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Guest View: Understanding the key offerings of the Trademark Clearinghouse

Jan Corstens | May 21, 2013
Jan Corstens, partner at Deloitte handling the Trademark Clearinghouse, advises businesses on the necessary steps to take leading up to the launch of new Internet domains

b) Trademark Claims System: The Trademark Claims System has been specifically developed for the new gTLD program and provides two critical functions;

i. Forewarning domain name applicants of a match between the term they are seeking to register as a domain name (e.g. apple.web or and a trademarked term in the Trademark Clearinghouse (e.g. apple)

ii. Should the applicant proceed to register the name (e.g. a Trademark Claims notice will be sent to the owner or owners of the mark (e.g. Apple Computer Corporation and Apple Music) in the Trademark Clearinghouse that a registration has been made that corresponds with their mark.

Step Three: Be prepared in advance; despite the fact that the new gTLDs are not due to go live until later this year, record your trademark(s) into the Trademark Clearinghouse now

Although there is no current deadline for submitting a trademark to the Trademark Clearinghouse, marks will be processed on a first-come first-served basis and so it is recommended that brands be prepared to submit their trademarks as early on as possible to ensure enough time is reserved for dealing with potential administrative corrections.

Brand owners that are particularly interested in taking advantage of the Sunrise Periods should be the most focused on early submissions, as delays could lead to the inability to register a certain domain name. An early-bird system providing for an extended initial record period means that there is no financial penalty for early submission.

Step Four: Distinguish what ownership of a registered trademark means for your brand in the Trademark Clearinghouse

There's been some confusion regarding protections that a trademark owner already has via their registered trademarks; are they or are they not legally protected from others brands using their intellectual property? If they are protected, why enter a mark into the Trademark Clearinghouse?

To clarify, brand owners remain free to take advantage of any legal remedies or dispute resolution process. However, the Trademark Clearinghouse provides a cost-effective early opportunity to pre-empt more costly and time consuming remedies and does not preclude such options in future. Moreover, since the applicant/s will have been warned of the Trademark Clearinghouse record in advance of registering a potentially infringing domain name, it is likely that any future action will be supported by this combination of prior notification and acceptance of the trademark owner's rights.

Furthermore, while existing protections are in place, protection is necessarily limited to the category of goods and services of the trademark and the jurisdiction(s) in which the trademark/s are registered. Depending in part on the policy of the individual TLD operator, a record in the Trademark Clearinghouse provides the advantage of broad protection across all new TLDs.


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