FAQs: Trademark Clearinghouse
06 May 2013
What is the Trademark Clearinghouse?
The Trademark Clearinghouse is a global repository for trademark data, the first of its kind in the domain name space. Designed to meet global needs for the domain name system (DNS), the Trademark Clearinghouse providers will: (i) verify trademark data from multiple global regions; and (ii) maintain a database with the verified trademark records.
The verified data in the Trademark Clearinghouse will be used to support both Trademark Claims and Sunrise Services, required in all new gTLDs. The Clearinghouse will play an important role in the New gTLD Program and in the ongoing protection of trademark rights.
When will the Trademark Clearinghouse be up and running?
Verification services for the Trademark Clearinghouse is now available. Rights holders can submit their trademark data into the Clearinghouse before any new gTLD registries are performing domain name registrations.
Support for the Sunrise and Trademark Claims services to be offered by new gTLD registries is planned to be available beginning in Q3 2013.
For more information, see http://newgtlds.icann.org/en/about/trademark-clearinghouse.
How do I get access to the Trademark Clearinghouse?
How do I know which TMCH service providers are authorized by ICANN?
Currently, Deloitte is the only provider authorized to perform trademark verification services for the Trademark Clearinghouse. The Trademark Clearinghouse works with a number of agents; these can be found at http://trademark-clearinghouse.com/agents.
What are Trademark Claims and Sunrise Services?
Sunrise services allow trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public. New gTLD registries are required to offer a Sunrise period of at least 30 days.
The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration. During the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant mark information.
If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trademark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name.
What will the Trademark Claims notice that a registrant receives say?
You can review a sample notice here: http://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun12-en.pdf [PDF, 163 KB]
What languages will be serviced in Trademark Clearinghouse?
The Trademark Clearinghouse is a global database and will accept trademark data from all over the world, supporting users in multiple languages. See http://trademark-clearinghouse.com for more details.
Is there a cost to use the Trademark Clearinghouse?
Yes. The parties using the services are responsible for paying for their costs. For example, trademark holders will pay for verification of data by the Clearinghouse. Detailed cost information is available at http://trademark-clearinghouse.com/.
Registries or others using the data to support Sunrise and Trademark Claims services will also pay fees for this use.
What trademarks are eligible for entry into the Clearinghouse?
Four types of marks are eligible for inclusion in the Clearinghouse:
- Nationally or regionally registered word marks from all jurisdictions
- Word marks that have been validated through a court of law or other judicial proceeding
- Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion
- Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry
What information do I need to provide when registering my mark in the Clearinghouse?
You will need to provide information about yourself and the trademark holder if that is someone other than you. This will include your contact information as well as information stating whether you are the trademark holder, someone representing the trademark holder, such as a law firm, or someone to whom the trademark has been licensed or assigned.
You will need to provide the trademark information, the class of goods or services, the jurisdiction where the trademark is registered, and other relevant information according to the type of trademark being submitted.
If you plan to use the Clearinghouse records to register names in new gTLD Sunrise periods, you will need to submit proof of use for the trademark.
What is proof of use?
Proof of use allows you to participate in registry Sunrise periods. For verification of proof of use you must submit:
- A declaration stating that the trademark is indeed being used as you say it is.
- A sample, such as an advertisement, a branded product, or some other example showing the mark in use.
Is proof of use required for admission into the Clearinghouse?
No. However, proof of use is required if you wish to use the Clearinghouse record as a basis to register domain names during a Sunrise period. Rights holders may submit proof of use at the time they initially record their rights data in the Clearinghouse, or at a later time.
Does putting my trademark in the Clearinghouse mean that I automatically get my trademark as a domain name in all new gTLDs?
No. The Clearinghouse verifies and maintains information from many jurisdictions and classes of goods or services, and many parties may have legitimate rights in the same trademark. Allocation of domain names in a particular TLD occurs according to the registry policies for that TLD.
Will different variations of my trademark be protected?
The domain names associated with a Clearinghouse record are generated according to a defined set of matching rules. When you submit your information to the Clearinghouse, part of your file will consist of the different domain names corresponding to that record.
Up to 10 domain names corresponding to one trademark record are included in the initial cost of verification by the Clearinghouse. If there are more than 10 domain names corresponding to the record, you can pay an extra fee to have these additional names associated with the record.
Refer to the Explanatory Memo on Matching Rules for detailed information: http://newgtlds.icann.org/en/about/trademark-clearinghouse/matching-rules-24sep12-en.pdf [PDF, 194 KB]
If two different rights holders have the same trademark in two different countries, then how does the Clearinghouse decide between them?
The Clearinghouse is a repository of data only, and trademarks from many jurisdictions can coexist in the Clearinghouse. Clearinghouse processes are designed to confirm the validity of data, not to make determinations on the substance or scope of rights held by a particular party.
I have applied for a trademark, can I include it in the TrademarkClearinghouse?
No. Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
When will the Strawman be available?
This capability is still being developed; more information will be available soon.
If I am having problems with my Trademark Clearinghouse account, where do I go?
Customer support can be found at http://trademark-clearinghouse.com/