Fish Alert: Recording Your Brands in the Trademark Clearinghouse for the New gTLD Launch —€“ Timing May Be Everything

Recording Your Brands in the Trademark Clearinghouse for the New gTLD Launch – Timing May Be Everything

It is anticipated that the first new gTLDs may be delegated as early as September. While there has been slippage of the launch date in the past, it surely will happen soon.

The first new gTLDs to be delegated will be the 100 or so "internationalized" gTLDs (those in non-Latin scripts such as Chinese, Arabic, or Cyrillic). Once the process gets rolling, ICANN believes it can delegate as many as 20 new gTLDs per week. There are approximately 1,300 possible new gTLDs that may soon coexist with the familiar .com, .net, and .org.

To help brand owners protect their marks, a new Trademark Clearinghouse has been established, jointly run by Deloitte and IBM. A trademark owner may record in the Clearinghouse (1) registered trademarks (excluding state registrations), (2) court-validated common law marks, and (3) trademarks protected by statute or treaty.

Only about 7,000 trademarks have been recorded in the Trademark Clearinghouse in its first four months or so of operation. This cautious "wait and see" approach may be prudent, but waiting too long to record marks risks delays and not being able to participate in Sunrise registration periods for new gTLDs of interest. While each new gTLD registry must give a 30-day notice prior to the launch of Sunrise registrations, there is no guarantee that recordation can be accomplished in this time frame —€“ especially with so many trademark owners evidently sitting on the sidelines who may now all rush at once to record their marks. When recording a registered trademark that is to be relied upon for a Sunrise domain name registration, you must also include proof of use of the mark, which must be verified by the Clearinghouse, risking further delay.

Thus, one option is to record your marks early, even if you do not know for certain a new gTLD of interest will in fact be delegated. If you wish to be more involved in the process and record marks only after having greater confidence that a new gTLD of interest will actually be delegated, you can monitor the signing of individual registry agreements at ICANN's website at http://www.icann.org/en/about/agreements/registries. Though signing a registry agreement is not an assurance that the new gTLD will be delegated, it is a very good indicator and may provide more of an "early warning" than the 30-day notice of the Sunrise registration period.

More information on Sunrise registrations and the "claims/notification" service provided by the Trademark Clearinghouse is described in detail in our Trademark Clearinghouse Fish Alert. General information about the new gTLD program can be found on Fish’s Domain Names resource page.

If you have any questions, please contact your Fish & Richardson trademark attorney or Keith Barritt ([email protected]).