Trademark Owners Should Consider Now Which Trademarks To Record With ICANN’s Trademark Clearinghouse

March 14, 2013

On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organization overseeing the Internet’s domain name space, will begin to accept applications to record trademarks in the Trademark Clearinghouse (TMCH). The TMCH will become the central repository of trademark registration and use information for the new generic top-level domain (gTLD) program. The new gTLD program will add more than 1400 new top level domains, including .BRAND and .GENERIC TLDs, to the Internet. The TMCH is one of the new mechanisms designed to help protect against trademark abuse in domain names. Now is the time for trademark owners to review their trademark holdings to determine which to record with the TMCH to protect against registration of domain names by third parties that incorporate the recorded marks.

The TMCH will notify domain name applicants when domain names are sought that use trademarks recorded with the TMCH ("Trademark Claims Service") and advise trademark registrants if the domain names are registered. Recordation in the TMCH is also a prerequisite for Sunrise Period registration of trademarks as second-level domain names before others are able to register domain names. Trademarks must also be in actual use for them to be eligible for Sunrise registration. The TMCH will charge a fee of $145 per trademark per year to record the trademark for both services. Some discounts will be available for multi-year registrations. Preparation, filing, and maintenance of TMCH recordations will require additional fees. Trademark owners will also have to pay registry fees if they wish to register their trademarks as domain names during Sunrise periods.

Marshall, Gerstein & Borun LLP can help clients set strategies, determine which trademarks to protect in the domain name space, record and maintain trademarks in the TMCH, and review domain name registration notices. Please contact us for more information, to arrange for a cost and process briefing, and to record trademarks with this important trademark protection program.

The information contained in this alert is for informational purposes only and is not legal advice or a substitute for obtaining legal advice. Under applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2013 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.

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