For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 6 September 2013

Should I register my trade marks with the Trademark Clearinghouse?

This post follows on from yesterday's, and is likewise penned by the Emeritus Kat Mark Schweizer.

The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN’s new gTLD program. Trade mark owners register their trade mark with the Trademark Clearinghouse, and after verification (by Deloitte), it is entered into a database of verified rights. The privilege costs USD 150 per year and mark, USD 435 for 3 years, and USD 725 for 5 years.

There are two primary benefits of registering your trade mark with the Trademark Clearinghouse:
a) you get to profit from pre-registration during each 30 day sunrise period for each new generic Top Level Domain (“Sunrise Services”);
b) you get notified when someone attempts to register your trade marks as a secondary domain (“Claims Services”)
Now, since it takes 4-6 weeks to verify your mark and the first sunrise periods may start at the end of October, now would be high time to register your mark with the Clearinghouse if you have not already done so. But should you?

Let’s first look at the “Claims Services”. If a third party attempts to register your verified trade mark in any of the new gTLDs, he gets a notification that he is trying to register a trade mark that does not belong to him. Which he can ignore and continue the registration, upon which a notification is sent to the trade mark owner that his mark has just been registered as a domain name.

Sounds great? Well, yeah. Except, the notification is only triggered for exact matches. In the words of WIPOIt is important to note that, as adopted by ICANN, Sunrise periods (available for at least 30 days) and Claims services (available only for 60 [90] days) are limited to exact matches of a domain name to a word mark, i.e., these services will not cover typos or "mark + term" scenarios.”  So the owner of the mark BRAND will not be notified if someone registers BRANDSALES, BRANDSUCKS or PRAND.

Plus, there is a time limit: the Claims services are only available for 90 days from the opening of the registration process to the general public (i.e. after the end of the sunrise period) [See "Trademark Claims Services" in the Frequently Asked Questions].  Yep, so the cybersquatter only has to wait for three months, and the claims service is circumvented. Or add any descriptive term to the brand. If ever a useless watch service has been invented, this must be it (btw, the explanation of the Claims Services on the official Clearinghouse website conveniently forgets to mention the 90 day period).

So the only reason to register your trade mark with the Trademark Clearinghouse is the possibility to participate in the pre-registration during the sunrise periods. Of which there will be many – ICANN intends to roll out the new gTLDs in batches of 20 per week, so each month, you can merrily register your trade mark as a domain name in another 80 Top Level Domains, if you so desire. Which does not prevent anyone else from registering confusingly similar terms or even identical terms combined with a generic term in the same gTLD. So you pay for the privilege of paying more to have your trade mark registered as a domain name. And you must watch the openings of the sunrise periods, lest you miss the 30 day period.

Unless you are the lucky owner of a global superbrand, I don’t see why you should register your mark with the Trademark Clearinghouse. The benefits are so limited, it really seems like a waste of money. Maybe that is why until August 2013, only 7,000 trade marks have been registered with the Clearinghouse. But I am happy to learn. So please, readers, bash this Kat [that is Mark, not Darren, your posting Kat wishes to clarify, as he values his head] over the head in the comments and explain him why he is mistaken.

The IPKat would again like to thank Mark for these two posts, covering as they do the important topic of domain names, which the IPKat does not cover as often as he would like.

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