Right first time


Lieve De Kinder and Bart Mortelmans

Right first time

Registering trademarks in the TMCH is an important opening move for companies towards protecting their brand. TBO spoke to Belgian TMCH agent bNamed.net about how it can help.

With more than 1,000 new generic top-level domains (gTLDs) launching this year and next, for most companies simply registering their trademark under every extension is no longer a feasible solution for protecting their rights. But completely ignoring all those new extensions certainly isn’t a good idea either. It will be important to pick the extensions that are significant for the trademark owner and its business. In all cases, a registration in the Trademark Clearinghouse (TMCH) is needed as a first step.

At the time of writing, the TMCH holds records for 28,611 trademarks. Once a trademark is registered in the TMCH, a trademark owner can enforce its trademark in three different ways. First, every new extension will start with a sunrise period lasting at least 30 days (but usually 60 days), in which trademark owners with a TMCH record will have priority over registering their marks.

Once the sunrise period is over, the ‘claims service’ begins, lasting 90 days. The TMCH will send a notice to anyone trying to register a domain name matching a TMCH record that they might be cybersquatting. It is still possible to register the domain name, but a registrant will not be able to argue later that he wasn’t aware that this trademark existed. If the domain name is indeed registered by someone else, the trademark holder will receive a warning.

The third service offered by the TMCH also starts once the sunrise period is over. It is called the ‘extended claims service’, which works as long as the TMCH registration is kept active. It’s a bit different to the regular ‘claims service’, because only the trademark owner will receive a warning when the trademark is registered as a domain name by someone else. The person who registers the domain name won’t get a warning that he’s infringing someone else’s trademark. At the moment, 33,034 of those warnings have been sent out by the TMCH.

Most trademark owners and even trademark offices prefer to use a registered TMCH agent to perform their request to register a mark. As Lieve De Kinder from Belgian TMCH agent bNamed.net explains: “You only get two shots to get the request right, so it is important to know what you’re doing, and what will be accepted and what will not.

“With our experience, we are able to get more than 95 percent of marks to pass first time. All the requests we have done so far have been accepted. To be able to reach such a high success rate, we have automated large parts of the request process. The most important data of European trademarks are gathered automatically, and for the trademark offices for which we see the most requests (currently the Office for Harmonization in the Internet Market and the Benelux Office for Intellectual Property), we can automatically fill out almost all the information, leaving no room for errors.

“On top of that, we still verify every request manually before sending it on,” De Kinder says.

Proving it

Before participating in a sunrise period, rights owners must provide a ‘proof of use’ to the TMCH. Without this, they can use only the claims service and extended claims service. Not everything is accepted as a proof of use.

TMCH specialist Bart Mortelmans from bNamed.net explains that for many clients this can be confusing.

“Reasonably quickly after we started providing TMCH services, we gathered the proof of use ourselves. In most cases we can simply find such proof online. That way we don’t have to bother the client with this and we know that the evidence we select will be accepted.

"You only get two shots to get the request right, so it is important to know what you’re doing, and what will be accepted and what will not."

“For example, the TMCH won’t accept a copy of a business card or a copy of an invoice containing the trademark. It won’t accept a link to a website as proof of use, but will accept a screenshot of that same website,” he says.

Once a TMCH registration is in place, a so-called signed mark data (SMD) file, similar to a password to the TMCH, can be downloaded. With that file, a domain name can be registered during sunrise periods.

“As a registrar offering services under every single domain name extension, including all the new ones, we have fully integrated the TMCH system with the domain name registration system,” Mortelmans says.

“If needed, a client will be able to access his SMD-file, but when viewing a TMCH registration he will also see an overview of all the TLDs in their sunrise period, and with only a few clicks a domain name can be registered.”

However, just like with the launch of the .eu TLD many years ago, the TMCH is being abused, says Mortelmans. 

“I have seen requests being accepted by the TMCH that make me think the trademark was probably registered with the sole purpose of claiming a generic domain name,” he says.

Many of the domain name registrations under existing TLDs are defensive registrations, but some companies are already using their new TLDs as their primary websites. If the end result is a catchy and memorable domain name and the TLD is relevant for the industry in which the trademark owner operates, the new extensions offer some useful new opportunities.

Lieve De Kinder is marketing coordinator at bNamed.net. She can be contacted at:

Bart Mortelmans is managing director at bNamed.net. He can be contacted at: bart@bnamed.net

TMCH. trademark registration, gTLDs, brand protection

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