Brand owners are about to get a tool to protect their brands in the expanding domain name space. After multiple delays, the Trademark Clearinghouse for new gTLDs (“TMCH”) will launch on March 26. Based on the current timeline, to take full advantage of the TMCH, brand owners should submit their critical marks to the TMCH by the end of April.
First, some background. A gTLD is a domain name extension, such as the well-known .com, .net, or .org. ICANN, the organization that operates the domain name system, is in the process of creating hundreds of new gTLDS – everything from .africa to .zip. – so that it will soon be possible to create domain names along the lines of yourcompany.tech or yourtrademark.store. Internationalized gTLDs, using non-Latin alphabets, will also be coming into existence so that, for example, a brand owner could register yourbrand.com entirely in Chinese characters. A full list of the applied-for gTLDs is here.
The new gTLDs will start coming online as soon as May, though delay until summer or fall is possible. After they start going live, the plan is that there will be as many as 20 new gTLDs opening for registration every week for a year or more.
The situation presents a challenge for brand owners, and the TMCH, although it is far from perfect, is meant to help them tackle it. Basically, the TMCH will work as follows. An owner of a registered trademark who provides the TMCH with evidence of the registration, evidence of actual use of the mark, and a fee of approximately $150 per mark per year, can obtain a TMCH registration for the mark. For example, Acme, Inc. owns a federal registration of the ACME trademark for widgets. Acme submits evidence of the registration, a picture of the ACME mark on a package of widgets, other information about the mark and its owner, and its fee. The TMCH verifies the information and the ACME mark is registered in the TMCH.
The TMCH registration has two benefits. First, a TMCH registration will allow the owner to register domain names, corresponding to the trademark, in each new gTLD, before the rest of the public can do so. This will happen during a “sunrise period” of thirty days or longer before general sales to any party. Our hypothetical Acme, Inc. would be able to register domain names consisting of the ACME trademark and one of the new gTLDs, such as acme.design, before the general public.
A second, limited benefit, allows that for ninety days following each sunrise period, if another party tries to register a domain name that matches the owner’s trademark, the would-be registrant will be warned of the trademark owner’s rights – but not prevented from proceeding with registration. If he does proceed with the registration, the trademark owner will be notified. To continue our example, if Acme, Inc. does not register acme.design, but John Doe tries to do so during the first ninety days after the .design registry is open for general registrations, Doe will be warned of Acme’s rights. If Doe proceeds to register the acme.design domain name anyway, Acme, Inc. will receive a notice of that fact.
(There are, of course, nuances and strategies regarding such things as which types of trademarks may be listed in the TMCH, what counts as proof of use, and which registrations to enter to receive the broadest and longest-lasting protection. Complete guidelines are here.)
How useful will the TMCH be for brand owners? Despite its obvious limitations, many brand owners will want to utilize it. Some brand owners will want to register and use a domain name in one of the new gTLDs to promote their products. Others – probably more – will want defensive domain name registrations, at least covering their most important registered trademarks in the new gTLDs relevant to their industry. With its relatively low cost per registered trademark protected, the TMCH makes sense for brand owners seeking either of these goals. For brand owners who only want notification when another party registers one of its trademarks as part of a domain name, the TMCH is probably not a good choice, due to the limited, 90-day notification timeframe and the fact that domain names that are close to but not identical to a trademark in the TMCH will not produce a warning at all. A traditional domain name watch service, with coverage that includes the new gTLDs, may be a better choice.
After the TMCH commences on March 26, it will remain open for new registrations for as long as the new gTLDs are rolling out (likely several years). Brand owners may want to start the process of entering these trademarks sooner rather than later, however, to allow for any problems in the un-tested registration process and to have access to all of the sunrise periods.
Dorsey & Whitney’s Trademark, Copyright, Advertising, and Brand Management Group has assisted clients in all aspects of new gTLDs and would be pleased to help your company in protecting its rights. If you have any questions, please contact us.