INTA 2013: Deloitte updates on Trademark Clearinghouse


Vicky Folens of Deloitte listed the “common” errors that Trademark Clearinghouse users are making at the INTA annual meeting in Dallas.

The Clearinghouse, which helps with protecting rights under the new generic top-level domain (gTLD) programme, is managed by financial services provider Deloitte and technology company IBM.

Folens, the Clearinghouse’s project manager, said the most common error is that many trademark owners are registering accounts as trademark agents, which can register marks in bulk amounts and must pay a $15,000 deposit in a pre-pay account. Trademark owners can pay for smaller numbers of marks without a deposit.

Second, Folens said, some IP owners are submitting trademarks with a dot – “which is not allowed”. That rule is to ensure that a .word in the Clearinghouse never qualifies as a trademark, as gTLDs (.words) do not qualify as trademarks under existing law.

The third common error is that some registrants are not filling out the description of goods and services section, instead referring to their trademark certificates. But the Clearinghouse system doesn’t accept referrals when verifying trademarks, Folens said.

In the session, named ‘New gTLDs: brand strategies in cyberspace’, Folens said that on March 26 there were about 1600 trademark registrations in the Clearinghouse. About 100 trademark agents and 500 trademark owners had created an account, she said.

One of the Clearinghouse’s roles is to send warnings to people registering domains matching marks in the Clearinghouse. Folens confirmed that warnings will contain information about all marks that exactly match a domain name, including their full description of goods and services.

The first new gTLDs are expected to have been evaluated in August this year.

This article was first published on 08 May 2013 in World IP Review

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