Posted July 23, 2014
We get a lot of questions about how the Trademark Clearinghouse can help brand managers and legal counsel protect their rights. This article highlights the pros and cons of the Trademark Clearinghouse, and what you can do to enhance protection.
In anticipation of trademark and intellectual property issues that are certain to accompany the introduction of new generic Top Level Domains (gTLDs), the Internet Corporation for Assigned Names and Numbers (ICANN) has created a number of rights protection mechanisms for trademark holders. One example is the Trademark Clearinghouse (TMCH),a centralized database of verified trademarks, which is electronically connected to each new gTLD being launched.
What is the Trademark Clearing House?
The TMCH is a global repository for trademark data, designed to verify trademark data from multiple global regions and maintain a database with these records. It is a major part of ICANN’s Rights Protection Mechanisms (RPMs) launched in conjunction with the new gTLDs. It allows brand owners to put their trademark information into a centralized database for a one-time fee, rather than separate databases for each registry. The fee is determined based on the number of trademarks being registered with the TMCH and the length of that registration.
What Are the Benefits of Using the TMCH?
Adding your trademark and proof of use to the TMCH gives you the opportunity to participate in early registration periods, also known as Sunrise periods, for all new gTLDs for at least 30 days. This allows you to register applicable domain names before they are made available to the general public. The TMCH will also let you know if anyone registers that exact mark as a domain name in any gTLD. An alert is also sent to the registrant alerting them to the potential infringement.
What Are the Downsides of the TMCH?
As an ICANN-sponsored product, the TMCH can only alert you to exact matches. However, cybersquatters often use common misspellings or add generic words to a trademark to confuse consumers. For example, instead of registering “companyname.guru”, the cybersquatter might register “companynametechs.guru” so people are lead to believe that the domain name links to a firm’s technical department. This means a majority of trademark infringement goes unreported to trademark holders. This gap in coverage leaves a lot of room for cybersquatters to register potentially infringing domains.
The TMCH service is useful for high priority alerts of exact registrations of your trademark. The service’s unrestricted access makes this a strong first step in protecting and policing the use of your trademarks as new gTLDs continue to be registered. However, most companies have intellectual property assets beyond those that meet these requirements. In addition,any use that is not an exact match is not reported which can put your brand at risk.
How Can Domain Name Registration Alerting Services Help?
One solution that many companies have successfully used to protect their trademarks and brands is domain name registration alerts. Domain name registration alerts provide companies with global registration information and the ability to act on it much faster than they might be able to otherwise.
When comparing domain name registration alert options, look for a service that not only reports registrations with an exact match of your trademarks, but one that also includes common misspellings of your trademark used with other terms. Check to see if the service is limited to federally registered trademarks, or if you’re able to include any brand, trademark, or other term that might be subject to cybersquatting. Another feature to look for is customization, so you can configure search and filtering criteria based on your business needs. This can add an extra layer of insight to the notifications that the TMCH sends. You may also wish to consider a service that enables you to monitor content and automatically send cease and desist letters.
What Else Should I Consider?
One thing to consider is that new gTLD registries may work differently than gTLD and country code (ccTLD) registries have historically. In order to enable alerts, companies that offer these services must get approvals from the registries offering these new gTLDs. This requirement – along with the short access window granted under the launch system – means that you’ll still get notifications of registrations of new gTLDs if there’s a change in registration status, but at times, this information may be delayed. The information will be delivered as soon as the service provider is notified, but that may not be on the date of registration or expiration for some new gTLDs.
The launch of new gTLDs is expected to provide exciting new business and branding opportunities to many companies and entrepreneurs, but it also introduces a new level of complexity for brand owners and trademark holders. Combining the TMCH with a domain name registration alerting service provides a proactive approach to protecting your company’s intellectual property from cybersquatters, fraudsters and other malicious actors seeking to capitalize on the goodwill of your good name. If protecting your company from cybersquatters is a priority, we recommend a proactive approach.