What is the Trademark Clearinghouse? What Do I Need? What’s the Cost?
The trademark clearinghouse for new gTLDs is a one-stop database that will afford all brands and trademark owners the ability to protect, in some capacity, their brand names in each of the new top level domains set to be released by the middle of this year. It will consist of a trademark database for the verification and maintenance of trademark data from all jurisdictions. Once verified, those trademark records will be used for the benefit of brand owners to participate in the sunrise and trademark claims notification services for the new gTLD launches. This will allow them to both prevent others from registering their brands domain names and will notify them when another has in fact completed such a registration. To date, brands only had to protect the rights across the few top level domains currently in existence, that is .com, .net, .biz, etc. Now they must evaluate and protect across an expanded domain name system that could amount to over 900 new top level domains, which the trademark clearinghouse will facilitate.
Scheduled to begin on March 26, 2013, when trademark holders will be able to begin submitting their marks, the clearinghouse is recommended for all brands, both applicants and non-applicants alike. As a brand, your objective should be to submit any trademarks that you would like to proactively protect in the sunrise phase of the new gTLD launch for each registry. Additionally, trademark owners will benefit from the claims notification service whereby the trademark clearinghouse will notify, for a set time following launch, trademark holders of third party domain name registrations of their submitted marks.
In preparation for the opening of the clearinghouse, trademark owner should be aware that the trademark clearinghouse will accept 3 types of marks for registration:
Nationally or regionally registered trademarks on the principal registry from all jurisdictions
Court-validated word marks
Word marks protected by a statute or treaty
Additionally, at its discretion, the clearinghouse may also accept other types of marks that constitute intellectual property at the request of a registry.
In addition to the fees outlined below, trademark owners (or their designated agents) will be required to submit specified materials with their registrations. For example, for registered trademarks, mark holders will be required to submit, among other things:
– the name of the mark
– the registration number
– the registration date
– the jurisdiction
– a detailed description of the goods/services (corresponding with the class itself and its description)
– The status, name, address and contact information of trademark holder
Additionally, all participants wishing to register domains during the sunrise period will also be required to submit a verification of proof of use of the mark that they are registering. The proof of use must contain both:
A signed declaration of use, and
A sample or “proof” of use
The signed declaration of use is provided by the clearinghouse on its website and must be executed by the registered trademark owner. The sample of use must evidence that the trademark holder has communicated to consumers in a way that those consumers can distinguish it from other providers of goods or services. The proof of use requirement is similar to the use in commerce requirement under U.S. trademark law. Examples of acceptable proofs of use are product labels/tags/containers or advertising/marketing materials for goods or services.
As for costs, trademark registration in the clearinghouse will cost $150 USD per mark per year, with discounted rates for 3-year and 5-year registrations.
As you can see there is considerable preparation required to use the trademark clearinghouse effectively. For that reason, we would recommend all brand owners to begin thinking about clearinghouse strategy sooner rather than later because, before you know it, it will be time to act.