Trademark Timelines and Rights

The Trademark Clearinghouse (TMCH) is poised to open Tuesday of next week, which means that March 26 will be the first day that brands or their agents can register their trademarks with Deloitte’s system. That’s the FIRST day, not the last.

In fact, there is no deadline for registering trademarks. The TMCH will accept registrations on a rolling basis, as trademark owners submit them. It is up to the trademark owner to decide when it will register, and this is a decision that should be driven by each trademark owner’s particular protection needs.

For example, if a company is concerned about its presence in Internationalized Domain Names (IDN) – in non-Latin scripts such as Cyrillic, Japanese, Arabic, or Hindi – they should plan to file their trademarks early because the IDNs will be delegated first.

Deloitte’s announcement this week indicates that, even if ICANN is able to meet the projected April 23 date for the first new gTLD delegations, the Sunrise periods for those gTLDs may not take place until late May. Thus, trademark owners should, for the most part, plan on registering their marks in the two months after March 26.

Other TMCH timeline changes made after vigorous debate with ICANN stakeholders:

Trademark Claims service extended from 60 to 90 days

The Trademark Claims Service (more detail here) alerts both the registrant and the registry when someone tries to buy a domain that is an “Identical Match” to a trademark found in the TMCH.

This notification system originally was set to run for 60 days after general registration opens in that gTLD. Registry Operators had the option to run it longer. Now, the notification system will be required to run for at least 90 days.

The Impact:

This change provides an extra 30-day cushion. The Trademark Claim Service is an alert system and does not block an attempted registration. So it might stop some registrants from registering “Identical Match” domain names, but it will do little more than slow down more determined cybersquatters.

Clearinghouse will accept previously abusive registrations

Each trademark owner can submit up to 50 “domain labels” that were registered abusively in the past. For example, if FairWinds Partners filed a successful UDRP complaint to reclaim FairWWindsPartners.TLD, then it could submit “FairWWindsPartners” to the TMCH. The trademark owner has to prove that the “domain label” was registered abusively by showing a successful URDP complaint that resulted in a domain transfer to the trademark owner.

The Impact:

The TMCH will become the repository of more than just “identical matches,” at least for the purposes of the Claims service. Claims notices will be sent to the registrant and the rightful owner whenever there is any attempt to register “domain labels” as domain names. Again, the benefit of the Trademark Claims Service is limited, but it provides a broader scope of protection.

Each Sunrise period will be preceded by a 30-day notice

The Sunrise period will allow trademark owners to register domains that are identical matches to their trademark before cybersquatters have the chance to register the domains. Now, 30 days before the Sunrise, gTLD Registry Operators will have to inform the public of the timing and rules of the Sunrise.

The Impact:

Trademark owners will have time to prepare to protect their marks with each wave of gTLD launches.

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