Utilizing the Trademark Clearinghouse to Protect Your ... · Utilizing the Trademark Clearinghouse...

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Utilizing the Trademark Clearinghouse to Protect Your Brand from New gTLDs

March 27, 2013

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Utilizing the Trademark Clearinghouse to Protect Your Brand from New gTLDs

� Moderator

Elisa Cooper

Director, Product Marketing, Domain Management

MarkMonitor Inc.

� Featured Speakers

Patrick M. FlahertyAssistant General Counsel, Trademarks and CopyrightsVerizon

Sanjiv SarwatePrincipal Legal Counsel, Trademarks and CopyrightsDELL

Agenda

� About MarkMonitor

� New gTLD Landscape

� Trademark Clearinghouse Overview

About MarkMonitor

� Largest and oldest corporate-only domain registrar

• ICANN-accredited since 1999

• 1+ million domain names under management including all 5 of the worlds most highly-trafficked websites

• First to combine Domain Management with Brand Protection

� Long-standing participation with ICANN

• Chair of Registrars Constituency

• Chair of the Business Constituency

� Committed to serving the needs of brand owners

� Acquired by Thomson Reuters in 2012

New gTLD Landscape

New gTLD Landscape

� New gTLD Program significantly changes the Internet landscape

� New TLD types

• Brands

• Community-based

• Geographical

• Open Generics

• Closed Generics

“Reveal Day” Statistics

� 1930 Applications (1409 Unique Strings) • 1179 Uncontested Applications• 751 Contested Applications (Representing 230 strings)

� 652 .Brand Applications• 40% of Fortune 100 applied

� 116 .IDNs (Internationalized Domain Names)

� Geographical distribution of applicants• 911 from North America• 675 from Europe• 303 are from Asia-Pacific• 24 from Latin America and the Caribbean• 17 from Africa

Total Applications by Type

Standard,

1144, 59%

Brand, 652,

34%

Community,

68, 4%

Geographical,

66, 3%

652 .Brand Applications

7

20

22

24

26

35

36

43

46

49

56

71

72

77

0 10 20 30 40 50 60 70 80 90

“Apparel”

“Luxury”

“Pharma”

“CPG”

“Travel”

“Retail”

“Insurance”

“Auto”

“Services”

“Online”

“Manufacturing”

“Financial”

“Media”

“Technology”

Number of Applications

Secto

r

Most Highly Contested Strings

Number of Applications

Applie

d-f

or

gT

LD

.

0 2 4 6 8 10 12 14

.DESIGN

.MOVIE

.MUSIC

.BLOG

.BOOK

.LLC

.SHOP

.ART

.HOME

.INC

.APP

Top 10 ApplicantsN

um

be

r o

f A

pp

lica

tio

ns

307

101

76 7054

26 2614 14 13 13 13

0

50

100

150

200

250

300

350

New gTLD Timeline

Trademark Clearinghouse Overview

Trademark Clearinghouse (TMCH)

� Central repository of authenticated trademark information

• Primarily used to support pre-launch Trademark Claims and Sunrise Registrations and Dispute Resolution Policies

� The standards for inclusion are as follows:

• Nationally or regionally registered word marks from all jurisdictions

• Any word mark that has been validated through a court of law or other judicial proceeding

• Any word mark protected by a statute or treaty in effect at the time the mark is submitted

• Other marks that constitute intellectual property

� Ability to also include up to 50 previously abused

domains associated with a validated record in the TMCH

Trademark Clearinghouse Purpose

� Enables Trademark Owners To

• 1) Receive notification (Claims Service) when exact-match domain name registrations are made for first 90 days of general availability

• 2) Register their trademarks as domain names during so-called Sunrise Periods

� Does NOT

• Prevent registrations or block others from registering trademarks as domain names

Benefit 1 of TMCH: Trademark Claims Service

� If a domain is submitted for registration and is an identical

match to a mark in the TC, the Trademark Claims service

will provide notification to the prospective registrant that:

• The mark is included in the Trademark Clearinghouse

• The prospective registrant understands this

• The use of the requested domain name will not be infringing

� Applicable in the first 90 days of general registration only

� If the domain is registered, the rights owner is notified

Benefit 2 of TMCH: Sunrise Registrations

� Sunrise registration periods provide rightsholder with priority

registration

� Assuming that eligibility requirements are met, Sunrise

Registrations must be made available to all trademark holders

in the Trademark Clearinghouse

• Must show “Proof of Use” to qualify

� Additionally, notices will be provided to all trademark holders

in the Trademark Clearinghouse if someone is seeking a

sunrise registration

• Conflicts that arise may be subject to a Sunrise Dispute Resolution Policy (SDRP)

Trademark Clearinghouse Data

� Required data• Mark• Holder• Holder Type• Mark Type• Jurisdiction• Application Number• Registration Number• Application Date• Registration Date• Expiration Date• Goods and Services Class Number• Goods and Services Description• Uploaded Documents

Matching Rules

Acceptable Examples of “Proof of Use”

� Labels, tags, or containers from a product

• This provides a physical indication that a product is available for use or access by consumers

� Advertising and marketing materials (including brochures,

pamphlets, catalogues, product manuals, displays or signage,

press releases, screen shots, or social media marketing

materials)

• This is meant to show that the rights holder is communicating to consumers that a product or service has a particular source

� Links, copies, or photographic submissions will be acceptable

Unacceptable Examples of “Proof of Use”

� Inclusion of a mark in a domain name• Registration of a domain name does not provide an indication that

there is a good or service being offered to consumers

� Email messages • Private communications do not provide evidence of a product or

service generally available to consumers

� Licenses to use a mark or applications for business licenses that include the mark as part of the business name • These would provide an indication that an entity is preparing to

use the mark, but does not constitute a demonstration that the mark is being used

� Business cards • Business cards for an individual do not provide an indication that

there is a good or service being offered to consumers in connection with the trademark

What benefits do you see in using the TMCH?

What should brand owners understand about the TMCH?

How will you make use of the TMCH?

How will you determine which marks to register in the TMCH?

How will Verizon handle enforcement issues using the TMCH?

What is Verizon doing to prepare for the launch of the TMCH?

How does DELL anticipate the TMCH affecting operation of their own TLD?

Q&A

� Moderator

Elisa Cooper

Director, Product Marketing, Domain Management

MarkMonitor Inc.

� Featured Speakers

Patrick M. FlahertyAssistant General Counsel, Trademarks and CopyrightsVerizon

Sanjiv SarwatePrincipal Legal Counsel, Trademarks and CopyrightsDELL

Thank You!

� For information on MarkMonitor solutions, services and

complimentary educational events:

• Contact via email:

marketing@markmonitor.com

• Visit our website at:

www.markmonitor.com

• Contact via phone:

US: 1 (800) 745 9229

Europe: +44 (0) 203 206 2220