Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Media Coverage Articles

Trademark Clearinghouse: Hype Or Hope For TM Owners?

May 31, 2013

Media Coverage Articles

Trademark Clearinghouse: Hype Or Hope For TM Owners?

May 31, 2013

Back to News Listing

Keith Barrit, a Fish Principal in the Washington, DC, office wrote this Expert Analysis for Law360 in response to a May 8, 2013 article title “How To Use The New Trademark Clearinghouse.”

The avalanche of new generic top-level domain names will soon be upon us. Trademark owners will need to contend with the prospect of cybersquatting not only in .com, .org and other familiar top-level domains but also in hundreds more, likely including extensions such as .web, .shop and .app, and even some in non-Latin scripts. Some of these new gTLDs will be open to the general public, others will be available only to those who meet certain qualifications, and still others will be available only to members of a particular company.

The first new gTLD will likely be delegated this summer, even though some details of the new system have not yet been finalized. The entire delegation process will likely take a couple of years. There is no way to know precisely when a specific new gTLD will be delegated, if at all. Once the process gets rolling, the Internet Corporation for Assigned Names and Numbers believes it can delegate as many as 20 new gTLDs per week.

Before being overwhelmed by the onslaught of new gTLDs like Lucy at the chocolate factory, now is the time for brand owners to decide which new gTLDs (if any) they might want a domain name in that matches an existing trademark, and which of their trademarks they might want to simply monitor across all new gTLDs in case anyone else registers a domain name based on that mark.

To help brand owners protect their marks in the new gTLDs, a new trademark clearinghouse has been established, jointly run by Deloitte and IBM. A trademark owner may submit into the clearinghouse (1) registered trademarks (excluding state registrations), (2) court-validated common law marks and (3) trademarks protected by statute (such as “USO”) or treaty (such as “Red Cross”). Some new gTLDs may have unique protections for other marks that may also be entered into the clearinghouse, such as state registrations or corporate name registrations, but this will likely be rare. The vast majority of trademark owners will have only trademark registrations to submit into the clearinghouse.

Learn more about the benefits of the clearinghouse and what trademark owner should do by reading the rest of the Hype Or Hope For TM Owners Expert Analysis.

Stay current with Fish Sign up for our Newsletter