July 24, 2014

Trademark Owners Should Record with Internet Corporation for Assigned Names and Numbers' (ICANN) Trademark Clearinghouse

On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization overseeing the Internet’s domain name space, will begin to accept applications to record trademarks in the Trademark Clearinghouse (TMCH). The new generic Top-Level Domain (gTLD) program will add more than 1,400 new top-level domains, including .brand and .generic TLDs, to the Internet. Trademark owners should review their trademark holdings to determine which to record with the TMCH to protect against registration of domain names by third parties that incorporate the recorded marks.

Through its Trademark Claims Service, the TMCH will notify domain name applicants when domain names are sought that use trademarks recorded with the TMCH and advise trademark registrants if the domain names are registered. Recordation in the TMCH is also a prerequisite for sunrise-period registration of trademarks as second-level domain names before others are able to register domain names. Trademarks must also be in actual use for them to be eligible for sunrise registration. The TMCH will charge a fee of $145 per trademark per year to record the trademark for both services. Some discounts will be available for multiyear registrations. Preparation, filing and maintenance of TMCH recordations will require additional fees. Trademark owners will also have to pay if they wish to register their trademarks as domain names during sunrise periods.

© 2014 Vedder Price

About the Author

Robert S. Beiser, Patent Attorney, Veddar Price Law Firm

Robert S. Beiser is a Shareholder at Vedder Price and a member of the firm’s Intellectual Property group. Mr. Beiser counsels clients in the field of patents, trademarks and copyrights, concentrating in the preparation and prosecution of patent applications in the fields of reclosable plastic packaging, medical devices, pharmaceuticals, electronics and computer software. He also provides validity and infringement opinions as well as the preparation and prosecution of trademark and copyright applications and technology licensing agreements.

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