With ICANN’s Trademark Clearinghouse (Clearinghouse) receiving more attention now that it has officially launched and is accepting trademark data deposits, we highlight key Clearinghouse‑related information and strategy questions below.
First things first, the Clearinghouse is not a Rights Protection Mechanism. It is a cost management system. It was designed to allow trademark owners to deposit their trademark information into one centrally managed database for a single fee. Historically, new registries (such as .info or .biz, or more recently .xxx) have individually charged rights owners to “validate” the same trademark registration data. Trademark owners told ICANN that this model would not scale to over a thousand new gTLDs, so ICANN created the Clearinghouse to streamline and centralise trademark data validations.
Trademarks submitted to and validated by the Clearinghouse can be used, subject to ICANN’s “proof of use” requirements, to participate in new gTLD Sunrises. There is an exclusive 30-day priority period for eligible trademark owners to obtain a domain name matching their trademark prior to general public availability. Many readers will know that these Sunrise registration opportunities are largely used by trademark owners for defensive purposes (i.e., to pre-empt cybersquatters).
In addition to Sunrises, ICANN will require new gTLD registries to provide a Trademark Claims service. Claims are a 90-day period following Sunrise where trademark owners are notified via the Clearinghouse of any domain registrations in new gTLDs that match their marks (however, this notification occurs after the registration and does not block a potentially infringing registration from occurring in the first place).
In developing a Clearinghouse strategy, some things you should consider:
- • Which marks to submit: Review the unrestricted registries where you need protection (clients should feel free to ask us for an up-to-date list). Do they have a nexus requirement; for example, if you want protection in the .paris and .berlin registries, do you have one mark covering both jurisdictions or will you need to submit two marks? Do your preferred marks carry up-to-date ownership details? Will there be issues around assignees? What proof of use will you supply (mandatory if you want to participate in a new gTLD Sunrise)?
- • Timing: Deloitte, the validation provider, has said that it takes them 20 calendar days to process an application. ICANN requires new registries to give 30 days’ notice before they open. A ten-day margin is not much. The active life of your Clearinghouse submission will commence when the first registry goes live. As new gTLDs are launched on a rolling basis, you may not need to use the Clearinghouse until 18 months from now, or you may be interested in the very first batch of new gTLDs.
- • Subscription options: How long do you wish to subscribe your mark to the Clearinghouse? Deloitte are offering one, three, and five year options. As every new registry should be open within two years, a one year subscription may be too short but three may be too long.
- • Whether to use an agent: Whether you will liaise directly with the Clearinghouse or partner with us, an intermediary. If you go straight to the Clearinghouse yourself, you should be ready to pay Deloitte directly via credit card, and you can only pay for ten registrations at a time (apparently for security). If you wish to act as an agent, you must pre-pay a $15,000 deposit to the Clearinghouse. You will also be required to store and manage Signed Marked Data (SMD) files.
- • Trademark Claims notices: Who in your organisation will receive these notices across the 90 days for which they last? How will you react if a registration is made by a third-party regardless of a Claims notice? Have you got a list of up to 50 abused “brand-plus” terms (such as “lego-toys”) that have been the subject of UDRP or Court Actions on which you can also receive claims notices? What happens if such terms are applied for in the .auto registry when your registrations are in Class 15 for Musical Instruments?
- • Costs: Deloitte have developed a complex pricing structure. The official fees are $150 for a single mark for one year, $435 for three years, and $725 for five years. Renewal costs are the same as submission costs (which in our view is unjustifiably steep, as re-validation is not very arduous). Our fees start at £80, and we are pleased to offer volume discounts and preferential rates for existing clients.
Finally, remember that the Clearinghouse is a floor not a ceiling. Inclusion in the Clearinghouse does not necessarily mean that you will be able to participate in the first phase of every Sunrise. Some registries will, for example, be prioritising marks owned by local companies before anyone else.
For more information, contact tmch@comlaude.com.