ICANN’s New Trademark Clearinghouse

By Eric Misterovich

Most of us have grown up with the word “.com” serving as a piece of our every day vernacular. We have seen that three-letter word placed upon highway billboards, we have had it stuck in our head due to lovably-annoying television jingles, and, most obviously, and we have felt comfortable with it occupying the small .25 inch search bar in the top corner of our Internet browser. Well, this is all about to change.

In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) announced it was to begin accepting applications for new generic top-level domains (gTLDs). So along with the familiar words of “.com,” “.net,” and “.org,” Internet users should be prepared to see some much more unfamiliar stems attached to their favorite webpages. But, it is not only we ISP subscribers who should fear this change. Particularly affected are holders of registered trademarks. In fact, it is our likely confusion that is likely to cause a panic in the hearts of individual and corporate trademark holders.

This is not the first time in history ICANN has completely altered the Internet business landscape either. During the “.com” bubble of the late 1990’s and early 2000’s many trademark holders were engaged in a vicious onslaught of litigation against “cybersquatters” – people and businesses that purposely register a trademarked name in order to gouge money from the true holder. ICANN took note of this event and is hoping to avoid another cybersquatting onslaught under the new gTLD registration process. Here is a look at ICANN’s Trademark Clearinghouse:

1. PRICING

A trademark holder can register with the Clearinghouse at rates of $150 for one year of protection, $435 for three years of protection, and $725 for five years of protection. These rates are priced per trademark; registration of a different trademark costs an additional $150 for a year, and so on. Additionally, mark holders may register up to ten variations of a single trademark without incurring any additional preliminary fees. The only extra cost associated with a variation is an extra $1 per year for each variation.

2. BENEFITS

Those registered with the Clearinghouse are entitled to two special benefits:

  1.    The Sunrise Period

 

  • Holders will be able to register their marks before a gTLD is launched (i.e. open to the public). This gives the holder a better chance at obtaining a second-level domain name under one of the newly introduced gTLDs.
  • Sunrise Period registrations are priced separately from the rates provided above regarding Trademark Clearinghouse registration. The cost for the Sunrise period registration is entirely subject to the individual registries in charge of the gTLDs. Moreover, the exact Sunrise Period also varies per registry.
  • If a holder registers now then they will be granted the favorable “Early Bird” registration grace period. This means that registration will not expire for a year after the end of any individuals TLDs sunrise period, compared to the normal expiration date assigned by the particular registry.
  1. Trademark Claims Service

 

  • The Clearinghouse also will offer a claims service that will serve as an alert system to those who register their marks. Warnings will be sent to trademark holders if another person attempts to register a website using their trademark.

Now it is important not to confuse the Clearinghouse with an actual route to full infringement protection. It is not an alternative to the court system. Instead the Clearinghouse is a way for holders to mitigate their losses by taking swift action against an infringer. It is advisable to pursue registration with the Clearinghouse as a way to gather strong supplementary evidence of infringement in case of possible litigation. With thousands of new gTLD applications having been received, it is obvious that cybersquatters will be active. Do not sleep on your rights.

For more information on the Trademark Clearinghouse I recommend viewing this minute-and-a-half long video explanation released by the Clearinghouse itself.

3. REGISTRATION

To register with the Clearinghouse, please follow the steps below:

 

A.    Visit Trademark-Clearinghouse.com and click the “Register Now” link

B.    Select either the trademark holder or trademark agent registration options

C.   Complete the online forms

  • Make sure to do this accurately
  • You will be charged a fee even if your registration is denied

D.   Provide proper documentation

  • You must have a legally recognized and registered mark

E.    The Clearinghouse will notify you when your trademark is accepted or rejected.

  • The time it takes to get back to you is dependent on how many trademarks you enter

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