March 2013 Issue

gTLD Update and Upcoming Deadlines

The Trademark Clearinghouse, which is part of the new gTLD program, will start accepting trademark filings in late March 2013.  This update provides a brief overview to trademark owners who may have received solicitations urging registration of marks with the Clearinghouse when it opens.

Registering a trademark with the Clearinghouse will allow trademark owners to submit applications for identical domain names under the new gTLDs during “Sunrise Periods.”  Sunrise Periods are brief periods of time when the gTLD registry will allow trademark owners to register domain names before the general public can do so.  The new gTLD registry will set its own rules for its Sunrise Period, such as what domain names may be registered under the particular gTLD, the costs of such registrations, and the time frames.

Registering a trademark with the Trademark Clearinghouse will also generate (1) a notice to third parties that apply for a domain name identical to the mark, and (2) notices to the trademark owner when a domain name is registered that is identical to the mark.  The time period during which these notices will be provided is limited to the first sixty days that a gTLD is operational.  We note that the notices to the trademark owner of newly registered domain names may duplicate the information clients already receive via watch notices.

The current cost to register a trademark with the Trademark Clearinghouse is $150/trademark/year. 

ICANN has not approved any new gTLDs yet.  The first gTLDs are not expected to go live until at least 2014, and it is expected that the first round of operational gTLDs will be foreign-language gTLDs.

Many of our clients have received alerts recommending immediate registration of key trademarks with the Clearinghouse.  However, any potential benefit to early registration has not been outlined by either ICANN or the Trademark Clearinghouse.   In addition, while the Clearinghouse is being advertised as a “trademark protection” program, registering with the Clearinghouse will not guarantee that the trademark owner is first in line to register a particular domain name, and will not prevent third parties from registering domain names comprised of or containing the mark.

After ICANN announces the operational gTLDs, we recommend that clients consider registering key marks with the Trademark Clearinghouse if there is a business need for the new domain name(s) and/or if registering such domain names is part of an overall enforcement strategy.

We are keeping apprised of ICANN’s new gTLD announcements and the Clearinghouse program, and will distribute further information as it becomes available.

The Trademark Clearinghouse’s website is located at http://trademark-clearinghouse.com/.