Posted January 8th, 2013
From our good friends at Com Laude
The Trademark Clearinghouse (TMCH) is a database of verified trademark information. Often mis-represented as a Rights Protection Mechanism, it is better to think of the TMCH as a Platform for RPMs in the New gTLDs (ngTLDs), designed to minimize costs. The TMCH will allow trademark owners to deposit their trademark information into one centralized register for one fee, rather than with each of potentially hundreds of individual registries during their sunrise periods.
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 an initial period which will be revealed when their contract with ICANN is published online in the near future. 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. 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.
Registration in the TMCH is important for brand owners because it is the central platform for cost-effective participation in sunrises (a period during which a trademark owner can apply to a new gTLD registry to obtain a domain name matching its trademark) and the operation of the Trademark Claims service (when a trademark owner is notified by the TMCH of any registrations matching its marks in any new gTLD). It is expected that the TMCH to open for the receipt of trademark data in January or February 2013.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.
To be eligible for inclusion in the TMCH, a trademark must be registered, validated by a court, or protected by a statute or treaty. ICANN has indicated that “other marks” may also be included provided that they can be represented within and verified by the TMCH. 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. However, marks containing a full stop are not eligible at all (such as Dr. Pepper).
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 mark is in use. Proof of use will be re-verified every five years. Proof of use requires the provision of a signed declaration and a sample of use. Deloitte has given some initial guidance on what is an acceptable sample:
|LabelsTagsContainers from a product
Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials)
|Inclusion of a mark in a domain nameEmail messagesLicenses to use a mark
The official fees for placing one trademark in the TMCH will be $150. The annual re-validation fee is still to be determined but may be as much as another $150. There will be discounts for volume and for multiple year entries paid in advance.
For more information on the TMCH and services Com Laude has developed to help place marks in the TMCH and the monitoring of sunrise periods for the 600+ “Open” ngTLD registries or 139 community/geographic registries, please reach them HERE.