Trademark Clearinghouse services

Sit back and relax: Dennemeyer protects your trademarks in the new gTLD era

The launch of new web addresses, known as generic top-level domains (gTLDs) by the Internet Corporation for Assigned Names and Numbers (ICANN) will greatly expand the domain name system and is bound to significantly impact the way in which the Internet is experienced by worldwide users and trademark owners. ICANN has launched the Trademark Clearinghouse to enable trademark holders to track possibly infringing domain name registrations and to preferentially register their trademarks as domain names under one or more of 1.000 planned new generic top level domains. Dennemeyer & Associates provides the new service of registering trademarks with the Trademark Clearinghouse in order to help clients better enforce their brand and secure sustainable advantages in the digital economy.

Dennemeyer & Associates in cooperation with an ICANN accredited registrar and registered Trademark Clearinghouse Agent, provide effective services for registering and validating trademark information with the extensive requirements stipulated by ICANN’s Trademark Clearinghouse. These services complement Dennemeyer & Associates’ comprehensive legal services in the field of searching, monitoring, filing and prosecuting trademarks and domain names.

Why register a new gTLD?

Following the 2011 decision to allow applications for new generic Top-Level Domains (new gTLDs), the Internet Corporation for Assigned Names and Numbers (ICANN) has announced the creation of approximately 1.000 new extensions that will go beyond the dot-com world. These new gTLDs (e.g. .paris, .book, .beauty, .auto) will enable companies to improve their brand visibility and could become instrumental in marketing campaigns. Half of them would be open for registration of second level domains allowing the public to register domains such as loreal.beauty, amazon.book, or hyundai.auto.

The Trademark Clearinghouse

In order to support the functioning of this new program and to help trademark owners protect their trademarks against infringing domain registrations, ICANN has launched a virtual trademark office for the internet domain names world: the so-called “Trademark Clearinghouse”. The Trademark Clearinghouse is a centralized database that will accept and verify trademark information submitted by trademark holders prior to and during the launch of new gTLDs to enable them to take part in the “Sunrise Period” and the “Trademark Claims Service”.

Act in the “Sunrise Period”

The Sunrise Period allows trademark owners to receive a notification at least 30 days prior to any new gTLD launch and grants a priority right to register certain domain names before they are offered to the general public.

This service allows applying for the registration of one or more domain names, which contain the complete and identical textual elements of a trademark. For example, the trademark “Dennemeyer & Associates” would allow the preferential registration of the domains dennemeyer-associates.law and dennemeyerandassociates.law.

According to the eligibility criteria only the holders of nationally or regionally registered word marks, court-validated trademarks, trademarks protected by a statute or treaty, are accepted for applying with the Trademark Clearinghouse. Further to detailed information relating to the trademark registration, proof of use and a declaration of use for each trademark must be provided to be eligible to Sunrise Periods.

The Trademark Claims Service

Besides the Sunrise Period, the registration with the Trademark Clearinghouse offers an additional Trademark Claims Service. This is a notification service to warn both domain name registrants as well as trademark holders that a domain name matching with labels included in a trademark record has been registered. This service starts with the Sunrise Period ending 90 days after the official release of a new gTLD and enables trademark holders to take appropriate actions, e.g. to enter into domain name dispute resolution procedures.

A domain label is a part of a domain name, such as, for instance, “dennemeyer-law” from the domain name “dennemeyer-law.com”. Labels are automatically generated by the Trademark Clearinghouse on the basis of the trademark record. The first ten labels are included in the Trademark Claims Service in each recorded trademark.

The registration with the Trademark Clearinghouse is valid either for a period of 1, 3 or 5 years at the choice of the trademark owner and can be renewed thereafter.

Act today to secure the future of your gTLD

For recording your trademarks with the Trademark Clearinghouse, or if you need more information about the Trademark Clearinghouse, our global domain name monitoring services, or any other IP related service, please contact us at tmch@dennemeyer-law.com.