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Rights protection system applicable to new gTLDs – Trademark Clearinghouse (TMCH)
What is the Trademark Clearinghouse?
The Trademark Clearinghouse (TMCH) is an advanced system of intellectual rights protection and the essential part of ICANN’s new gTLD program. New gTLDs’ operators will be responsible for the implementation of certain rights protection mechanisms, supported by the Trademark Clearinghouse. TMCH allows brand holders to submit data related to their trademark into one consolidated database, prior to and during the launch of new gTLDs.
Verification of data is the fundamental and most significant condition to be fulfilled before the trademark owner is able to register its corresponding domain name during the Sunrise Period, which is the pre-registration stage of numerous TLDs.
Trademark owners will be presented with the option to be notified in the event someone registers a domain name that matches their record in the Trademark Clearinghouse.
Pre-registration of new gTLDs is provided by EuropeID at no cost. Click here to continue.
For additional information, contact our Support Team at support@europeid.com.
Services provided by the TMCH:
Brands are safeguarded by the TMCH in two ways: with a Sunrise Service and a Trademark Claims Service.
EuropeID further recommend a Managed TMCH Submissions service. Click here to find out more.
TMCH Sunrise services:
Sunrise Period refers to a preliminary period of between 30-60 days before domain names are offered to the general public. Trademark owners can take advantage of the Sunrise by protecting the domain name that matches their trademark. A Sunrise Period is obligatory for all new gTLDs and the minimum requirement to participate in it is having a validated trademark submission in the Trademark Clearinghouse.
If your trademark is not registered with the TMCH, you cannot take part in any Sunrise processes.
Trademark holders can record their IP rights directly with the TMCH or through an approved agent. EuropeID is an accredited agent with the Trademark Clearinghouse providing a Managed Submissions service, making sure the process of gathering and submitting all the required information to the TMCH is streamlined and efficient.
Following the verification process, the IP rights are held in a centralised repository and can be used for registration of the corresponding domain name during the Sunrise phase of any new gTLD, prior to the commencement of general registration. With a single trademark registration effective across as many as 1000 gTLD launches, this process will substantially reduce the related administrative costs and time consumption for trademark owners.
For Sunrise phases, EuropeID Managed Submissions service will further ensure the inclusion and management of the related SMD files and labels. In addition, within the service, trademarks will be validated by the TMCH and the trademark holder will be kept informed about all upcoming developments thereafter.
TMCH Claims services:
The Trademark Claims service follows the Sunrise phase. It is a notification service – operated by ICANN for all new gTLDs – to warn both domain name registrants as well as trademark holders of possible violations. The service works in the following manner:
A prospective domain name applicant receives a warning notice when making an attempt to register a domain name that matches a trademark term recorded in the TMCH.
If, following the receipt and acceptance of the notice, the domain name applicant does proceed to register the domain name, the trademark holder with a corresponding mark will be notified of the domain name registration, so they can determine whether or not to take any appropriate action.
If you choose to utilise EuropeID Managed Submissions service, we will keep you personally informed about all upcoming developments thereafter.
Accepted Trademarks
Trademarks that can be accepted and verified by the Trademark Clearinghouse are as follows:
- registered trademarks,
- marks protected by statute or treaty,
- court validated marks,
- any other marks that represent Intellectual Property (IP) rights in accordance with the registry’s policies and that satisfy the Trademark Clearinghouse’ eligibility requirements.
In the event other types of marks are approved at a registry’s request, additional guidelines referring to these marks will be posted on the Website.
Registered trademarks
A registered trademark is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register within the mark’s jurisdiction. This indicates that the given trademark must be effective nationally and must be registered at the time of its submission for verification.
The following are not considered as registered trademarks and will not qualify for inclusion in the Trademark Clearinghouse:
- Trademark applications;
- Trademarks registered by a city, state, province, or sub-national region;
- International trademark applications made through the Madrid system except when the underlying basic trademark registration has nationwide effect;
- Registered marks that were the subject of successful cancellation, invalidation, opposition, or rectification proceedings.
The following are not considered as registered trademarks but might qualify for inclusion in the Trademark Clearinghouse under another sort of trademark:
- Well-known or famous trademarks (unless they are also registered);
- Unregistered (including common law) trademark;
- Court-validated marks;
- Marks protected under statute or treaty;
- Other marks that comprise intellectual property.
