Beginning March 26, 2013, brand owners can register their trademarks with the Trademark Clearinghouse, a centralized repository for trademark information used by new generic top-level domain (gTLD) operators to implement mandatory rights protection mechanisms required by the Internet Corporation for Assigned Names and Numbers (ICANN). As discussed in our prior alert, ICANN oversaw an application process by which businesses, organizations and other institutions could apply to operate gTLDs such as .library or .brand. Nearly 2,000 applications were filed during the first application period. ICANN has targeted April 23, 2013 as the launch date for the first new gTLDs.

As trademark owners prepare for the changing internet landscape, they should give careful consideration as to whether, and if so how, they will use the Clearinghouse as part of their online enforcement strategy.

Clearinghouse Protections

The Clearinghouse offers two opportunities for trademark owners:

1. Access to sunrise registration. Prior to offering domains to the general public, new gTLD operators must offer a "sunrise" registration period of at least 30 days during which trademark owners can seek to register a domain identical to their trademark. A trademark owner must register its mark with the Clearinghouse in order to participate in sunrise registration periods. Owners of trademarks registered with the Clearinghouse will be notified whenever a new gTLD sunrise period is scheduled.
2. Notification of domain registrations. For at least the first 60 days that a new gTLD is open for registration by the general public, the Clearinghouse Trademark Claims service will warn anyone seeking to register a domain that is identical to a trademark in the Clearinghouse of possible infringement and will also alert the trademark owner to the domain registration.

Eligible Trademarks

The following trademarks are eligible for registration with the Clearinghouse:

1. Nationally or regionally registered trademarks from all jurisdictions (a state registration does not qualify a trademark for inclusion in the Clearinghouse);
2. Trademarks validated through a court of law or other judicial proceeding, such as unregistered (common law) marks and/or well-known marks; and
3. Trademarks protected by statute or treaty.

Detailed information confirming the validity of a trademark, and in some cases documentary evidence, must be filed with the Clearinghouse. Proof of actual trademark use is required to participate in sunrise registration periods. Deloitte Enterprise Risk Services is responsible for verifying trademark submissions to the Clearinghouse.

Registration Fees

Registration fees range from $95 to $150 per trademark per year depending on the number of trademarks submitted by a trademark owner to the Clearinghouse and whether they are registered with the Clearinghouse for one, three or five years.

Detailed information about the Clearinghouse is available here.