What is the Trademark Clearinghouse?

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GTLD Trademark Clearinghouse

Matt:  Hi, It’s Matt Plessner, and welcome back to Internet Law Radio.  Today, we’re going to be talking about some recent updates in Internet Law, specifically, regarding the gTLD Trademark Clearinghouse.  What is that exactly?  Well, we are going to talk about that, and, of course, also what’s going on with that as we speak once again with Attorney at Law from Traverse City, Enrico Schaefer.  Enrico, nice to see you.

Enrico:  Great to be here, Matt.

Matt:  Well, great to have you here.  So, for those people who don’t know, Enrico, what is the Trademark Clearinghouse?

Enrico:  Well, the Trademark Clearinghouse was created by ICANN [Internet Corporation for Assigned Names and Numbers], and so basically ICANN governs the domain name system.  And what’s about to happen over the next two years, Matt, is perhaps the most dramatic thing that has happened in the history of the internet since the birth of the internet, and that is the ICANN has decided to move things to the right of the dot.  So instead of .com, .net, .org, [or] .gov, now there are hundreds of new top level domain extensions that are being rolled out.  Hundreds of new registries that are going to be offering domains for sale.  So for instance, .church, .best, .black, .blog, .app, .book, .cab, .microsoft, .google....so all these new domain extension are going to roll out, which allows people to register what were otherwise unavailable words as domain names on these new extensions, and so trademark owners got upset, and rightfully so because they have a hard enough time trying to protect their brands from cybersquatting, which is the registration of a domain name of someone else’s trademark currently.  And now with all these hundreds of new domain extensions rolling out, they’re like "Hey, you know, what about us?  How are we going to protect my brand, Traverse Legal, across all these new extensions?  Do I have to register Traverse Legal dot-everything in order to protect myself from a cybersquatter or someone who is trying to infringe my trademark with one of these new TLDs?"  So they created the Trademark Clearinghouse to help trademark owners protect their brands. 

Matt:  Ok, and exactly how does this work exactly?  Like, we’ve talked a little bit about cybersquatting in the past, and with my business, for example, Solid Sound Music, versus if there was a local music store called "Solid Sounds," it sounds like it could be a similar problem, solidsoundmusiconline.com; solidsoundmusiconline.dj, or something like that.  How do they usually resolve this?  Are there restrictions?

Enrico:  Well, so there are.  Basically, you’re not allowed to register someone else’s trademark or something similar to their trademark as a domain name in order to divert their business.  So you can’t in bad faith try and target someone else’s trademark as a domain name.  So the way this Trademark Clearinghouse works is basically two-fold:  If you have a registered trademark, you can put your registered trademark into the Clearinghouse for a relatively small fee, about a thousand dollars or less per mark, and what that is going to get you … it’s going to get you the ability to register your domain name during the Sunrise period of every new launch prior to the domains becoming available to the general public.  So, we have a trademark for Traverse Legal; we have a trademark for ‘Changing the Way our Law is Practiced’.  We have lots of trademarks.  So we can, by putting our trademarks into the Clearinghouse and paying the fee, what we could do is we will get notice before, say, .bible or .dot, or some of these new extensions roll out, we’ll get noticed that we have the ability to register our trademark as a domain name before anyone  else.  So that will be a benefit if it’s an important new TLD.  So for instance, we certainly will want to be able to register TraverseLegal.law before anyone else in the general public can register that.  So the Clearinghouse gets you into the Sunrise period, the pre-launch registration, before they roll out a new TLD.  It also gets you this Claims Service benefit, which basically is this: every time someone goes to register a domain after launch (after the Sunrise period is over) anyone that goes to register a new domain name on one of these new extensions, will get notice of your trademark.  It will say, “Hey!  Before you pay for this domain, you should know there’s a registered trademark out there for Traverse Legal."  That will preclude the domain owner rom saying, "Oh, I didn’t know about your trademark." Of course, they did.  They were given specific notice through the Clearinghouse.  And if they decide to then register the domain, then you as a trademark owner will get notice of their registrations so that you can make sure they don’t use it for any purpose that would divert your traffic or use your brand.  So, it would be very difficult for someone to use TraverseLegal.law for any purpose that would not infringe our Traverse Legal trademark, because that’s what we do … Law.  But if someone were to register TraverseLegal.bible and there was some bible group somewhere, well … that’s probably going to be ok.  So, the Clearinghouse is an added benefit to help trademark owners protect their marks as part of this new rollout of new gTLDs.

Matt:  Well, this sounds like something that is very helpful, and in lieu of all this confusion that may come up soon, we’ve talked a lot about trademarks...my business doesn’t really have anything trademarked.  It’s just the name of the business.  Does it have to have a trademark for this to be legit?

Enrico: Yes…the answer is yes.  And there are some exceptions, but generally, you need to have your trademark registered in some country in order to get into the Clearinghouse.  So, this is a benefit for people essentially who have … registered their trademarks already.  So there’s two things that people should be aware of here, Matt.  One is if you haven’t registered your trademark and you don’t know how to register your trademark, you need to get with a qualified trademark registration attorney and go through the process of getting your trademark registered.  There’s lots of benefits to having a registered trademark.  The Trademark Clearinghouse is just one of them.  The second thing is if you have a registered trademark, you need to get with a Trademark Clearinghouse attorney, someone who understands how to get the mark properly into the Trademark Clearinghouse and get your marks that are registered into the system, because it’s going to be very difficult for you to know what opportunities to register domain names on your brand will be, or to protect from third-party cybersquatting on your trademark if you are not part of the Trademark Clearinghouse.  Now, Trademark Clearinghouse, Matt, is not a cure-all, because guess what?  It only protects your exact mark.  So if someone registers a slight variation or adds “the” or “a” or some other variation to the domain registration, your trademark in the Clearinghouse isn’t going to give you notice; isn’t going to give you Sunrise period rights.  So, you still have to do traditional online monitoring of your mark to make sure no one is trying to steal your customers, your good will, or your brand.   

Matt:  Well, Enrico, once again I want to thank you very much for talking about this, these recent developments in internet law and the Clearinghouse. 

Enrico:  And if anyone wants to contact me at TraverseLegal.com, we are helping our clients get into the Clearinghouse and helping clients understand the process and taking over that process for many of our clients.  So, feel free to contact us if you need any help with this.  It’s a pretty important item for all trademark owners.

Matt:  Absolutely, so contact Enrico or one of the Traverse Legal attorneys there and they will help out in assisting you.  Once again, this is Matt Plessner report for Internet Law Radio. 

 

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