As the launch of the new gTLDs fast approaches, many brand owners are starting to pay more attention to ICANN and the details of the new gTLD program. With the first new gTLD Sunrise period expected to be announced before the end of 2013, submitting registered trademarks for inclusion in the Trademark Clearinghouse (TMCH) should be on brand owners’ short list of tasks to complete in the coming weeks.
With this in mind, we thought it would be helpful to provide an overview of the Top Three Mistakes that Corsearch has encountered on the submissions we have submitted to the TMCH for validation:
1. Goods and Services Description Including Terms in Brackets
This rule applies mostly to U.S. trademark registrations, but is the clear leader when we look at the overall correction numbers for trademarks submitted to the TMCH. According to the USPTO, any terms in the goods and services description of a trademark registration that are shown in brackets ([example]) have been deleted from the specific trademark registration, meaning the mark no longer has protection under these terms. The TMCH does not consider these terms to be part of the trademark registration, which is why they are requiring that bracketed terms be removed from all TMCH submissions.
2. Proof of Use Sample is Insufficient
This is a distant second to the number one mistake above, but is still an issue that arises on a regular basis. There are various reasons why a proof of use sample may be deemed insufficient by TMCH validators. Some of the more recurring reasons are that the trademark was not clearly visible on the sample provided, the sample did not show clear use of the mark (i.e., a picture of a business card was provided), and the terms in the proof of use did not exactly match the trademarked terms. Before sending any marks to the TMCH, it is best to ensure that your sample falls within the TMCH guidelines and that the quality of the image allows the validation team to clearly identify the content.
3. Address Information is Incorrect
It’s likely that at some point during the life of a trademark registration a client may have moved to a new location. When filling out a TMCH order form, the owner information provided needs to match the information currently listed on the trademark registration. If a client has moved recently and the owner information on the trademark registration is not updated, there are two steps recommended to ensure that the TMCH will validate the information:
a) Submit a screenshot of a confirmation showing an address update has been submitted to the trademark office.
b) Provide a screenshot of the organization’s website that shows the new address is displayed and is in use.
These documents will be used by the TMCH validation team to verify the information provided.
It is best to avoid these mistakes at the onset to avoid verification delays, but if incorrect information slips through the cracks and is submitted to the TMCH, brand owners will have the opportunity to submit a one-time correction during a 20-day correction period.
If you have any questions on how the Corsearch Trademark Clearinghouse submission service works, please view our Trademark Clearinghouse services information, or contact us directly.