Protecting your trademarks on-line
Do I need to register my trademark with the Trademark Clearinghouse?
ICANN has adopted the use of the "Trademark Clearinghouse" during the launch of the new generic domain names (gTLDs). This will enable trademark holders to protect their brand(s) across all the new domain endings during the gTLD expansion in a single action.
What is the Trademark Clearinghouse?
The Trademark Clearing House is an independent body set up by ICANN and Deloites, based in Bruxelles. They operate a central repository for authenticated registered trademarks. Once a trademark is authenticated, the Trademark Clearing House offers trademark owners a simplified protection mechanism during the new gTLD launch phases.
The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN's new gTLD program. It allows brand owners to submit their trademark data into one centralised database, prior to and during the launch of all the new gTLDs. Simply put: The TMCH is a one-stop-solution for protecting your brand in the new gTLD era.
As authentication with the the trademark clearing house is a prerequisite for the participation in the Sunrise periods of all the new gTLDs, and Registries for the new gTLD's will give the owners of authenticated trademarks the opportunity to register their name in a Sunrise period of at least 30 days, the answer has to be YES.
In addition, once your trademark has been authenticated you will have use of the Trademark Claims Service. If any one attempts to register a domain which corresponds to an authenticated trademark, a warning will be sent to you, the trademark holder. The holder then has 90 days to Claim his brand.
The TMCH is designed to save trademark/brand owners time and money
BB Online is a registered agent for the Trademark Clearinghouse and can assist you during this gTLD expansion.
The Sunrise Services
Sunrise is an initial period of at least 30 days before domain names are offered to the general public. Trademark owners can take advantage of the Sunrise to safeguard the domain name that matches their trademark. A Sunrise Period is mandatory for all new gTLDs and having a validated trademark entry in the Trademark Clearinghouse is the minimum requirement to participate in this limited pre-registration period.
Trademark holders will have ample time to register their IP rights in advance with BB Online.
After verification, these rights are centrally stored and can be used to register the corresponding domain name in any new gTLD, before general registrations open. As the launch of these new domains will be over a 3 year period, this process will greatly reduce the administrative burden and associated costs for trademark holders.
The Trademark Claims service follows the Sunrise. It is a notification service mandated by ICANN for all new gTLDs — to warn both domain name regisrants as well as trademark holders of possible infringements. The service works as follows:
- A potential domain name registrant will get a warning notice when attempting to register a domain name that matches a trademark term in the TMCH.
- 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 wish to do so.