New gTLD's and the Trademark Clearinghouse

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/.