Top Level Domain Names

The Trademark Clearinghouse is Open: Should You Register?

.biz, .co, .xxx... Every time a new generic Top Level Domain (gTLD) has become available, trademark owners have faced the daunting task of engaging with the new registry’s idiosyncratic process for protecting their brands from cybersquatting – and paying the fees to register or block key domains in that gTLD. With over a dozen new gTLDs open for registration in November-December 2013, and hundreds more expected to launch in 2014 (Launch Status), many trademark owners will incur unprecedented costs for defensive domain registrations.

This time, however, trademark owners can simplify the process of submitting proof of ownership of their marks by pre-registering them with the newly created Trademark Clearinghouse. While this pre-registration is merely the first step in the process, it is now time to develop your strategy for how best to make that filing.

Why Register in the Trademark Clearinghouse?

The Clearinghouse provides access to three key processes for protecting your marks in the new gTLDs.

“Sunrise” Registrations. Each registry will allow mark owners with verified trademark claims to register a corresponding domain name before opening it up to the general public. So if you own mytrademark you could register mytrademark.newtld. You are not required to register a domain during the sunrise period, but if the registry offers favorable pricing relative to the likely cost of a dispute, you may wish to take advantage of this option.

“Claims” Notification. Each registry will notify domain name applicants of any verified trademark claims to matching trademarks in the Clearinghouse. So if you didn't register mytrademark.newtld and someone else applies for it, they will be advised of your verified mytrademark mark. If the applicant proceeds with the registration, the registry will notify the mark owner. Registries are only required to offer notifications for the first 90 days, but some may continue the service for a longer period.

“Uniform Rapid Suspension” (URS). Domains registered in the new gTLDs are subject to a streamlined low-cost arbitration process if the trademark owner can show that the domain is identical or confusingly similar to its mark, that the domain was registered and is used in bad faith, and that the registrant has no legitimate right or interest in the domain. Trademark owners can move more quickly and reduce the costs of preparing their URS filings by pre-registering their marks in the Clearinghouse.

Donuts Inc., which is expected to operate over 200 domains, is offering Clearinghouse registrants an additional option: the ability to block most new registrations matching their marks in Donuts-operated registries.

Because it will take several weeks for the Clearinghouse to process applications, companies should consider filing now so they are in the best position to take advantage of these protections.

Marks Eligible for Registration in the Trademark Clearinghouse

Your brands that consist solely or predominantly of text can be listed in the Clearinghouse if they meet one of the following criteria:

1. Currently registered as a trademark at a national (e.g., United States) or regional (e.g., European Community Trade Mark) level. State-level registrations will not be accepted.
2. Validated by a court or other judicial proceeding, for example, as an established common law mark or well-known trademark.
3. Currently protected by a statute or treaty (e.g., various Olympics marks).

There are some exceptions, based on the structure of domain names. Marks that contain a period, or certain characters that cannot be represented in a domain name, are not eligible for the Clearinghouse. The Clearinghouse also will not accept marks that contain a mixture of character sets (such as a mark in both English and Japanese).

If a mark has been registered in multiple jurisdictions, there may be an advantage to submitting the registration with the broadest description of goods and services, rather your home country registration. We suggest consulting your legal counsel for advice on whether it makes sense to submit multiple applications corresponding to registrations in different classes, or multiple variations on a mark.

Submitting Proof of Use of Your Marks

In order to take advantage of the Sunrise period, mark owners must submit proof of use of their marks to the Trademark Clearinghouse. If you are familiar with the requirements of the United States Patent and Trademark Office for a declaration and specimen of use, you will find the guidelines of the Clearinghouse to be similar in spirit, but somewhat less rigid. Your legal counsel can advise on how best to satisfy the requirements.

What Domains will Match?

The Clearinghouse will create a list of second-level domains that would be considered to match your mark. No characters or words can be added or removed, but spaces and special characters that cannot be used in a domain name are an exception to this rule. For example, “Carr & Ferrell” would match carrferrell.newtld, carr-ferrell.newtld, and carrandferrell.newtld. The Clearinghouse offers some limited flexibility to add additional matching domains in your application. Your legal counsel or service provider can assist in covering the bases. There is an additional charge if you choose more than ten matches.

Term of Registration, Renewal and Anticipated Costs

The Clearinghouse offers renewable one-year, three-year, and five-year terms of registration, and encourages registration for longer terms to avoid a possible gap in eligibility during the renewal process. The status of your trademark registration will be re-verified each year, and if you allow it to lapse, your Clearinghouse registration also will lapse.

A number of experienced service providers are available to coordinate the application process and assist with its technicalities. The combined cost of service provider and Clearinghouse fees is expected to total around $275 per year for a one-year term, with discounts for choosing a three- or five-year term.

We suggest retaining legal counsel to advise on strategy for selecting registrations and specimens of use to submit. The cost of these services will depend on the time involved, but are likely to be comparable to similar filings with the US Trademark Office.

Got Questions? Ready to Go?

Carr & Ferrell's Trademark Group looks forward to working with our clients to maximize the value of the Trademark Clearinghouse in the protection of their trademarks.