Avoiding mistakes in the Trademark Clearinghouse
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Avoiding mistakes in the Trademark Clearinghouse

The impending rollout of new gTLDs has concerned rights owners, but yesterday's panel at INTA's Annual Meeting, New gTLDs: Brand Strategies in Cyberspace, gave tips on how to use the Trademark Clearinghouse (TMCH) and the Uniform Rapid Suspension (URS) system to help protect marks online.

The TMCH is a central database that allows brand owners to register their marks. Once ownership of the mark is verified, the TMCH will alert the brand owner when someone is registering a matching domain name. The party applying for that domain name is also notified that its application corresponds with a verified mark in the TMCH database.

The TMCH is just one layer of protection for brand owners. "The Clearinghouse is meant to support what's now the mandatory sunrise period," explained Amy Stathos of ICANN. The sunrise period gives trademark owners an advance opportunity to register domain names matching their marks ahead of the general public.

While the system is a useful tool for brand owners, some have had difficulties navigating the new system. Vicky Folens from Deloitte explained some of the common mistakes users are making. (Deloitte is the verification services provider for the TMCH.)

The most common error comes when users are creating their account, explained Folens. New users must register as either a trademark agent or a trademark owner. She noted that many trademark holders are accidentally registering as an agent, which requires a US$15,000 deposit.

Another common mistake is leaving out non-standard characters, such as accents on letters and the German double S, from their marks. Folens noted that this is likely because previous sunrise periods allowed for omission of these marks, while the TMCH requires their inclusion.

She also pointed out that when registering marks in the TMCH, brand owners are not filling in the field for a description of the goods and services, and instead stating "see trademark certificate." The problem with this, Folens explained, is that when a notice is sent to the party applying for a domain that triggers the TMCH alert, it will then not receive the required descriptive information.

Finally, she clarified that only registered marks and common law marks subjected to a court decision may be registered with the TMCH. Pending registrations, as well as common law marks that have not been subject to litigation, may not be registered in the Clearinghouse.

Panelist John Berryhill of Pennsylvania had one humorous bit of advice for rights owners: If you have a common law trademark that hasn't been subject to a court case, go sue someone now.

For clear-cut cases

Brand owners can also take advantage of the new URS system for gTLD disputes, which is designed to complement the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

The URS system is based on the UDRP, though it is designed to be faster and less expensive, explained Kristine Dorrain of the National Arbitration Forum. A decision can be made in as few as 20 days, and most will be handled within 30. Fees can also be as low as US$375. The system will allow for appeals, handled within the URS or to the UDRP.

In order to maintain the speed and low costs, Dorrain said that the system is only intended for "clear-cut cases of cybersquatting." The complainant is limited to listing its claims via check-boxes, and must limit its written statement to 500 words.

So if a brand owner has to submit substantial evidence and argument, the URS might not be the best tool for that claim, said Dorrain.

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