Diserio Martin O'Connor & Castiglioni LLP

ICANN Opens New Trademark Clearinghouse

March 27, 2013

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing the domain name system. The Trademark Clearinghouse opened on March 26, 2013 (http://trademark-clearinghouse.com/). Historically, generic top level domain names (“gTLDs”) have been limited to .com, .org, and the like. In the coming months and years, ICANN will be launching hundreds of additional gTLDs for registration of new domain names. With this new market for registration of domain names with new gTLDs comes great risk for trademark owners that others will register their mark in the context of these new gTLDs. ICANN has therefore developed a new system for trademark holders to register their marks in a new Trademark Clearinghouse, which will provide trademark holders many benefits to protect their valuable intellectual property and have advance warnings, early opportunities to protect their marks from registration by others, and the ability to participate in new dispute resolution programs. 

The Clearinghouse allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs. The Clearinghouse opened on March 26, 2013. After verification, the trademark holder gains rights during the pre-registration period of multiple TLDs (the "Sunrise period"). Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the Clearinghouse. 

While trademark holders with multiple marks and portfolios can take advantage of an Advanced Fee Structure (which provides volume discounts), the basic fee structure for registration of one mark is 150 USD per year; 435 USD for 3 years; or 725 USD for 5 years. The fee includes: 

  • Registration of the trademark record
  • Verification of the trademark record
  • Sunrise services
  • Trademark claims services
  • Linking up to 10 domain name labels to the registration
  • No extra fees for opting in or out of Sunrise services or Trademark Claims notifications. 

The ICANN Trademark Clearinghouse Guidelines may be found here:

http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.1_0.pdf

The fee structure for registration may be found here:

http://trademark-clearinghouse.com/content/new-fee-structure 

DMOC can assist you in protecting your valuable intellectual property through the Trademark Clearinghouse. 

For more information about domain names and intellectual property, please contact:

Matthew C. Wagner

Chair of the Intellectual Property Department

mwagner@dmoc.com

203-358-0800