From fiction in the Trademark Clearinghouse — Sorting facts

[Editors note: The Trademark Clearinghouse is a unique way for brand owners to protect themselves with the introduction of top level domain names. Jan Corstens, a partner at Deloitte (which operates the Trademark Clearinghouse), explains some of the common misconceptions regarding the service in this guest post.]

With upcoming drastic changes to the Internet, counting fresh generic Top Level Domains (gTLDs) such as .nyc and .boston to .book and .lol – it is crucial that brand owners understand how to effectively protect their intellectual property in the online space. The first step is properly navigating ICANN’s Trademark Clearinghouse (TMCH), which involves clearing the air on some of the top misconceptions surrounding its key features.

The TMCH is the central database of validated trademarks that helps defend brand owners against cybersquatting or other types of trademark infringement. Protection is offered in the form of two unique services – first is the Sunrise Period, which gives brand owners early access to proactively register domain names that match their trademarks ahead of wider public availability; second is the 90 day long Trademark Claims Services which alerts brand owners any time another individual or firm attempts to register domain names that as an match to their marks. Despite these two key offerings, since the launch of the TMCH in March there has been a fair amount of confusion surrounding the overall benefits.

Fiction: Brand owners must individually submit their trademarks with each TLD in order to be protected

Fact: While this may have been true in the past, the TMCH marks the first time ever that brand owners have access to a single, global repository of registered trademarks. This includes trademarks from almost all of the world’s jurisdictions and in multiple scripts, meaning widespread protection of intellectual property both domestically and internationally. Brand owners simply need to provide a detailed description of goods and services in the same language as on their trademark certificate. For U.S. trademarks, any detailed descriptions that appear between brackets denote that the trademark is no longer protected for those specific goods and services and ought to thus be omitted.

Fiction: Brand owners ought to wait to enter their trademarks into the TMCH

Fact: Advanced preparation is key to avoiding any unexpected challenges with registering a domain name during Sunrise. As such, brand owners are encouraged to submit their trademarks early to ensure that enough time is reserved for dealing with potential administrative corrections. Brand owners particularly interested in taking advantage of registrations during Sunrise Periods ought to be the most focused on early submissions, as delays could lead to the inability to register a domain names. Furthermore, a proof of use declaration of a trademark must be signed, dated and uploaded in the TMCH for participation, counting one sample of use of the trademark in the Sunrise Period.

Fiction: There Sunrise Period presents no real benefit for brand owners

Fact: The Sunrise Period is the easiest and most cost-effective way to secure trademarks as domain names ahead of competitors, since registered marks verified by the Clearinghouse get first choice of purchasing second-level domain names for fresh gTLDs ahead of the name is made available to the general public. Any intellectual property owner wishing to secure a domain name associated with their trademarks during this period must have submitted the relevant marks into the TMCH. Additionally, since the TMCH reviews marks from all jurisdictions as stated by the same requirements, use of the TMCH provides a consistent basis for accepting Sunrise registrations. It’s all critical to note that gTLD registries also have the ability to establish additional registration criteria, and may offer additional limited registration periods to establish additional opportunities or protections.

For an even further breakdown of the TMCH, view this video with a step-by-step guideline of its key features.