ICANN | Clancy + Brion Raffoul

The Trademark Clearinghouse (TMCH) is a mechanism designed to help trademark owners protect their brands during the launch of new gTLDs. Specifically, the TMCH is a central database for all new gTLDs which allows for validation and verification of registered trademarks so as to prevent brand infringement and domain squatting.

Once a trademark has been validated, the TMCH offers two benefits: Sunrise Registration Services and Claim Notification Services. Trademarks that are successfully validated by the TMCH receive a “Signed Mark Data” (SMD) file which is an encrypted file that can be used when submitting a Sunrise domain registration. The Sunrise Period is the initial registration phase that gives trademark owners priority to safeguard domain names that correspond with their brands. Once a trademark is registered in the TMCH, the owner will receive automatic warning notices of possible infringement when third parties attempt to register a domain matching the registered mark.

To register a mark with the TMCH, the trademark must be either registered, court validated or protected by statute or treaty. Design marks may also receive protection if the wording they represent is clearly depicted in the design.

As of April 2014, 170 gTLDs had been released by ICANN (Internet Corporation for Assigned Names and Numbers). It is estimated that nearly 800 new gTLDs will be available for registration in the next few years.

If you require TMCH services, please contact us.

The Internet Corporation for Assigned Names and Numbers (ICANN) has dramatically changed the Internet landscape by permitting third parties to register new generic top level domains (gTLDs). Trade-mark owners will now face serious challenges in ensuring that their trade-marks are not misused or misappropriated online.

ICANN has mandated that Registry Operators of new gTLDs put into effect minimum mechanisms to deal with trade mark disputes for domain names, and it is expected that the Uniform Dispute Resolution Policy (UDRP) will apply to new gTLDs. Another option available to brand owners is the Trade-mark Clearing House (TMCH). By registering a mark with the TMCH, a trade-mark owner will obtain advanced warning of potentially infringing domain names. Moreover, a trade-mark owner may take advantage of the sunrise periods that provide a 30-day first option to purchase and register the domain names that correspond to their trade-marks. This will no doubt become very expensive for trade-marks owners given the sheer number of proposed new gTLDs (over 1,400). Another drawback of the TMCH notification system is that it only applies to exact matches, and will not capture intentionally misspelled or confusingly similar equivalents.

Nonetheless, trade mark owners should consider registering their marks with the TMCH to obtain some level of protection. There is no time limit for submitting trade marks to the TMCH, but the registration process may take up to a month.

To obtain further information about the TMCH, click here.

To view a list of approved gTLDs, as well as the Registry Operator, click here. Some of the approved “strings” include: .diamonds, .photography, .today, .sexy, .land, .construction, .clothing, and .singles.