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The Time Is Now: Trademark ClearingHouse Opens March 26, 2013

by | Mar 26, 2013 | Internet issues | 0 comments

At long last, the new Internet generic Top Level Domain (gTLD) scheme is launching as early as April 2013. In addition to the ubiquitous .com, .net, .org, and .edu domains, the Internet Corporation for Assigned Names and Numbers (ICANN) has opened the word after the dot (that’s the top-level domain) to generic words and brand names. [The application window for new gTLDs closed in 2011 and is not yet known when/if they will open it up for additional gTLDs.]

The new gTLDs are touted as creating new opportunities for online branding and have the potential to drive consumer traffic in new directions. Some believe that the new .DOT portals may facilitate new search paradigms on the Internet. For example, if .camera launches, will the search algorithm on popular internet browsers be changed to look at the content on the domain names ending with .camera? Or, might one of the popular search engines create a new marketing scheme for the owners of the new .gTLDs so that their listings are highlighted in the search results in some way?

Some of the applied-for gTLDS that may be of particular interest are:

.android
.camera
.ecom
.equipment
.health
.pharmacy
.technology
.solutions

Here’s the complete list of applied-for gTLDS. There are some foreign language gTLDs that may be of interest.

The time is now to consider where on the Internet you might want to appear to market your products virtually. If you would like, I can draft you an offensive and defensive plan. By offensive, I mean where to register your mark as a domain under new gTLDs, if that is where you see a marketing opportunity. By defensive, I mean taking steps to prevent someone else from appropriating your brand/mark and registering it as part of a domain name under a new gTLD.

FYI: The fees for registering domains will be set by the registry for each new gTLD and we don’t yet know the price points; nor do we know which registrars will be handling applications for various gTLDs. We anticipate that the cost will be more than a regular .com registration, but if you have been unable to get the .com domain that you wanted, you may find a viable alternative among the new gTLDS.

Internet expansion

What Can the Trademark ClearingHouse Do for You?

Notification of Matching Mark Applied-For in New gTLD

The new Trademark ClearingHouse that comes into effect with generic Top Level Domains is will be a repository of registered marks that registrars will be required to check before registering a new gTLD domain. Applied-for marks cannot be submitted to the ClearingHouse; but once your new marks register, you can submit them to the ClearingHouse.

However, submitting your mark to the ClearingHouse will not stop someone from registering your mark as a domain. Rather, if you submit your mark to the ClearingHouse database and it is verified, based on a series of matching rules, you as a mark owner will be notified of an application and will have 60 days to file a claim. But be forewarned, this is just a notification mechanism.

However, the matching system is rudimentary. it will not capture all of the potential variations of your mark. To be notified of something other than an identical or virtual match, it would be prudent/provident to engage a watching service, which monitors all domain applications and reports to you if someone else is registering a similar domain. You can subscribe to a Domain Name watch service 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 Name watch can effectively notify you of a common law adoption of a given mark.

Early Notice and Ability to Participate in Sunrise Registration Periods

Besides the benefit of a notification/60 day claim period, placing your mark in the ClearingHouse makes you eligible to participate in Sunrise registration periods. You will receive at least 30 days advance notice, creating a potential edge for your company to acquire YOURMARK.NEWGTLD.

How to Get Your Mark in the ClearingHouse Database

To submit your mark to the ClearingHouse for all of these benefits, it will be necessary to submit a form, collect proof of use, sign a declaration attesting to use, and pay a fee (which varies based on a term of 1, 3 or 5 years). Acceptable proof 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

Think about which of your mark(s) to include in the ClearingHouse database. If you have any questions, please contact me at your earliest convenience. Keep in mind. while there is no deadline for submitting your mark(s) to the ClearingHouse, it would be wise to get your mark(s) submitted before the first new gTLDs roll out, which may be as early as April/May 2013.