTLDs will go “live” on the Internet. (There also are country code TLDs ("ccTLD"), including .us, .ca and .mx. ccTLDs are not part of the new program we discuss in this email.)

    In this email, we tell you more about how to protect your brand name to the left of the dot of the new gTLDs.

    The most important way to protect your brands is by registering your organization’s marks with the Trademark Clearinghouse. The Clearinghouse will allow brand owners to submit their trademark data into one central database, prior to and during the launch of the new gTLDs. There will be only one Trademark Clearinghouse for all new gTLDs.

    Any trademark holder, private person or company can submit their eligible mark to the Clearinghouse.

    What marks can be registered with the Trademark Clearinghouse?

    Marks eligible for inclusion in the Clearinghouse are the following:

    1. Nationally or regionally registered marks (such as a mark registered on the Principal Register of the USPTO at the time it is submitted to the Clearinghouse);
    2. Court validated marks, namely, marks that have been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks; and
    3. Marks protected by statute or treaty.

    However, the following marks are not eligible under (1), (2) or (3) above:

    a. Marks that do not contain any letters, words, numerals or Domain Name System (“DNS”)-valid characters;
    b. Marks that include a top-level extension, such as mcgrathnorth.com, or .mcgrathnorth; and
    c. Marks that start with or contain a “dot.”

    Please know the Clearinghouse may accept and verify other types of marks upon the request of registries. If other types of marks are accepted at a registry’s request, additional guidelines concerning these marks will be published at http://trademark-clearinghouse.com.

    What are the benefits to registering marks with the Trademark Clearinghouse?

    1. Sunrise: “Sunrise” is a pre-launch period of at least 30 days that provides trademark holders the opportunity to register domain names in a gTLD before registration is generally available to the public. HOWEVER, in order to be eligible for Sunrise services, trademark holders of registered marks must submit proof of use to the Clearinghouse, and such proof of use must be verified by the Clearinghouse. “Proof of use” consists of two things, namely, a signed declaration of use and a single sample of proof of use. If your organization’s proof of use is verified, the Clearinghouse will notify you whenever a Sunrise period of a new gTLD is scheduled.
    2. Trademark Claims: All validated trademark records in the Clearinghouse are eligible for the Trademark Claims service. The Trademark Claims service follows the Sunrise period. It is a notification service—mandated for all new gTLDs—to warn both domain name registrants as well as trademark holders of possible infringements. It will work like this: (a) a potential domain name registrant gets a real-time warning notice when attempting to register a domain name that matches a trademark term in the Clearinghouse; and (b) if, after receiving and accepting the notice, the domain name registrant does continue to register the domain name, the trademark holder with a corresponding mark will receive notification of the domain name registration, so they can take any appropriate action if they would like to do so. Keep in mind that the notice to the potential domain name registrant will not block the registration of the domain name; it simply alerts the potential registrant that the part of the domain name to the left of the dot matches a trademark term in the Clearinghouse.

    Inclusion in the Clearinghouse is not proof of any right, nor does it create any legal rights. It simply is a database of verified rights information.

    What are the fees for registering marks with the Trademark Clearinghouse?

    One trademark registration in the Clearinghouse is $150 for one year; $435 for three years; and $725 for five years, under the Basic Fee Structure. Under the Basic Fee Structure, payment must be made by credit card. For security purposes, payments by credit card are limited to 10 trademark registrations per credit card.

    There is one other fee structure called the Advanced Fee Structure. The Advanced Fee Structure is only available for users with a prepayment account. To establish a prepayment account, users must submit a minimum initial deposit of $15,000.

    What can you do to prepare for March 26?

    1. Decide what marks to register.
    2. Decide who at your organization will register the marks.
    3. Collect the required information.

    In general, the following information must be submitted to the Clearinghouse in order to verify a record that relates to a U.S. registered mark:

    a. Name of the mark;
    b. Registration number;
    c. Registration date;
    d. Jurisdiction (national or regional territory in which the registered mark is protected);
    e. Description of goods and services class (this is the International Class);
    f. Detailed description of goods and services (exact description of the goods and services for which a registered mark is protected);
    g. Status of the trademark holder (capacity of the trademark holder submitting the record, i.e., the owner/licensee/assignee);
    h. Name of organization or full name of individual if an individual is the trademark holder;
    i. Address of the trademark holder (i.e., street, city, postal code, country of residence); and
    j. Contact information of trademark holder (i.e., phone and fax number of trademark holder).
    k If opting in for the sunrise services, a signed declaration of use and single sample proof of use. (The declaration of use can be downloaded from http://trademark-clearinghouse.com. Completed documents must be uploaded into the Clearinghouse interface.)
    l. If the trademark holder has indicated it/he/she is an assignee or licensee of the trademark and the assignment or license of the trademark, as applicable, has not yet been recorded by the trademark office, then an assignee declaration or licensee declaration should be submitted. (The declaration of use can be downloaded from http://trademark-clearinghouse.com. Completed documents must be uploaded into the Clearinghouse interface.)

    Will McGrath North register marks in the Trademark Clearinghouse for you?

    No. In order for trademark agents like McGrath North to register marks in the Clearinghouse, they must set up a prepayment account with a minimum deposit of $15,000. We have made the business decision to not set up such an account.