Deloitte publishes Trademark Clearinghouse guidelines


Deloitte has published guidelines for submitting trademarks into the Trademark Clearinghouse, which will help to protect rights under the generic top-level domain (gTLD) programme.

The financial services company, which is validating marks submitted into the centralised database, said on Tuesday that they must be nationally or regionally registered, court-validated or protected by statute or treaty.

Deloitte will not accept pending trademark applications, city or regional marks, or marks registered but later invalidated or cancelled. Unregistered marks, including common law marks, may be accepted if approved by a court.

The Clearinghouse, which opens on March 26, will support sunrise (open before general registration) and trademark claims periods. Under the claims service, the Clearinghouse will send warnings to people trying to register a domain that matches a validated mark.

Deloitte confirmed that it will accept only identical matches to eligible marks but if it receives marks containing special characters that cannot be used in a domain, it will either omit them or replace them with hyphens.

When verifying word marks, the characters in the submitted mark must be in the exact order as they appear in the registered mark. Device marks will be considered an exact match if their characters are predominant, clearly separable from the device element and in the same order as the original text.

For both word and device marks, if there is any doubt about the order in which the characters appear, the description provided by the trademark office will prevail.

When submitting data, rights owners must provide information including a mark’s registration date and a description of the goods and services it covers, as well as evidence to show that they use it.

The guidelines were as expected, said Mark Partridge, partner at Partridge IP law in Chicago: “There were no surprises at all.”

“Brand owners can now see the Clearinghouse as a reality. IP owners have been hearing about it, but now they need to start making plans about potentially using it,” he added. 

He said the Clearinghouse will initially be a “hassle and inconvenience” for IP owners, especially as there doesn’t appear to be a system for submitting batches of trademarks simultaneously and there could be large up-front costs.

“But the Clearinghouse will save IP owners money in the long run,” he said.

The Internet Corporation for Assigned Names and Numbers, which is managing the gTLD programme, has targeted April 23 for launching the first new domains.

This article was first published on 28 February 2013 in World IP Review

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