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New gLTD Trademark Clearinghouse: Now is the Time

Brand owners and other stakeholders have been watching the rollout of new gTLDs with a dose of skepticism as posted deadlines have been pushed off again and again. However, ICANN has recently begun delegating gTLDs, and the “sunrise period” has opened for .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures. Thus, for brand owners who have been waiting to register in the Trademark Clearinghouse until the landscape is clearer, the time has come. ICANN has begun delegating gTLDs, and the “sunrise period” will be closing shortly for the first set of new gTLDs. Entry in the Trademark Clearinghouse does not necessarily block third parties from registering a mark in a gTLD. Rather, as we explained in our last client alert on this topic, registration in the Trademark Clearinghouse provides two primary benefits:

  • First, it allows brand owners to register during the “sunrise period” of any gTLD open to the general public. For example, if Acme Car Sales owns a trademark registration for the term ACME and enters that registration in the Clearinghouse, as the anticipated .cars registry launches, Acme Car Sales would be able to register acme.cars before others have that opportunity. 

  • Second, Clearinghouse registrants will receive notice if anyone tries to register domain names that match their marks.  Thus, to take the prior example, if Acme Car Sales decides not to register acme.cars, but a third party proceeds to do so, Acme Car Sales will receive notice of the registration and then can contest it if appropriate. 

Where multiple entities own trademark registrations for the same mark (e.g., Acme Car Sales and Acme Music Company might both own a registration for ACME), the individual registries can determine how to resolve those potential disputes.  Donuts, Inc., the registry operator for .camera, .clothing, .equipment, .guru, .holdings, .lighting, .singles, .ventures and .voyage, will be using an auction in those circumstances to determine which Clearinghouse registrant to reward with domain names applied for during the sunrise. 

There is no hard deadline to enter the Clearinghouse, but as more gTLDs come online and corresponding "sunrise periods" open and close, entering the Clearinghouse becomes less and less useful.  Thus, in order to take full advantage of the Clearinghouse, mark owners should be entering now. 

© 2020 Neal, Gerber & Eisenberg LLP.National Law Review, Volume IV, Number 23

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About this Author

Lee J. Eulgen, Partner, Neal Gerber law firm
Partner

Lee J. Eulgen has significant experience in intellectual property litigation, negotiation and counseling, including trademark, copyright, patent, right of publicity, trade secret, trade dress, domain name,  entertainment, unfair competition and privacy-related matters. In particular, Lee has first-chaired countless intellectual property disputes and he is a member of the International Trademark Association’s Enforcement Committee. Lee has also handled numerous brand and technology-driven transactions, including licensing and information technology transactions, as well as sponsorship and...

312-269-8465
Katherine Dennis Nye, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm
Associate

Kate Dennis Nye focuses her practice on assisting clients with their branding and marketing needs. Kate counsels clients on trademark clearance, and assists them with filing new trademark applications and maintaining their trademark portfolios worldwide. She also manages intellectual property policing and enforcement matters for numerous clients at all stages of such disputes, and her litigation experience includes both federal court and Trademark Trial and Appeal Board proceedings.

Additionally, Kate regularly works with clients to review and vet marketing and promotional material, including clearing promotional taglines and ensuring compliance with the rules, regulations, and best practices governing advertisements. She also helps clients appropriately structure game promotions, including drafting rules for sweepstakes or contest campaigns. Kate has also assisted clients in responding to inquiries from the Federal Trade Commission regarding advertisements and in assessing competitor claims of false advertising under the Lanham Act.

312-827-1455