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June 1, 2013 Vol. 68 No. 10 Back to Bulletin Main Page

Association Helps to Secure Trademark Clearinghouse Enhancements

Internet policy issues continue to move at a rapid pace, with several important milestones reached over the past several months. Most notably, INTA helped develop enhancements to the implementation of the Trademark Clearinghouse database (TMCH), which is now open for trademark owners to utilize in the new gTLD space.

Following ICANN’s last public meeting in 2012, representatives of its Intellectual Property Constituency (IPC) participated in a series of meetings with ICANN senior management and other ICANN stakeholders for the purposes of assessing the new gTLD trademark protections after ICANN announced it had received nearly 2,000 applications for new gTLDs. As part of the Intellectual Property Constituency, INTA played a key role in developing and refining improvements to the trademark protection services that the TMCH will support.

ICANN announced on March 20, 2013—just prior to its 46th international public meeting in Beijing, China—that it intends to adopt several of the proposed enhancements.

The new trademark protections, applicable only in new gTLDs, will now include:

  • A new requirement that new gTLD operators publish the dates and procedures for sunrise periods at least 30 days in advance of their launch to enable brand owners to better decide which specific trademarks, if any, they want protected in each new registry;
  • Extending—from 60 days to 90 days—the period during which a Claims notice will be displayed to a prospective domain name registrant seeking to register a domain matching a Trademark Clearinghouse record; and
  • A new requirement that a limited number of domains (up to 50 strings) previously found to have been abused via UDRP or court proceedings can be added to a Clearinghouse record to broaden the scope of the Trademark Claims service.
INTA thanks all Association members who responded to ICANN’s request for public comments on these enhanced protection services. ICANN is currently integrating the new features into the Trademark Clearinghouse so that trademark owners have the option to utilize the protections after new gTLDs begin to come online, potentially later in 2013.

In a parallel development, ICANN’s “Non-Commercial Stakeholder Group” is challenging ICANN’s decision to move forward with the enhanced protections on process grounds. A determination by ICANN on the merits of the objection is expected within the coming months.

INTA will continue to monitor these developments and update the trademark community on the new gTLD program status.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association