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Trademark Alert: Are You Ready For The New gTLDs The Trademark Clearinghouse Opens March 26

The universe of generic top-level domains (gTLDs), currently limited to about a dozen gTLDs such as .com, .net, and .org, will likely explode later this year, as some of the more than 1000 potential new gTLDs are rolled out, including vanity TLDs, like .amex, .ford, .microsoft, and generic extensions like .store, .cloud, .software.

As a brand owner, you need to think about defensively filing for second level domains (SLDs) matching your mark(s) in the industry specific gTLDs you care about, and otherwise need to consider your enforcement strategy. To help you in this process, we've prepared this FAQ, describing ICANN's new Trademark Clearinghouse and the Sunrise Periods for defensive registrations, and are available to answer any follow-up questions you have and to assist you in navigating this change.

Q. What is the Clearinghouse and do I need to use it?

A. The Clearinghouse is a centralized trademark registration depository that each new gTLD registry will be required to cross-reference when someone tries to register identical SLDs during the new registry's Sunrise Period and Trademark Claims Period. You can submit your trademarks to the Clearinghouse beginning March 26. The mark must be nationally or multi-nationally (e.g. the EU) registered or otherwise validated by a court. In addition to the details of the registration, you must submit evidence of actual use of the mark to the Clearinghouse to be eligible to apply for SLDS in the Sunrise Periods. You can deposit your trademarks and proof of use in the Clearinghouse yourself (www.trademark-clearinghouse.com), or we can do it for you. The Clearinghouse will charge $150 per mark for the first year.

Q. What is a Sunrise Period?

A. Each new gTLD registry will be required to give brand owners in the Clearinghouse a first bite at SLDs in their registry by offering a Sunrise Period of at least 30 days before SLDs become available to the general public. Some brand owners will want to use the SLD themselves; others will obtain the SLDs simply to keep third parties from getting them.

Q. What is the Trademark Claims Period?

A. When a new gTLD registry opens to the general public after the Sunrise Period, it will be required to offer a Trademark Claims Period of 90 days. During this time, the registry must notify an owner of a trademark in the Clearinghouse if anyone tries to register a SLD that is identical to the trademark, and notify the domain applicant that the attempted registration potentially infringes the trademark. If the applicant chooses to proceed, the registry must notify the brand owner.

Q. Does the Clearinghouse prevent others from registering my mark as a domain in the new gTLDs?

A. No. The Clearinghouse only: 1) gives brand owners an opportunity to register their brands as domains in new gTLDs before the general public (in the Sunrise Periods) and 2) gives notice to brand owners and to domain applicants that an attempted domain registration may infringe a trademark.

Q. What can I do to stop a cybersquatter from registering my brand as a domain?

A. Short of litigation, you may be able to bring a UDRP action (ICANN's Uniform Dispute Resolution Policy), or ICANN has created what it calls the Uniform Rapid Suspension (URS) System arbitration process. ICANN touts the URS as a less costly and faster UDRP. But the URS may be a hollow remedy: even if the trademark owner wins, the domain is not transferred to the brand owner as it would be in a UDRP; instead, the domain is rereleased into the general pool of available domains, for the brand owner or someone else to pick up.

We're here to help guide you through this process and are happy to assist you in developing and implementing a strategy to protect your marks.


Sally M. Abel—Chair and Partner, Trademark Group
650.335.7212; sabel@fenwick.com

Stephen R. Garcia—Associate, Trademark Group
650.335.7367; srgarcia@fenwick.com

Mark A. Jansen—Associate, Trademark Group
650.335.7867; mjansen@fenwick.com

For more information, please contact the Trademark Group at Fenwick & West at trademarks@fenwick.com.


©2013 Fenwick & West LLP. All Rights Reserved.

This update is intended by Fenwick & West LLP to summarize recent developments in the law. It is not intended, and should not be regarded, as legal advice. Readers who have particular questions about these issues should seek advice of counsel.

The views expressed in this publication are solely those of the author, and do not necessarily reflect the views of Fenwick & West LLP or its clients. The content of the publication ("Content") is not offered as legal or any other advice on any particular matter. The publication of an Content is not intended to create and does not constitute an attorney-client relationship between you and Fenwick & West LLP. You should not act or refrain from acting on the basis of any Content included in the publication without seeking the appropriate legal or professional advice on the particular facts and circumstances at issue.​