ICANN recently announced two providers that it will team up with to begin implementation of the new gTLD Trademark Clearinghouse. IBM and Deloitte were selected from a list of prospective service providers that had responded to ICANN’s Request for Information in October of 2011.
Deloitte, selected as the authentication/validation service provider, has been involved with past Sunrise validation projects for TLDs like .ASIA, .CO, and .TEL. IBM will handle technical database administration services and both companies will subcontract with IPClearingHouse (CHIP) to help with database implementation.
The Trademark Clearinghouse will act as a central database for authenticated registered trademarks and will provide data that will be used to support trademark claims and Sunrise services once the new gTLDs begin to go live. The Clearinghouse will obtain the information directly from rights holders, or their representatives, and relay the information back to the registry operators. All new gTLD registry operators will be required to utilize the Trademark Clearinghouse. At this time, ICANN is expecting to charge the registries for access to the Clearinghouse database, with initial setup fees in the $7,000-$10,000 range per TLD registry.
According to ICANN, brand owners can expect to pay less than $150 for each submission to the Clearinghouse. This cost, which has yet to be finalized, will include trademark authentication and validation of proof of use. ICANN also expects the annual renewal fees to be a percentage of the initial cost. According to the Applicant Guidebook section dealing with the Clearinghouse, marks must meet the following criteria to qualify for inclusion:
3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
3.2.4 Other marks that constitute intellectual property.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
Once the trademarks are authenticated and validated in the Clearinghouse, the system will work to notify brand owners when a domain matching their exact trademark is applied for during a TLD’s initial startup. You can learn more about the Trademark Claims and Sunrise services in our T+B post from May of last year.
Do you think the Clearinghouse will provide brand owners enough protection from infringement?