The New Domains Are Coming! – Time To Round Up The Trademarks

ICANN Announces Trademark Clearinghouse Launch Date of March 26, 2013

ICANN, the body that regulates the Internet’s domain name system, began accepting applications for new generic Top-Level Domains (gTLDs) in January 2012.  By May 2012, ICANN had received more than 1,900 applications for new gTLDs, consisting of many “generic” names such as .sale, .software, .insurance, .shoes, .social, .tires, etc.  With the introduction of these new Internet domain name possibilities, it is extremely important for trademark owners to protect their trademark rights under the new gTLD program.  The Trademark Clearinghouse (TMCH), an essential part of the gTLD negotiations, provides that protection mechanism.

The TMCH will provide a central database of “validated” trademarks – those that have been registered or otherwise adjudicated to be valid and enforceable – that will be used to address the registration of marks as second-level domains in the new gTLDs.  Continued registration of trademarks with the TMCH during the roll-out of the new gTLDs will be an essential step in a trademark protection strategy.  Registration with the TMCH will (1) enable trademarks to be “pre-validated” to allow trademark owners to participate in “Sunrise” registration periods (periods in a gTLD launch in which trademark owners are allowed to register second-level domain names using their trademarks before the general public is allowed to register domain names) and (2) enable trademark owners to receive notifications whenever other parties seek to register domain names that include their trademarks registered with the TMCH.  The TMCH will not itself prevent registration of a new domain name, but will enable the trademark owner to take preventive action as needed.

Seyfarth Shaw has developed a plan and fixed fee pricing structure for registering trademarks with the Trademark Clearinghouse.  We encourage you to contact any member of our Trademark Practice if you are interested in taking advantage of the Trademark Clearinghouse or if you have any questions regarding the new gTLD program, the Trademark Clearinghouse, or other domain name matters.