Trademark Clearinghouse extends claims period


Trademark owners can opt to receive continuing warnings about potential cybersquatting in the new generic top-level domain (gTLD) space under new rules published on Wednesday.

The Trademark Clearinghouse (TMCH), which operates the warning system, had planned to stop notifying rights holders after 90 days, but has now extended that period indefinitely. A 60-day window was originally agreed.

Rights holders can only receive warnings about terms exactly matching a trademark registered in the TMCH. Once notified, they can take action against alleged infringers.

The TMCH, which is managed by Deloitte, said the decision to extend the claims service has been made in response to “market demand by IP holders for an open-ended notification solution”.

It added: “The service will only be available to trademark holders recording marks into the Trademark Clearinghouse and comes at no additional cost.”

Deloitte will charge $150 per mark per year, with small discounts available for three and five-year registrations. Under an advanced pricing model, trademark agents receive discounts as they earn ‘status points’ from registering or renewing large numbers of trademarks. 

The continuing warning system will not be mandatory, a TMCH statement said.  

Jan Corstens, projector director of the TMCH, explained that the extension of the claims service will “significantly improve” its value to the IP community.

“We’re pleased to provide this service as an additional benefit to mark holders, beyond the mandatory 90-day claims period, which was originally instructed by ICANN,” he said.

The news comes as the TMCH reports that 20,000 trademarks have been registered in the database, open since March this year. But this figure is only a fraction of the number of trademarks registered globally; in the US, nearly 80,000 marks have been registered in 2013.

Apart from the warning system, the TMCH supports sunrise periods, requiring all new gTLD registries to connect to its database of trademarks.

This article was first published on 12 December 2013 in World IP Review

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