In 2012, ICANN (Internet Corporation for Assigned Names
and Numbers) announced that companies and individuals would be able to
customize their top-level domain or “gTLD” (the part coming after the ‘dot’ in
a domain name). This customization costs $185,000 per domain. In order to
protect federal trademark owners from infringement, cybersquatting and other
illegal acts by those seeking to obtain a customized gTLD, ICANN created the
Trademark Clearinghouse (the “TMCH”).
Starting on March 26, 2013,
federal trademark holders are able to register their trademarks with the TMCH.
This registration will give the trademark owner protection from another user
obtaining a customized top-level domain using their trademark (i.e. instead of
just the .com, .net etc., the gTLD can be customized, such as .cocacola, .pepsi
…).
The TMCH is limited trademarks
that fall into one of three categories: 1) to those with federal trademark
registration here in the United States, or the equivalent in another
jurisdiction; 2) those who have had the mark validated by a court proceeding at
the national level; or 3) those protected by statute or treaty. Both trademark
owners and valid trademark licensees have the right to place a trademark on the
TMCH.
However, as with anything,
there are exceptions to the above rule, and the registration does not come
without a price.
First the exceptions. Several
trademarks, even though they meet one of the three above criteria, will not be
eligible for registration with the TMCH. The main reasons creating
ineligibility are: 1) the trademark contains a design element where the words
are not the predominant part of the mark and where the words are not easily
separable from the design; 2) the trademark contains a '.' (dot); or 3) the trademark contains an
unusable character in the name, such as & or other symbol. If any of the
above apply to your mark, you will need to re-apply for federal trademark registration
in the modified form.
The price tag is also a hurdle
to overcome. For a one year registration, a trademark owner or licensee with an
eligible trademark can file with the TMCH for $150. The three-year fee is $435
and the five-year fee is $725. This fee is per mark that is registered. If you
file for what turns out to be an ineligible trademark, at this time the fee is
not refunded. There are discounts offered for registrations done through
Trademark Agents, but you will have to pay a fee to that agent.
If you are interested in
registering, or learning more about customizable gTDL’s, you can visit the
Trademark Clearinghouse website at: http://trademark-clearinghouse.com/,
or the ICANN website at: http://newgtlds.icann.org/en/.
