Should I Participate in the gTLD Trademark Clearinghouse?
ICANN’s new generic top level domain program will open up its Trademark Clearinghouse database on March 26th. Trademark lawyers around the world are rushing to clients to help them enter their trademarks into this most important data base. But, is that really the right approach?
ICANN has worked hard in its new gTLD program to provide for greater brand protection – it certainly offers more than the way it was in the 1990s when .com boomed and cybersquatters emerged. Most trademark lawyers say it’s still not enough and continue to lobby for expanding the brand protection program. Regardless, the program is moving forward and Deloitte and IBM are the vendors of choice to run the Trademark Clearinghouse. So, should you participate? This is really the key question. The cost is about $150 per trademark, with some cost savings for volume taking it down to around $90 per trademark for very large portfolios. So, while it’s manageable, it could be a large amount if you have thousands of brands to enter into the system. What’s the benefit? The primary benefit is that you will be able to participate in sunrise periods and secure your brand in new generic top level domains that you want. And, once the Uniform Rapid Suspension system is up and running, you will be notified if someone tries to register your trademark in any of the thousands of new generic top level domains. For a price of around $300, then, you will be able to take down that site before it even gets up and running. Sounds great – right? The only problem is that it’s only an exact match – it doesn’t included typo or yourbrandsucks.anything. And, if more than one company has trademark rights in the same name, then Sunrise goes to first to register and URS does nothing for you because they have the same trademark rights you do. While continued debate is underway to try to expand URS to up to 50 typo variations of famous brands, often subject to typosquatting, that policy is still yet to be resolved. So, why not jump in? In all likelihood, entering some of your trademarks into the system is likely the right thing to do. But, hand in hand, with entering trademarks is determining which sunrise periods to participate in and that requires strategic thinking in conjunction with marketing and digital strategists. Additionally, if you house thousands of trademarks, you will want to audit and assess which ones are really worth the investment (i.e. which ones do you use and need to protect from misappropriation in an expanding internet environment). Logistically, you also need to make sure your paperwork is in order. The purpose of the trademark clearinghouse is to verify that the owner of the mark enters in the trademark and that it is in use. This means if you haven’t cleaned up any assignments from one entity to the other or don’t readily have your certifications available, you’ll want to get that paperwork in order to streamline the administrative process of entering in your trademarks. When will this matter? The Trademark Clearinghouse is opening up March 26th, but for most brands, they won’t need to participate in a Sunrise period until later this year. The first Sunrise periods will be the internationalized domain names (in Arabic, Chinese, Japanese, etc) and the first generic terms will likely be end of this year and into 2014. So, there’s really no rush, but now is the time to start thinking about the return on investment, which sunrise periods are important to you and how you protect your brand in the expanding internet environment. More importantly, it’s also a good time to assess how many .coms you are sitting on and whether you will continue to need those based upon how the URS and TMC system work in tandem with monitoring. While it’s not a perfect system, it is a start to helping brands protect themselves on the internet. As domain names remain a critical digital asset to all companies, the cost to protect them should be seen as an important investment in brand equity, just like any other marketing related function intended to bolster the brand.