Revision as of 20:36, 3 March 2014

Trademark Clearinghouse

"The Trademark Clearinghouse is one of several important enhanced rights protection mechanisms that have been built into the New gTLD program. The Trademark Clearinghouse will accept and authenticate rights information, and will support both trademark claims and sunrise services, required in all new gTLDs ... the Trademark Clearinghouse mechanism functions by authenticating information from rights holders and providing this information to registries and registrars. Benefits of registering a trademark with the Clearinghouse include access to Sunrise registration with new gTLD registries and notification from the Clearinghouse when a domain matching your trademark has been registered. - ICANN"

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Overview and Synopsis

• The simple and easy way for Trademark Holders to register and protect their brands with NewTLDs
• Trademark Holders will be able to submit their trademark information to a single and centralized repository
• Upon verification of a trademarks credentials, Trademark Holders will be able to protect their brands through a Sunrise Service and a Trademark Claims Service
• Verified trademarks will be be able to register their respective domain name during the pre-registration period of any NewTLD (Sunrise period)
• Additionally, Trademark Holders will also have the option to be notified if someone or another entity registers a domain name that matches their record in the Clearinghouse.

HEXONET TRADEMARK CLEARINGHOUSE (TMCH) SERVICES

• Resellers can process TMCH applications through HEXONET via API or Control Panel
• RegistrarOC clients can submit TMCH applications through HEXONET API
• Individual clients can submit TMCH applications through HEXONET

Benefits for Trademarks Registered with the Trademark Clearinghouse

Sunrise Services - TMCH

Sunrise is an initial period of at least 30 days where domain names are offered to Trademark Holders before they domains are offered to the general public. A Sunrise Period is mandatory for all new gTLDs and those with a validated trademark entry in the Clearinghouse can register their branded domain.

• Trademark holders will have ample time to register their IP rights using a user-friendly web interface, or an agent of their choice
• Register once with the Clearinghouse and register any or all corresponding domain names for any new gTLD
• Greatly reduce the administrative burden and associated costs for Trademark Holders

Claims Service - TMCH

The Trademark Claims service helps Trademark Holders after the Sunrise period is over. It is a notification service, mandated by ICANN for all new gTLDs, warns both domain name registrants as well as trademark holders of possible infringements. The service works as follows:

• A potential domain name registrant gets a warning notice when attempting to register a domain name that matches a trademark registered in the Clearinghouse.
• If, after receiving and accepting the notice, the domain name registrant continues to register the domain name, the trademark holder with the corresponding mark will receive notification of the domain name registration, so they can take any appropriate action.
• This service is available within the first 90 days of a General Availability.

TMCH Instructions

Registration of Trademark - Trademark Holder/Client

• Read Guidebook - TMCH Guidelines 1.1
• Determine the type of Trademark to be registered (Acceptable Trademarks)
• Ensure that the Trademark meets all acceptable conditions and exclusions (Acceptable Trademarks)
• Download the correct respective Trademark Application form and supplementary documentation (Trademark Applications)
• Submit Application and supporting documents via API or Control Panel
• Monitor application status through the Control Panel
• If application is approved an SMD file will be available through the Control Panel under Trademark List

Registration of Trademark - Reseller

• Read Guidebook - TMCH Guidelines 1.1
• Determine the type of Trademark that your customer will be registering (Acceptable Trademarks)
• Confirm with your customer that the Trademark meets all acceptable conditions and exclusions (Acceptable Trademarks)
• Your client should download the correct respective Trademark Application form and supplementary documentation (Trademark Applications)
• Reseller submits Application and supporting documents via API or Control Panel
• Monitor application status through the Control Panel
• If application is approved an SMD file will be available through API or Control Panel under Trademark List

Acceptable Trademarks

Registered Trademarks

A registered trademark is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register in the mark’s jurisdiction. This means that the trademark in question must have national effect and be registered at the time it is submitted for verification.

The following are not considered registered trademarks and will not be eligible for inclusion in the Clearinghouse:

• Trademark applications;
• Trademarks registered by a city, state, province, or sub-national region;
• International trademark applications made via the Madrid system unless the underlying basic trademark registration has national effect;
• Registered marks that were subject to successful invalidation, cancellation, opposition, or rectification proceedings.

Not Registered Trademarks but Possible Inclusion under Another Type of Trademark

• Well-known or famous trademarks, unless they are also registered;
• Unregistered (including common law) trademark;
• Court-validated marks;
• Marks protected under statute or treaty;
• Other marks that constitute intellectual property

Not Acceptable by Applicant Guidebook

• A registered trademark that includes a top level extension, for example, trademarks such as “icann.org” or “.icann”
• Any registered trademark starting with or containing a “dot” (.) (e.g., the trademark “deloitte.” will not be accepted)
• Any registered trademark that does not contain any letters, words, numerals or DNS valid characters.

