As the Internet Corporation for Assigned Names and Numbers launches a new trademark clearinghouse on Tuesday, businesses that own trademarks should consider getting involved in the program, some ICANN watchers said.
ICANN is launching the clearinghouse as a way for trademark owners to protect their intellectual property as the organization prepares to allow hundreds of new gTLDs (generic top-level domains) in the coming months. The clearinghouse will allow trademark owners to register their marks before a new TLD is launched and protect their trademarks if other companies try to register a website using their trademarks after a TLD is operating.
The new service isn’t free, with the cost of registering a trademark ranging between $95 and $150 a year, but there’s little other downside for trademark owners to participate, said Keith Kupferschmid, general counsel and vice president of IP policy and enforcement for the Software and Information Industry Association (SIIA), a trade group that pushed for trademark protections in ICANN’s gTLD expansion.
Trademark holders should participate if they want their “brands to be protected,” Kupferschmid said. The SIIA has published an alert for its members on the new clearinghouse.
The clearinghouse “doesn’t necessarily prevent trademark infringement or cybersquatting, but it does help trademark owners and brand owners somewhat in mitigating the damage that might occur,” he added. “We’ve been telling brand owners it’s not that expensive to protect themselves and they ought to do it.”
The trademark clearinghouse will include a so-called sunrise service that allows trademark holders to register their trademarks before a new TLD goes live.
The clearinghouse will also include a trademark claims service, which will send warnings to people who try to register a website using a trademark owned by someone else. If that person still registers the website, ICANN will notify the trademark owner and the owner will have options for challenging the website registration.
Companies can file with the clearinghouse themselves or use an agent who can apply for a large number of trademarks with the clearinghouse.
ICANN currently has 1,897 active applications for new gTLDs, with 230 contested among two or more applicants. The first new gTLDs are expected to launch later this year.
With so many new TLDs on the way, it would be “very difficult” for trademark holders to protect their intellectual property by asserting their marks with each new TLD, as they have in the past, said Jan Corstens, in charge of the trademark clearinghouse for Deloitte, which will manage the trademark verification portion of the clearinghouse for ICANN.
Some applicants for TLDs are offering additional services based on the clearinghouse, Corstens noted. For example, startup Donuts, which has applied for more than 300 TLDs, will allow trademark holders to proactively reject website registrations using their trademarks, he said.
In addition to defending their trademarks through the new service, companies may see some business opportunities with new websites on the new gTLDs, and the clearinghouse can help them launch the websites with their trademarks, he said.