By David M. Kramer

The Trademark Clearinghouse, one of the key rights protection mechanisms included in ICANN’s new gTLD program, will be launching on March 26, 2013.  As the name implies, the Trademark Clearinghouse is a centralized database containing trademark data submitted by brand owners.  It is critical that brand owners submit this trademark data prior to the launch of new gTLDs, which may occur as early as April 23, 2013.

Registration of your brand’s core marks with the Clearinghouse is integral to two critical protective programs for brand owners. These programs are designed to protect trademark owners’ rights before and during the rollout of new gTLDs: the Sunrise Service and the Trademark Claims Service.

First, the Sunrise Service: The guidelines of the new gTLD program make clear that a Sunrise Period is mandatory for all approved new gTLDs. This mandatory Sunrise Period is a limited pre-registration period designed to allow brand owners to secure domain names corresponding to their trademarks under new gTLDs before registration is available to the general public. In order to take advantage of Sunrise registration, however, the brand owner must have a validated trademark entry in the Trademark Clearinghouse.

Participation in the Clearinghouse will significantly reduce the administrative burden placed on brand owners by the introduction of new gTLDs. Specifically, rather than being forced to register domain names corresponding to your trademark at each new gTLD individually, once a trademark has been validated and added to the Clearinghouse, information about the mark and brand owner is centrally stored and can be used to register the corresponding domain name in any new gTLD directly.

As such, participation in the Clearinghouse is a critical step toward ensuring that your brand will have a presence on any new gTLD deemed relevant to your brand.

Second, the Trademark Claims Service: Because brand owners may not be interested in registering a domain name corresponding to its trademarks under every new gTLD, the Trademark Claims Service is intended to protect brand owners from third-party registration and exploitation of the same.

In short, the Trademark Claims Service is a notification service designed to warn both domain name registrants as well as trademark holders of possible infringements. For example, if someone other than the brand owner attempts to register a domain name that matches a trademark registered with the Clearinghouse, the potential registrant will receive a warning notice stating that registration of the domain name in question may violate a third party’s trademark rights. While the receipt of this notices does not bar the potential registrant from registering the domain name in question, if the potential registrant does move forward with registration of the domain name, the trademark holder will then receive notification of the domain name registration. The trademark hold then has an opportunity to take any appropriate action against the registrant.

As you can see, the Trademark Clearinghouse plays a critical role in protecting your brand and trademarks from exploitation on the upcoming new gTLDs and allows you to expand your brand’s online presence quickly and efficiently. Thus, we strongly encourage brand owners to register their trademark rights with the Clearinghouse as soon as it opens on March 26, 2013.

We would be very pleased to assist you with this process. For more information on the requirements and costs associated with registration, please contact Ann Ford or your DLA Piper lawyer.