Pros and Cons of the Trademark Clearing House
As the time draws closer to the launch of the new gTLD’s more and more organizations have to decide if they want to add their trademark terms to the Trademark Clearing House (TMCH) for protection. I do see some value in this but there are also a lot of gaps in the system, which I will share with you. Each company needs to weigh the pros and cons of submitting their trademarks to the TMCH and decide make the most sense for their brands.
During the 2013 Annual INTA Meeting I participated in a great roundtable discussion on the matter. It was moderated by Sheri Falco, general counsel for ICM Registry LLC, who was wonderful and had a lot of information to share. We were lucky enough to have one of the members of Donuts at the table as well and provided more insight into the process. Donuts is a company that had applied for 307 new TLD’s but will probably be the registry of about 200 of the new TLD’s. I will share what I have learned and give some of the pros and cons of adding your trademarks to the TMCH.
Pros of the TMCH
Access to Sunrise Service
Each new gTLD will offer trademark owners, who have their trademarks registered in the TMCH, a grace period prior to the TLD going live to register their trademark domains with that TLD.
Ability to Block Registration of Domains
Several registries such as Donuts will allow trademark owners, who have their trademarks registered in the TMCH, to block registration in all the TLD’s that they operate. Donuts will enforce this block for five years while Google, who will possibly operate 100 domains, will have this in place indefinitely. Each registry will have the freedom to help protect domains in any way they like.
Warning Notice When Trying to Register a Domain
When someone tries to register a domain that is already in the TMCH they will get a warning notice that the domain matches a trademark term in the TMCH. If, after receiving and accepting the notice, they continue to register the domain, the trademark holder will receive notification of the domain name registration.
I should note here that having proof that the registrant knew this was a trademarked term and still continued to register the domain could help in the proof of bad faith in a URDP (Uniform Domain-Name Dispute-Resolution Policy) case.
10 Additional Domain Names are included per Trademark Terms
When you register a trademark in the TMCH you can add 10 additional domain names associated to that trademark to be covered. Anything above the 10 will be an additional cost.
Cons of the TMCH
Sunrise Service are Only for Exact Matches
During the Sunrise period you can only register exact matching trademarks, therefore you would still need to monitor that TLD for any misspellings or misuse of the trademark.
Warning notices are only for the first 60 days of the gTLD Going Live
The warning notices mentioned in #3 of the pros are only for the first 60 days after the TLD goes live. Therefore to keep informed after that period you would need a monitoring service such as BrandProtect to be notified of any newly registered domains. The other thing to note is that this is not blocking the registration of the domain but rather just notifying both the offending party and the trademark owner that this is has happened. Therefore action to have the domain removed or to remove content from the domain, should it become active, is still needed.
When you add a trademark to the TMCH you can choose to have it covered for 1, 3 or 5 years. What this means is that you will be covered, still for only 60 days of notifications, for all new TLD’s that become active in this time period. Again, and I feel like a broken record, but if you are only covered for 60 days why not just continuously monitor with a company who will also have access to all the registered domain in the new TLD’s.
Notifications Only Works on Exact Matches
Another downside to the TMCH is that trademark owners will only be notified of an exact match to the trademarks or additional domains they have in the TMCH system. And I can tell you from my 10 years experience in the brand protection arena that if someone wants to use your trademark they will find a way. So just like defensive domain registration you can try to capture everything but it’ not possible, therefore you need to be diligent by tracking and monitoring your brand.
A point of note that is neither a pro nor a con but worth mentioning is that a URS (Uniform Rapid Suspension), the new dispute resolution that is only for the new gTLD’s can be filed whether or not your trademarks are part of the TMCH.
There is no right or wrong answer as to adding your trademarks to the TMCH system it is up to each trademark owner to determine what is important to them. Some owners have said that they will just continue to monitor their brands as they have been and not get involved in the TMCH and others see some benefits to having their trademarks in the system. Either way no matter what you choice to do it is important that you take steps to protect your brand from abuse and misuse in all areas of the Internet.
Would you be submitting your trademarks to the TMCH? Why or why not? share with us!