New Generic Top-Level Domains
Have you heard of the trademark clearinghouse? If you own a trademark, you will need to know about this.
Over the next couple of years many new generic Top-Level Domains (gTLDs ), such as .cool, .food, .entertainment, and .toys, are expected to be introduced into the domain name system. Most of these will be “open” to the public for registration of second-level domains. Unfortunately, this also means that brand owners must be prepared for cybersquatters. A cybersquatter is an entity who registers, traffics in, or uses a domain name with the intent to profit from a popular trademark belonging to someone else.
A sunrise registration period will commence 30 days before the gTLDs become generally available. If a trademark owner wishes to obtain a domain name, that is an identical match to an existing mark, the trademark must be recorded in the clearinghouse during this time.
The Trademark Clearinghouse is a global repository for trademark data, designed to meet global needs for the DNS. Since its launch in March of 2013, the Trademark Clearinghouse will be used to verify trademark data from multiple global regions, and maintain a database with the verified trademark records. The Clearinghouse is expected to play an important role in trademark protection during the launch phase of each new gTLD and in the ongoing protection of trademark rights.
The Clearinghouse also has its limitations. Registering a trademark with the Trademark Clearinghouse does not entitle you to any domain names. Rather, it will allow you to participate in the sunrise period offered by each new gTLD registry. This means that you will have an earlier opportunity to pursue the registration of domain names that correspond to your trademark. Despite this limitation, trademark owners must remember that reactive enforcement will remain an important strategy for brand protection as the new gTLDs launch.
Registering Trademarks in the Clearinghouse
In order to register with the Trademark Clearinghouse certain guidelines must be followed. Trademark owners are required to submit trademark information and an application fee. Trademark Clearinghouse registration is also possible in certain other limited scenarios, such as court-validations and unregistered trademarks, though most of the time national trademark registration is required. A trademark owner that wishes to participate in the various sunrise periods must also submit proof of use in the form of a declaration and a specimen of use.
If you feel that cyber squatters will be attracted to your trademarks or if you would like to participate in gTLDs registration, we highly recommend that you register your trademarks with the Trademark Clearinghouse. Please contact us if you need assistance with the process.