Archive for the ‘Trademark Clearing House’ Category

 

Trademark Clearinghouse FAQs

Posted February 11th, 2013


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.

Posted in gTLDS, ICANN, Trademark Clearing House by  

 
 

All about the Trademark Clearinghouse

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:


Acceptable Unacceptable
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

 

Business cards

 

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.

 

Posted in gTLDS, Trademark Clearing House by  

 
 

News from ICANN’s Trademark Clearing House Meetings

Posted November 27th, 2012


From ICANN Blog

To wrap up the series of meetings ICANN convened with stakeholders to find common ground on Trademark Clearinghouse implementation, we conducted a follow-up briefing today for the group who worked on these issues during our meetings in Brussels and Los Angeles.

We discussed two items:

  1. An update on the Trademark Clearinghouse contract, and
  2. A way forward on the strawman solution developed during the meeting in Los Angeles.

Contracts

ICANN has continued to negotiate the agreements for database services with IBM and for validation services with Deloitte to include additional terms that will provide ICANN with maximum operational flexibility and guaranteed stewardship of the trademark database.

Here is an overview:

  1. ICANN retains all intellectual property rights in the Trademark Clearinghouse data.
  2. Deloitte’s validation services are to be non-exclusive. ICANN may add additional validators after a threshold of minimum stability is met.
  3. Trademark submission fees are capped at USD 150 per record. Discounts are available for bulk & multi-year submissions.
  4. IBM will charge Deloitte for database access via an application processing interface (API), and will charge registries and registrars for real-time access to the database during the sunrise and claims periods.
  5. ICANN may audit Deloitte’s performance (and revenues/costs) to confirm that the costs and fees for validation services are reasonable.

 

We are moving to sign agreements as soon as possible and the agreements will be posted once signed.

For the full skinny go HERE.

Posted in gTLDS, ICANN, Intellectual Property, Trademark Clearing House by