[Originally published on CircleID March 14, 2013]
ICANN has announced that the Trademark Clearinghouse (TMCH) will “launch” on March 26.
Brand Owners: Brace yourself. Soon every trademark law firm and corporate registrar will be screaming at you:
– THE TRADEMARK CLEARINGHOUSE IS HERE!!!
– YOU NEED TO BE READY TO SUBMIT ON MARCH 26!!!
– DO YOU HAVE YOUR ACT TOGETHER YET???
Here are some tips for brand owners to consider about ICANN’s Trademark Clearinghouse:
Relax. This is advice probably no one is telling you. The truth is: you have some time before the first Sunrise Period.
Yes, you should be thinking about your overall brand protection strategy regarding new TLD’s now.
Yes, you should be checking and updating inaccuracies on your trademark records at the local Patent & Trademark Office now.
Yes, you should be compiling your documentation required for the TMCH now. This includes: Licensee and Assignee agreements, copies of trademark registrations for those countries that the TMCH will not be validating via an online database and your proof of use specimens.
But you have some time before the first Sunrise Period.
How much time do you have?
The first Sunrise is not likely to occur until summer or fall. The technical specifications for Sunrise were just released this week for public comment. Without a final spec., Registries and Registrars have not yet started programming their systems to support Sunrise and Claims.
This gives you several months before any new TLD’s launch. ICANN may try to push out the first Sunrise in June. But if so, it is likely to be a long extended Sunrise Period to allow for the on-boarding of Registrars and the slow summer holidays.
Our suggestion? Don’t act in haste or fold to high-pressure sales tactics from whoever wants your TMCH business. The Annual Meeting of the International Trademark Association (INTA) is in early May. Attend INTA and discuss the TMCH with your colleagues. Visit the exhibitors offering TMCH services (We will be there). You will then have at least another month or two before the first TLD Sunrise launches.
There are no prizes for being first. The TMCH is offering an “incentive” for early filers, but the benefit is minimal. The offer is that if you apply early, then your anniversary date for renewals will be based on when the first TLD launches, as opposed to when you submitted your trademark to the TMCH. However, this may not be beneficial unless you plan to participate in that first Sunrise, which has not yet been announced. It could be an IDN. Why not give the TMCH some time to work out the kinks before submitting your trademarks?
2. Should you go direct or through a Trademark Agent?
The TMCH will allow trademark owners to submit trademarks directly or through an authorized Trademark Agent. The authorized Trademark Agent can be an ICANN Registrar or Law Firm, but it does not need to be. Just be sure to select a Trademark Agent with extensive experience dealing with ICANN Sunrise Periods and a thorough understanding of how the TMCH will conduct its validation processes.
Our suggestion is to wait until the INTA Annual Meeting and learn more about what your options are. To evaluate possible Trademark Agents, here are some areas to consider:
Flexible payment options
• The TMCH requires pre-payment for all submissions. The pre-payment can either be a credit card, with a maximum of 10 trademarks per order, or a $15,000 bank wire
• In comparison, a Trademark Agent will likely extend you credit to enable post-payment
One chance to make corrections
• Deloitte, the TMCH validator, will be strict about your TMCH application matching the official trademark application. You get only one chance to get your application correct before paying an extra fee.
• Pre-validation is a critical step you should take before submitting to the TMCH. If you are not equipped to do this yourself, find someone who will do it for you
• ICANN expects to eventually be approving new TLD’s at a rate of 20 per week. Who will keep track of the new Sunrise Periods you actually care about?
• After your trademark is deemed eligible for Sunrise by the TMCH, you will receive a token called the Signed-Mark-Data (SMD) file. This has to be passed to each and every registrar you might use for a Sunrise period
• If you have a lot of trademarks to submit to the TMCH, then entering them manually will cost time, money and get tedious fast.
• Trademark Agents using the TMCH programming interface (API) will be able to manage TMCH records in bulk
Portability beyond the TMCH
• At least one major TLD applicant, Donuts, has announced its own trademark blocking service for its TLD’s. Called the Domain Marks Protected List (DPML), this block will protect your trademark in all of the Donuts TLD’s. They’ve applied for over 300 TLD’s with half of those uncontested. The DPML is not sold by the TMCH but will require that trademark owners first be validated for Sunrise eligibility by the TMCH
Who will manage these non-TMCH Rights Protection Mechanisms for you?
I hope these tips help remove some of the anxiety some trademark owners might have about the March 26 launch of the Trademark Clearinghouse. The key point is that this is not a race. You have plenty of time to get your trademarks in the TMCH before the first Sunrise Period.
EnCirca has participated in nearly every Sunrise Period conducted by an ICANN TLD. We also offer real-time trademark validation services for TLD’s via our TM.Biz subsidiary: We recently provided such services for the .PW and .XXX Sunrise Periods. And TM.Biz will be offering TMCH pre-validation services for Brand Owners, Trademark Agents and Registrars as well.