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Should you send in your trademark to the Trademark Clearinghouse?

2013-03-21

The trademark clearinghouse is a central database for verified trademarks managed by Deloitte and IBM. Getting your trademark listed in the database means that you will not have to provide documentation, every time you participate in the sunrise periods (special rights) of the new top level domains. This service will save you time, and you avoid the risk that your documentation is rejected and you will not be able to register your domain name. There have been much information about what the trademark clearinghouse is and how you should submit, however it misses a central questions for trademark owners.

The Trademark Clearinghouse

To get your trademark listed it costs EUR 275 every year via us. As a trademark holder you need to consider already now how ambitious your new top level domain strategy should be. In general my short answer to this question is: It depends. If you have one trademark and only wish to register a few of the hundreds of new top level domains then it is not worth getting the trademark validated. For example if you run a restaurant in Berlin and is only interested in .berlin, then you are better off by not listing the trademark. You have more manual handling, but we will make sure that you send in the correct documentation at the time of the Sunrise phase when queueing your domains. However if you have an extensive domain name strategy, where you plan to protect your brand name for various top level domains, then you should get listed, when the trademark clearinghouse opens. It will save you so much administration and you will not have to worry about whether your trademark is approved or not. As an added bonus getting your trademark listed will ensure that you are informed during the first 90 days after the launch of infringing domain names. You will be able to submit your trademark details via their website from the 26.3. Here is the lowdown:Owners of a registered trademark and licencees of the trademark can submit their trademarks. Trademarks that are accepted 1) Nationally or regionally registered trademarks (US, EU etc.) It must be registered at the time of verification. 2) Court validated trademarks Validated via court. Unregistered trademarks, but well-known protected brands 3) Trademarks protected by statute Protected by national law. E.g. geographical indications Trademarks that are not accepted - if they contain a dot (.) - if they are subject to succesful invalidation, cancellation or rectification. (If a registered trademark is pending invalidation, then they can still be submitted, however you need to make sure that the pending status is removed). - patents and designs - any mark that is not at least of national effect Marks that are eligibible - Marks Consisting of letters , words, numerals and special characters. - For Marks not exclusively consisting of letters, only the characters will be recorded (e.g. logo with text) Information to fill out in the form - name of the mark - registration number - registration date - application number (not mandatory) - application date (not mandatory) - jurisdiction (Country or region) - expiration date - description of goods and services class (in the user interface here will be a scroll down) - detailed description of goods and services (copy/paste from the certificate) - information about the holder (exact info about the holder. Active contact details) - Status of the trademark holder (Owner/Licensee/assignee) (not mandatory, but could be requested) Documentary evidence to participate in Sunrise services Proof of use: evidence for the bona fide use of the trademark 1) A signed declaration of use (a sample text can be found at the TMCH site) 2) A single sample of proof of use (screenshot of advertising material, brochures, catalogues, product manuals in jpeg. Business cards, URLs or emails are not sufficient evidence.) TMCH can request a copy of the trademark certificate, trademark renewal document, license declaration and assignee declaration. Payment The fee is EUR 275 for a 1 year listing. What happens when the record is submitted In the user interface some labels that are identical to your trademark will be generated. These labels are the basis for the exact match, when you apply in the sunrise period. Eg. if DELOITTE is submitted the only label will be deloitte. If DELOITTE CONSULTING is submitted labels could be deloitteconsulting and deloitte-consulting. Up to 10 labels can be selected. After 10 then there is a cost of USD 1 per extra label. About characters Any language is allowed as long as it matches the trademark. If your trademark is in Cyrillic, then it will be accepted, however please notice that a future registrar might only allow for Latin character domains, which could mean that it is not possible to use the trademark for that specific sunrise period. It has also been seen earlier that registrars allowed non latin trademarks to be translated. symbols like ! and + can be omitted or replaced by hyphens (-). @ and & can either be omitted or translated to the language of the trademark. In this article I have given a full example of the domain names possible.Verification process All documentation should be provided at once. The verification process will take 1-20 days. Verification will be based on two factors: 1) Is all info correct? 2) Does it meet the eligibility requirements? If this is not fulfilled then the application will not be rejected. However the trademark holder will be notified to correct the record, and will have one chance to correct it, otherwise the application will fail.

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