April 15, 2013

ICANN's Trademark Clearinghouse Helps Trademark Owners Watch Out For Their Brands

Consumer Advertising Law Blog

As early as April 23, 2013, the Internet Corporation for Assigned Names and Numbers, better known as ICANN, may launch the long-awaited first set of new top level domain names, or gTLDs, which are the combinations of letters that appear to the right of the "dot" in an internet domain name. This means that rather than the options for domain names being limited to ".com," ".net," ".org," and a handful of other gTLDs, there could soon be hundreds or even thousands of gTLDs available. The implementation of these new gTLDs may cause concern for trademark owners that wish to protect their marks. While a company may have registered its brand domain name in the ".com" or ".net" gTLDs (for example, a long time ago, to protect its mark in the domain name space, it must now be on the lookout for the registration of a domain name consisting of its trademark and new gTLD.

ICANN has launched a Trademark Clearinghouse to help trademark owners protect their trademarks. A trademark owner who submits its registered trademark to the Trademark Clearinghouse via ICANN's website will be provided with two useful services. The first of these services, called the "Sunrise Service," gives trademark owners a head start by allowing them to register domain names incorporating their trademarks and a new gTLD before anyone else. The second service, the "Trademark Claims Service," notifies a third party if it is registering a domain name in which the letters to the left of the "dot" are identical to a trademark recorded in the Trademark Clearinghouse. Although the Trademark Claims Service does not block a third party from registering a domain name that incorporates a trademark, it places potential infringers on notice that their domain name does include a trademark. The owner of the trademark recorded in the Clearinghouse is then notified of the potentially infringing domain name.

Trademark owners may now submit their trademarks to the Trademark Clearinghouse, which opened its doors on March 26, 2013. The fees for submission are $150 per mark for one year, $435 per mark for three years, and $725 per mark for five years. A trademark owner must prove that it owns a mark by submitting evidence such as a trademark registration, a judicial decision demonstrating court-validation, or other evidence that the mark constitutes that owner's intellectual property. In order to be recorded in the Clearinghouse, a mark must be a word mark or, in the case of design marks, the textual element of the mark must be "predominate" and "clearly separable or distinguishable" from the non-textual elements.

More details about ICANN's Trademark Clearinghouse are available in a recent Arnold & Porter advisory, available here.

© Arnold & Porter Kaye Scholer LLP 2013 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

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