On March 26 the Internet Corporation for Assigned Names and Numbers (ICANN) launched its Trademark Clearinghouse (TMCH), a major step in the overall rollout of the new generic top-level domains (gTLDs). CSC Digital Brand Services has been approved as one of the first authorized TMCH agents and has a highly experienced team ready to help you navigate the process quickly and smoothly.
Registration in the TMCH is mandatory for organizations wishing to participate in Sunrise periods for any of the new gTLDs and thus essential for brand protection. Registering in the TMCH also enables you to receive an alert in the event that second-level domain names matching your mark are registered. Having your marks in the TMCH also provides you with proof of use for your registered marks, making it easier to deal with potential disputes.
Understandably, brand owners still have many questions about the TMCH process. The CSC Digital Brand Services team is here to answer your questions and provide strategic advice. Among the questions, there are several myths that warrant clarification:
It isn’t first-come first-served.
The TMCH is a repository of data only, and trademarks from many jurisdictions can coexist in the TMCH. TMCH processes are designed to confirm the validity of data, not to make determinations on the substance or scope of rights held by a particular party. If two different rights holders try to register the same mark as a domain name in the same TLD, the registry will have a process for resolving this.
A registration in the TMCH will not block third-party registrationsth
Simply registering in the TMCH does not provide trademark holders with protection in a new gTLD. You will still need to register your domain names during the Sunrise period. However, registering with the TMCH has the added benefit of providing you with notice should anyone seek to register a domain name that is an exact match of your trademark during the 90-day Trademark Claims period.
Going direct isn’t necessarily the easy option
While trademark owners can submit their trademark directly to the Trademark Clearinghouse, they need to consider important factors such as payment options (the TMCH requires pre-payment and a maximum of 10 trademarks per order), review of trademark data (the TMCH only allows one chance to make corrections before incurring extra fees), management of Signed Mark Data files (vital for participation in any Sunrise period), and the administrative burden (there will be significant time involved if you have a lot of trademarks to submit).
For these reasons, it is recommended that any trademark holder wishing to submit their marks to the TMCH select an agent to act on their behalf. CSC Digital Brand Services has the expertise to act swiftly when it comes to the registration, renewal and management of all your TMCH applications, as well as the management of associated Signed Mark Data files. With access to your current domain name portfolio, as well as historical Sunrise trademark data, we can help reduce the operational costs, risk and complexity involved.
As always when you partner with CSC Digital Brand Services, we provide you with dedicated, strategic advice so that you can make smart decisions regarding the selection of domain names to register.
We understand there are plenty of questions around the TMCH, so please let us know how we can assist you with this next phase of the gTLD program.