The Trademark Clearinghouse providers will: (i) verify trademark data; and (ii) maintain a database with the verified trademark records.
There are four types of eligible marks for inclusion in the Clearinghouse:
- Nationally or regionally registered word marks.
- Word marks validated through a court of law or other judicial proceeding.
- Word marks protected by a statute or treaty.
- Other marks that constitute intellectually property may be included by arrangement with a registry.
In order to assist you, we will need the following information to be provided:
- Information about the trademark holder
– Contact information
– Whether you are the trademark holder, agent or licensee - Trademark information
– Trademark
– Registration number
– Mark Type (Registered, Court Validated, Treaty or Statute)
– Class of goods or services
– Jurisdiction of registration
– Proof of use (in order to participate in registry Sunrise periods) including:
– Declaration stating that the trademark is being used as described.
– A sample showing the mark in use.
During the Trademark Claims period, anyone who registers a domain name that matches a recorded mark in the Clearinghouse will receive a notification. A notice will also be sent if someone registers the domain name.
Putting your trademark in the Clearinghouse does not mean that you automatically get your trademark as a domain name in all new gTLDs. The Clearinghouse will not block registrants from registering domain names, even if exact to your mark. It also does not provide for dispute resolution. Since the protection is for identical marks only, owners will have no protection against misspelled versions of the marks. It does however offer an early opportunity to intervene in the registration of a confusing domain name, but you must monitor for marks which are “close” to yours but not exact.
However, up to 10 domain names corresponding to one trademark record are included in the initial cost, additional names will be subject to a fee. This means if you register Shapiro Cohen, you can also put Shapyro Cohen, Chapiro Cohen, Shapiro Coen, and anything exact will be noticed.
While the Clearinghouse does not offer complete protection, it does allow you entry into all Sunrise periods for all new gTLDs so that you have an opportunity to register before the general public. If you wish the new registries to be monitored for confusing marks there are none at this time, and no established service available yet. If it’s important to you we can try to provide monitoring of new gTLDs and work out a reasonable cost for doing so (eventually someone like Thompson Reuters may offer such a service).
** We have recently been advised that a monitoring service may now be available at an attractive price. We are looking in to this and will advise further when we have more reliable information.
In order to register, an application and appropriate fee must be submitted.
Fees depend on the number of marks you would like recorded, as well as the length of time for which you wish them recorded. Discounts are available for bulk applications of multiple marks.
In Summary
What you get:
- Preferred access to sunrise (register your trademark as a domain name in an new tld before the general public).
- Receive notice of identical attempts to register.
- Access to URS rapid takedown service without proving your rights.
- 10 similar domain names recorded for every trademark entered in the TMCH.
Not Included:
- List of all possible confusing marks (they may eventually provide a monitoring system but in the early stages if you wish to have a broader alert, you will either have to monitor them yourself or arrange with us at a price point that makes cost benefit sense).
- TMCH is simply a notification system.
- In the event your mark is registered, the Clearinghouse does not take action against infringers, and you are solely responsible for challenging via the URS or otherwise.
Please note: These are minimum fees. Because this is an entirely new service, we have tried to set the fees at a low level to encourage enrolment in the TMCH. Please understand that experience may prove that these fees are adequate, too high, or too low. Thus, we reserve the right to adjust the above fees on 1 months’ notice, should they be inadequate for what transpires. Should we need to perform additional requests for information, material, perform extra work, follow up, clarify, or attend to an urgent situation, extra fees may be charged above and beyond these minimum charges based on time spent.
Questions? If you have any questions please call 613-232-5300 to speak to a professional or email us at OwnWhatsYours@aventum.law.
