Deloitte: clearing the road to the Trademark Clearinghouse


Vicky Folens

Deloitte: clearing the road to the Trademark Clearinghouse

Vicky Folens, senior manager at Deloitte, helps trademark owners get to grips with recording marks in the system.

With ICANN’s rollout of new gTLDs on the horizon, it is increasingly important for rights owners to take the optimum approach towards safeguarding their trademarks. The Trademark Clearinghouse (TMCH) is the cornerstone of the rights protections offered in the expanding universe of domains and so it is imperative that all trademark holders get to grips with using the TMCH before the launch of new gTLDs begins.

Since its launch at the end of March this year, the Clearinghouse has welcomed applications from trademark owners across the world. During this time, we have seen several common errors with submissions, which may delay or invalidate the processing of trademarks. All of these can be easily avoided as users become more familiar with navigating the new and initially unfamiliar system.

Trademark owner v. trademark agent

Among new users of the TMCH, one of the most frequent errors occurs at the registration stage. Many trademark owners inadvertently register themselves as a trademark agent, which requires a deposit of $15,000. Trademark owners who plan to submit their marks into the TMCH directly can easily avoid this route by opting to register as an owner, not an agent.

Before beginning to submit records into the TMCH, it is important to note which trademarks are eligible for registration. Only already registered trademarks or common law marks (that have been subjected to litigation) can be submitted for inclusion in the Trademark Clearinghouse. Any pending trademark registration applications cannot be entered at this stage.

Also, you need to ensure that when registering as a trademark holder, the information provided matches that of the trademark holder. If it is a mother company that is the owner of the trademark, then it is the mother company that should register with the Clearinghouse.

Defining goods and services

One of the key pieces of information that is omitted required from applicants, and which we are seeing being inadvertently omitted, is a description of good and services. Overlooking this field and inserting “see trademark certificate” or similar may mean that trademark owners run into problems in the future. Leaving this section blank will mean that when an alert or ‘Trademark Claim’ notice is sent to a domain name applicant whose desired name corresponds to a record in the TMCH, the alert will not include the required descriptive information.

"Many trademark owners inadvertently register themselves as a trademark agent, which requires a deposit of $15,000."

For US trademarks, the portion of the detailed description that appears between brackets denotes that the trademark is no longer protected for those specific goods and services. Hence, this information should not be completed in the detailed description of goods and services section. In addition, where some countries do not follow the Nice classification system (e.g. Canada), TMCH users should select N/A in the description of goods and services.

Character consistency

Any users that are submitting trademarks from non-English speaking countries should ensure that the detailed description of goods and services is provided in the same language as it appears on the trademark certificate. This is also vital when opting in for the Sunrise service.

We have seen cases where applicants leave out non-standard characters, such as accented letters and the German ß, from their marks. However, the name of the mark as reported to the TMCH must be an exact match to the name on the sample of use, so if the trademark has an accent in it so must the sample of use, and vice versa.

Declaring proof of use

The declaration of the proof of use is a key component of any submission to the Trademark Clearinghouse. We have seen cases of users modifying the original wording of this statement, which leads to their application being rejected. The declaration must remain exactly as provided and be signed by hand and dated.

Debunking the myths on marks

Inexperience with using the Trademark Clearinghouse has also given rise to a series of myths about how the service works. The most concerning of these is that brand owners should wait until the launch of the first new gTLD to record their trademarks in the TMCH. Opting to delay applications until this point is likely to leave trademarks completely unprotected as it can take up to 30 days for submissions to be processed.

Trademark owners who take the opportunity to be an early bird will not be penalised financially, since the first year of protection will only be counted from the release date of the first new gTLD. Therefore, by applying now trademark holders will receive an essentially free service for a few months, i.e. during the early bird period.

Another myth that has been circulating is that brand owners will have to individually submit their trademarks in order to be protected within each new gTLD. While this may have been true in the past, the launch of the Trademark Clearinghouse means that, for the first time, rights owners have access to a single, global repository of registered trademarks. Trademark holders can enter their trademarks once and be safe in the knowledge that they’ve taken crucial steps towards IP protection both domestically and internationally across all new gTLDs.

As the intellectual property community is all too aware, the imminent overhaul of the domain name market does present new threats to owners of existing trademarks. By being prepared and applying to the Trademark Clearinghouse as soon as possible, trademark holders can feel ready to embrace or at least properly manage what will be an interesting new chapter in the Internet’s history.

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This article was first published on 01 August 2013 in World IP Review

Deloitte, Trademark Clearinghouse, TMCH, gTLDs

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