The following registered trademarks will not be recognized by the Trademark Clearinghouse:
- A registered trademark that includes a top level extension, for example, trademarks such as “icann.org” or “.icann”;
- Any registered trademark that begins with or contains a “dot” (.) (for example, the trademark “deloitte.” will not be accepted);
- Any registered trademark that does not consist of any letters, numerals, words or DNS-valid characters.
Marks protected by statute or treaty
In the case of marks safeguarded by statute or treaty, the appropriate statute or treaty must be in force at the time the mark is submitted to the Trademark Clearinghouse for inclusion. These marks may comprise but are not limited to designations of origin and geographical indications.
The following marks are not considered as marks protected by statute or treaty and will not qualify
for inclusion in the Trademark Clearinghouse:
- Trademark applications or applications for protection of a mark;
- Widely recognised or famous trademarks (unless also protected by a statue or treaty);
- US state trademarks;
- International trademark applications made through the Madrid system;
- Registered trademarks that were subject to successful cancellation, invalidation, opposition or rectification proceedings.
The following are not considered as marks protected by statute or treaty but might be suitable for inclusion in the Trademark Clearinghouse under a different type of trademark:
- Registered trademarks;
- Unregistered (including common law) trademarks;
- Court validated marks;
- Other marks that represent intellectual property.
Please be advised that, for a mark to be approved for the Sunrise registration, it must be specifically protected by a statute or treaty currently in effect and that was in force on or before 26 June 2008.
The following marks will not be accepted by the Trademark Clearinghouse, even if safeguarded by statute or treaty:
- Any mark protected under statute or treaty that includes a top level extension such as “icann.org” or “.icann” as a mark;
- Any mark protected under statute or treaty beginning with or containing a “dot” (.) (e.g., the mark “deloitte.” will not be accepted);
- Any mark protected under statute or treaty that does not contain any words, letters, numerals, or DNS-valid characters; and
- Any mark protected under stature or treaty of which the statute or treaty is only valid in a certain region, city or state.
Court validated marks
A court validated mark refers to a mark that has been validated by a court of law or other judicial action at the national level, for instance unregistered (common law) marks and/or famous marks. For a mark to be validated by judicial proceedings, the judicial authority must have been in existence as a competent jurisdiction as of the date of the order or judgement. Any referenced authoritative institution must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation confirming the validation of the mark must be sufficient, without the need for the Trademark Clearinghouse to seek advice of outside resources).
The following marks are not considered as court-validated marks and will not qualify for inclusion in the Trademark Clearinghouse:
- Trademark applications;
- US state trademarks;
- International trademark applications made through the Madrid system;
- Registered trademarks that were subject to successful cancellation, invalidation or rectification proceedings;
The following are not considered as court-validated marks but might qualify for inclusion in the Trademark Clearinghouse under another kind of trademark:
- Registered trademarks;
- Marks protected under statute or treaty;
- Other marks that represent intellectual property.
The following marks, even if court-validated, will not be approved by the Trademark Clearinghouse:
- Any court validated mark that includes a top level extensions such as “icann.org” or “.icann”;
- Any court validated trademark that begins with a “dot” (.) or contains a “dot” (.);
- Any court validated mark that does not comprise any words, letters, numerals, or DNS-valid characters; and
- Any state or city court-validated mark.
Numerous benefits:
Saving time
Submission of trademarks in the Trademark Clearinghouse is easy and time-efficient: entering your trademark information is possible via an online platform managed according to the highest standards of back-end technology and customer service.
Worry-free
We will inform you whenever a Sunrise phase of a new generic top-level domain is scheduled. If you choose not to secure the domain name corresponding to your brand through Sunrise, you will by default obtain Trademark Claims Services. Whichever alternative best suits your business needs, you can rest assured that you will be warned in time when action is imperative.
Reliable track-keeping
Disorganised data and segmented trademark management are out-of-date; by simply selecting managed filing with the Trademark Clearinghouse, you can monitor all of your trademark information in one place. Trademark portfolio management is smoother and more efficient than ever before.
Economical
There are no undisclosed costs associated with the managed trademark submission service. For one year or multiple years, you can benefit from the Trademark Clearinghouse services with a peace of mind.
EuropeID, an accredited agent of the Trademark Clearinghouse, provides Managed Submissions service designed for the purpose of assisting trademark holders in streamlining the data processing procedures, together with declaration of use and proof of use. The service will comprise managing the trademark data according to the TMCH requirements including trademarks validation as well as keeping the trademark holder up to date about any pertinent developments.
