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Sunrise soon? The time may REALLY be now to register at the Trademark ClearingHouse

by | Aug 3, 2013 | Internet issues | 0 comments

The new Internet generic Top Level Domain (TLD) scheme is now expected to launch as early as October 2013, though it looks like it may take three to five years for all of the new TLDs to launch. This update comes from Durban, Africa, where ICANN recently sojourned with the Internet community to discuss the status and projections introducing the new Top Level Domains.

ICANN is adding to the 22 familiar TLDs we already know, including .com, .net, .org, and .edu. The new TLDs will include famous brand names (.ford, .microsoft, .google, .apple), generic terms (.health, .camera, .technology), geographic designations (.nyc, .paris, .berlin, .london), communities such as .catholic, .pharmacy, .Lamborghini, internationalized domain names (IDNs) in Latin characters, including .casa (Spanish for house), .vin (French for wine), and .versicherung (German for insurance) as well as new TLDs in non-Latin characters, such as .购物 (Chinese for shopping), .ファッション (Japanese for fashion), .קום (Hebrew for .com).

Since 1,930 applications were submitted in 2011, the applicants and the proposed TLDs have gone through evaluation, objections, contentions, prioritization, and auctions. Nearly 1,300 applications have been approved by ICANN as of July 28, 2013. The hypothetical journey for the first new TLD still involves ICANN Negotiating/Contracting with the Applicant, Testing, and Delegation-—awarding and turning over the TLD to the successful applicant.

But even after delegation, there are at least two steps that come before launching the TLD publicly:

1. SUNRISE NOTICE  For one month before offering domain names in a new TLD, there will be at least a one month preannouncement for each SUNRISE PERIOD for each TLD.

2. SUNRISE PERIOD  For at least two months, trademark owners can register their marks in the new TLD—but only if the trademark owner has previously registered such marks in the Trademark ClearingHouse.

Not to make it more complicated (but it is), the new TLDs will be registered through a variety of registrars, each of which can and may create additional intervals before they allow the general public to register new domains.  Some registrars may have a Founders Period dedicated to the registrations of meaningful, short, and valuable generic domains at premium fees, with perhaps promotional or use obligations. City, geographical and community TLDs may first (or only) offer domains to verifiable members of their designated community before the general public.  Other optional windows that could precede or coincide with open registrations are land rush, premium, and reserve auctions for in-demand domains in the new TLDs. Think: ilove.dogs, online.autos, autos.online, myhair.save, childrens.books, restaurants.nyc.

The new TLD system is set up as a sheer volume of cyberspace, far bigger than the dotcom boom in the 90s.  Are you sitting by, putting a toe in the water, or jumping in?

UPDATED: What Can the Trademark ClearingHouse Do for You?

The Trademark ClearingHouse (the “ClearingHouse”) comes into effect with expanded generic Top Level Domains. Offensively, if we register your mark in the ClearingHouse, you will receive early notification of sunrise periods, giving you a head start in securing new domains comprised of your mark and a new TLD.  Defensively, it will be a repository of registered marks that registrars have to check before registering a new TLD domain.  If your mark is accepted into the Trademark Clearinghouse based on a series of matching rules, you as the mark owner will be notified of any application for that identical mark and you will have 60 days to file a claim. But be forewarned: this is just a notification mechanism; it does NOT automatically stop the other applicant.

Since the total cost to register a mark at the ClearingHouse is relatively low, it would be prudent to submit your registered marks to the ClearingHouse.  Keep in mind that the process the process can take up to 40 days for the ClearingHouse to verify your mark. Submit your marks NOW so you do not miss any of the sunrise periods.

How to Get Your Mark in to the ClearingHouse

To submit your mark to the ClearingHouse for all of these benefits, it will be necessary to submit a form, proof of use, a signed declaration attesting to use, and a fee (which will vary based on a term of one, three and five years).

Acceptable proofs of use are labels, tags, containers, or product packaging; advertising or marketing materials, such as brochures, pamphlets, catalogs, product manuals, displays, signage, or press releases.

Why you shouldn’t depend solely of the ClearingHouse

The matching system developed by the ClearingHouse is very rudimentary. It will not capture all variations of your registered mark. To be notified of something other than an identical or virtual match, it would be prudent to engage a watch service, which monitors all domain name applications and reports when someone else registers a domain that is even similar to the watched mark. You can subscribe to a Domain Watch for approximately $300/year, which can be very cost-effective. While everyone doesn’t necessarily register a mark, almost anyone who may be starting a business will (or launching a new product may) register a domain name encompassing their new mark. A Domain Watch can effectively notify you of a common law adoption of your mark.

Each mark submitted to the ClearingHouse will be considered in connection with all the new TLDs that roll out during the term of your registration at the ClearingHouse. Since it may take as long as three to five years to roll out all of the new 1,000 plus TLDs, you can elect to submit your marks at the ClearingHouse for a three- or five-year period and obtain ClearingHouse benefits for a longer period of the rollout. While there is no deadline to submit your mark(s) to the ClearingHouse, it would be wise to submit mark(s) before the first new gTLDs roll out, which is now targeted for October (5?), 2013. If the first TLD is in fact ready to go in early October, and it takes at least 40 days for the ClearingHouse to verify a mark, you should promptly take steps to submit your marks to the ClearingHouse. Only registered marks may be submitted to the ClearingHouse; but as marks register, they can be added to the ClearingHouse.

Please consider which of your mark(s) to submit to the ClearingHouse.  If you have any questions, please contact me.