From our friends at Com Laude:
1. What is the Trademark Clearinghouse?
The internet is changing. ICANN, which administers the domain name system is running a process that will see the creation of nearly 1400 new registries. As part of the process, it has mandated the creation of a Trademark Clearinghouse (TMCH), for which ICANN has appointed Deloitte as validator and IBM as the technical operator.
The Trademark Clearinghouse (TMCH) is a database of verified trademark information. The TMCH will allow trademark owners to deposit their trademark information into one centralized system for one fee, rather than with each of potentially hundreds of individual registries during their sunrise periods.
2. Why should I register?
Registration in the TMCH is important for brand owners because it is the central platform for cost-effective participation in:
1. Sunrises (a period during which a trademark owner can apply to a new gTLD registry to obtain a domain name matching its trademark) and;
2. Trademark Claims Service (whereby a trademark owner is notified by the TMCH of any registrations matching its marks in any new gTLD).
When the new gTLD registries launch, they must link to the TMCH for a minimum period of 30 days for the Sunrise and for a minimum of 60 days for the Trademark Claims service.
3. When do I need to act?
The TMCH will begin to accept marks in February 2013.
4. What trademarks should I register?
We suggest that you select the trademarks that you put into the TMCH based on the following considerations:
• Which marks are registered and in force in your key markets?
• Which marks are vital to your online presence?
• Which marks are sensitive to infringement and/or abuse in these markets?
• Consider the registry requirements for Open Restricted registries you are interested in.
• Review the terms you frequently register across existing TLDs and identify those which you want to protect.
We can assist you identify the right marks to submit into the TMCH.
5. Eligibility
To be eligible for inclusion in the TMCH, a trademark must be one of the following:
1. Nationally or regionally registered;
2. Validated by a court of law;
3. Protected by a statute or treaty; or
4. Some “other mark” constituting intellectual property (IP). ICANN has indicated that “other marks” may also be included provided that they can be represented within and verified by the TMCH.
In addition, it must be a ‘word mark’, although Deloitte have stated they may accept figurative and device marks. As we await confirmation we recommend that you remain conservative with what you submit in order to avoid the risk of your registration failing.
6. What marks won’t the TMCH accept
• Any mark starting with a dot (.) or containing a dot.
• Any IP rights which cannot be represented within the technical limitations of the Domain Name System (e.g. patents and designs)
7. Proof of use
In order to receive Trademark Claims notifications, no proof of use has to be submitted.
To participate in Sunrises, a trademark owner must also provide proof that the trademark is in use. Proof of use will be re-verified every five years.
Proof of use requires the provision of:
1. A signed declaration.
2. A sample of use. Deloitte has given some initial guidance on what is an acceptable sample:
8. Official Cost
The official fees charged by Deloitte for placing one trademark in the TMCH using an agent are $145 for 1 year, $435 for 3 years and $725 for a 5 year registration. Renewal of an expiring TMCH registration may be as much as another $150 per year.
9. Who is running the TMCH?
Validation of marks for entry into the TMCH will be undertaken by Deloitte Belgium, which has a contract to be the exclusive provider of validation services for the first 10 new gTLD Sunrises.
The technical operator of the TMCH is IBM who will receive validated marks from Deloitte and, in the future, other validation providers. IBM is currently negotiating a contract with ICANN that is likely to include multiple Statements of Work and High Availability service levels.
10. Who retains rights to the IP?
ICANN will retain all rights in the IP in the TMCH and will be undertaking a monitoring program to ensure that windfall profits are not made by either provider.
11. What can I register as a domain name?
A domain registration is limited to exact match of a domain name to an eligible word mark. During the trademark’s registration, the TMCH will automatically generate a list of matching domain names based on ICANN’s Domain Name Matching Rules.
As is customary in Sunrises, spaces and punctuation such as asterisks or exclamation marks in the trademark may be omitted or replaced with hyphens in the domain name. In addition, the ‘&’ and ‘@’ symbols may be transcribed as ‘and’ or ‘at’ in the language(s) of the relevant trademark jurisdiction.
Up to 10 permitted matching domain names are included in the price of a trademark registration in the TMCH. For each additional domain name, an additional fee will be charged by Deloitte. The fees are as follows: $1 for 1 year, $3 for 3 years and $5 for 5 year registrations.
For more information go HERE.
