ICANN Opens Trademark Clearing House

April 2013Alerts Intellectual Property Alert

On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) opened its Trademark Clearing House (TMCH), which allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new generic top-level domains (gTLDs). This registry is limited to “Trademark Holders” and “Trademark Agents.” Trademark Holders are individuals, entities and their designees (such as licensees or assignees) that desire to have their eligible trademark rights included in the TMCH, while Trademark Agents, like Fox Rothschild, are designated to act on behalf of Trademark Holders.

Registry with the TMCH protects brands in two ways, Sunrise Service and Trademark Claims Service. The sunrise period is a 30-day mandatory period before a new gTLDs is offered to the public. Under the Sunrise Service, Trademark Holders and Agents can take advantage of this exclusive period by registering a domain name that matches their trademark.

The Trademark Claims Service is a notification service that warns Trademark Holders and Agents of possible infringements. Specifically, a potential domain name registrant gets a warning notice when attempting to register a domain name that matches a trademark term listed in the TMCH. If, after receiving and accepting the notice, the domain name registrant continues to register the domain name, the Trademark Holder or Agent with the corresponding mark will receive notification of the domain name registration so they can take any appropriate action.

The cost for registering with the TMCH ranges from $95 to $150 per year. Registrations do need to be renewed on an annual basis in order to retain the benefits.

For more information about the Trademark Clearing House, please contact Christopher R. Kinkade , Flynn Barrison * or any member of Fox Rothschild’s Intellectual Property Department.

*Flynn Barrison serves as Fox Rothschild’s Director of Intellectual Property Services and is not admitted to practice law.