March 27, 2013
You may have heard about a new entity called the Trademark Clearinghouse, and if you are a trademark owner you may be thinking about registering with it. Although it is a legitimate organization, not a scam, I have no doubt that some enterprising and imaginative characters will soon be using it as the basis for perpetrating fraud and deceit. As and when I hear about them, I shall let you know.
You can watch a short promotional video at www.trademark-clearinghouse.com. In the meantime here are a few key points about the venture.
As you know, the fact that you own a trademark does not prevent somebody else from intentionally registering a domain name that is identical or confusingly similar. It should stop them, but it doesn’t. With a new set of generic top-level domains (gTLDs) coming online soon, more infringements seem almost certain. So on March 26, a new form of protection came into effect for the owners of federally registered trademarks. The goal of Trademark Clearinghouse (set up by ICANN, the Internet Corporation for Assigned Names & Numbers ) is to make it easier for trademark owners to stop somebody from registering domain names that infringe their trademark rights.
“Trademark portfolio management was never easier and more efficient,” says the official website. Claims like this tend to raise my antennae, but the company may turn out to be a worthwhile investment for some trademark owners, particularly those with several marks. So I am giving this news a cautious welcome while raising a few flags for clients who might be considering registering their marks with the Trademark Clearinghouse.
The first point to note is that the program does not cover all trademarks. If you have registered your trademark or service mark with the United States Patent & Trademark Office (USPTO) you can register with the Trademark Clearinghouse, as you can if you are the assignee or licensee of a federally registered mark. On the other hand, if you registered your mark at the state level but not with the USPTO – or have not registered it at all – your mark is not eligible.
Second, the Clearinghouse will not enforce your rights; that is not part of the service. All it will do is alert you when somebody tries to register a domain name similar to your trademark.
However, as an aside I should mention that there is a new process for enforcing your trademark rights against a domain-name infringer, and it promises to be faster and less expensive than the current Uniform Domain Dispute Resolution Policy. The Uniform Rapid Suspension System (URS) will still require that the trademark owner prove that the other party has “no legitimate right or interest” and that both the registration and use of the domain name were in bad faith. Although ICANN has not published the URS filing fee yet, I suspect it will be in the $300-500 range.
By the way, the URS is distinct from the Trademark Clearinghouse’s own dispute-resolution process, which only applies to disagreements over the company’s decision to accept or reject a mark for inclusion in its database. Speaking of disputes, if you do register with the Trademark Clearinghouse but become so dissatisfied that you feel inclined to sue the company, please bear in mind that their contract contains a jurisdiction and choice-of-law clause: you would have to file suit in Belgium, specifically Brussels. I happen to have visited Brussels in my childhood, but (in case you were wondering) am not licensed to practice law there.
Third, and almost needless to say, none of this is free. Under the Trademark Clearinghouse’s basic fee structure, registrants pay the following:
- 1 year: $150.00
- 3 years: $435.00
- 5 years: $725.00
Policing your trademarks takes time, energy, and other resources, and it’s possible that the Trademark Clearinghouse could reduce some of these costs and make it easier for you to prevent confusing domain names from diverting online traffic away from your site. Over the next few weeks, as the program becomes operational, I expect to learn more about the pros and cons. Whatever I find out, I’ll post right here.