Marks Protected by Statute or Treaty

For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to geographical indications and designations of origin. Also, for purposes of sunrise eligibility, a mark must be specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.

• Please note - The following marks are not considered marks protected by statute or treaty and will not be eligible for inclusion in the Clearinghouse:
  • Trademark applications or applications for protection of a mark;
  • Well-known or famous trademarks, unless also protected by a statue or treaty;
  • US state trademarks;
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation, opposition or rectification proceedings;
  • The following are not considered marks protected by statute or treaty but might be eligible for inclusion in the Clearinghouse under another type of trademark:
    • Registered trademarks;
    • Unregistered (including common law) trademarks;
    • Court validated marks;
    • Other marks that constitutes intellectual property
  • The following will not be accepted by the Clearinghouse, even if protected by statute or treaty:
  • Any mark protected under statute or treaty that includes a top level extension such as “icann.org” or “.icann” as a mark;
  • Any mark protected under statute or treaty starting with or containing a “dot” (.) (e.g., the mark “deloitte.” will not be accepted);
  • Any mark protected under statute or treaty that does not contain any letters, words, numerals, or DNS-valid characters; and
  • Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state.

Court Validated Marks

Court validated marks refer to a mark that has been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks. In the case of a mark validated by judicial proceedings, the judicial authority must have existed as a competent jurisdiction as of the date of the order or judgment. Any referenced authority must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation must be sufficient to show validation of the mark without the need for the Clearinghouse to consult outside resources).

• Please note - The following marks are not considered court-validated marks and will not be eligible for inclusion in the Clearinghouse:
  • Trademark applications;
  • US state trademarks;
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation or rectification proceedings
  • The following are not considered court-validated marks but might be eligible for inclusion in the Clearinghouse under another type of trademark:
    • Registered trademarks;
    • Marks protected under statute or treaty;
    • Other marks that constitute intellectual property
  • The following, even if court-validated, will not be accepted by the Clearinghouse:
    • Any court validated mark that includes a top level extensions such as “icann.org” or “.icann”;
    • Any court validated trademark mark starting with a “dot” (.) or containing a “dot” (.);
    • Any court validated mark that does not contain any letters, words, numerals, or DNS valid characters; and
    • Any state or city court-validated mark

TMCH Application Forms

Please use the respective TMCH application form provided below to submit a trademark. Also, please see the additional documentation requirements if special situations apply to the application:

Downloadable Application Forms

• Declaration of Use - Download
• Declaration of Use to Trademark Agents - Download
• License Declaration for License Holders (License Declaration for Registered Trademarks) - Download

The license declaration for registered trademarks is a template declaration which needs to be provided when the  Trademark Holder of a registered trademark has indicated that he/she is the licensee of a trademark and the license of the trademark has not been recorded with the relevant trademark office. This      license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• License Declaration for Marks Protected under Statute or Treaty - Download

The license declaration for marks protected under statute or treaty is a template declaration which needs to be provided when the Trademark Holder of a mark protected under statute or treaty has indicated that he/she is the licensee of a mark protected under statute or treaty. This license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• License Declaration for Court Validated Trademarks - Download

The license declaration for court validated trademarks is a template declaration which needs to be provided when the Trademark Holder of a court validated mark has indicated that he/she is the licensee of a court validated mark. This license declaration for court validated trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.

• Transfer Declaration for Assignees

An assignee declaration should be provided when 1) the Trademark Holder or Trademark Agent has indicated that he/she is an assignee of a trademark and 2) the assignment of the trademark has not yet been recorded by the trademark office.

• Transfer Declaration for Registered Trademarks - Download
• Transfer Declaration for Marks Protected under Statute or Treaty - Download
• Transfer Declaration for Court Validated Trademarks - Download

Extra Documentation for Special Circumstances

• Opting In to Sunrise Services at the Point of Registering a Trademark
  • Verification of proof of use which must contain two elements:
  1. A signed Declaration of Use (to confirm the validity of the trademark data)
  2. A single sample of proof of use. (digital proof that the trademark is in use (e.g. picture of label, marketing material, product information etc.). Note: Physical copies of samples are not required.
• Trademark Registered in Jurisdiction with NO ONLINE DATABASE
  • Copy of an official trademark certificate

In most cases, the information provided in a Trademark Record is verified against the official trademark office’sonline database. If the trademark is registered in a jurisdiction where such online database is not accessible, the Trademark Holder or Trademark Agent must submit a copy of the official trademark certificate related to that specific trademark. An overview of the jurisdictions for which an online database is available will be provided inan addendum to these Guidelines.

• Expiring Trademark
  • Copy of the renewal request of the trademark

A copy of the renewal request for a trademark must be provided when the trademark registration period will expireduring the term for which a Trademark Record is submitted to the Clearinghouse.

API Documentation

The API commands for the Trademark Clearinghouse are listed below.

• Create Trademark - CreateTMCHMark
• Trademark Status - StatusTMCHMark
• Query Trademark List - QueryTMCHMarkList

• CreateTMCHMark

[COMMAND]
command = CreateTMCHMark

marktype = <TEXT>| <NULL>
markname = <TEXT> | <NULL>

goodsandservices = <LONGTEXT> | <NULL>
goodsandservices# = <LONGTEXT> | <NULL>

trademark-jurisdiction = <COUNTRY> | AP | BX | EM | EP | EU | GC | IB | OA | OT | QZ | WO | <NULL>
trademark-class# = <INT> | <NULL>
trademark-registrationnumber = <INT> | <NULL>
trademark-registrationdate = <DATE> | <NULL>
# trademark-expirationdate = <DATE> | <NULL>

period = <INT> | <NULL>

label# = <TEXT> | <NULL>
label0smdinclusion = <INT> | <NULL>
label0claimsnotify = <INT> | <NULL>
label1smdinclusion = <INT> | <NULL>
label1claimsnotify = <INT> | <NULL>
label2smdinclusion = <INT> | <NULL>
label2claimsnotify = <INT> | <NULL>
label3smdinclusion = <INT> | <NULL>
label3claimsnotify = <INT> | <NULL>
label4smdinclusion = <INT> | <NULL>
label4claimsnotify = <INT> | <NULL>
label5smdinclusion = <INT> | <NULL>
label5claimsnotify = <INT> | <NULL>
label6smdinclusion = <INT> | <NULL>
label6claimsnotify = <INT> | <NULL>
label7smdinclusion = <INT> | <NULL>
label7claimsnotify = <INT> | <NULL>
label8smdinclusion = <INT> | <NULL>
label8claimsnotify = <INT> | <NULL>
label9smdinclusion = <INT> | <NULL>
label9claimsnotify = <INT> | <NULL>


holder0entitlement = owner | co-owner | assignee | <NULL>
holder0organization = <TEXT> | <NULL>
# holder0name = <TEXT> | <NULL>
holder0street = <TEXT> | <NULL>
holder0city = <TEXT> | <NULL>
holder0state = <TEXT> | <NULL>
holder0zip = <TEXT> | <NULL>
holder0country = <COUNTRY> | <NULL>
holder0phone = <PHONE> | <NULL>
holder0fax = <PHONE> | <NULL>
holder0email = <EMAIL> | <NULL>

EOF

• StatusTMCHMark

[COMMAND]
command = StatusTMCHMark
id = <TEXT> | <NULL>

EOF 

• QueryTMCHMarkList

[COMMAND]
command = QueryTMCHMarkList

(optional)
markname = <TEXT> | <NULL>
marktype = <TEXT> | <NULL>
status = <TEXT> | <NULL>

first = <INT>
limit = <INT>
orderby = <TEXT>
wide = 0 | 1 | <NULL>

mincreateddate = <NULL> | <TEXT>
maxcreateddate = <NULL> | <TEXT>
minupdateddate = <NULL> | <TEXT>
maxupdateddate = <NULL> | <TEXT>
minexpirationdate = <NULL> | <TEXT>
maxexpirationdate = <NULL> | <TEXT>

EOF 

FAQs

1. 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.

2. 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 about Trademark Clearinghouse

3. How do I get access to the Trademark Clearinghouse?

   Access the Trademark Clearinghouse website here

4. 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.

5. What will the Trademark Claims notice that a registrant receives say?

   You can review a PDF sample notice here: Trademark Claims Notice [PDF, 163 KB]

6. 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 the Trademark Clearinghouse website for more details.

7. 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 on the Trademark Clearinghouse website.

   Registries or others using the data to support Sunrise and Trademark Claims services will also pay fees for this use.

8. 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
9. 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.

10. 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.
11. 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.

12. 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.

13. 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[PDF, 194 KB] for detailed information.

14. 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.

15. 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.

16. When will the Strawman be available?

    This capability is still being developed; more information will be available soon.

17. If I am having problems with my Trademark Clearinghouse account, where do I go?

    Customer support can be found on the Trademark Clearinghouse website.