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Will the Trademark Clearinghouse Fulfill its Potential?

ICANN created the Trademark Clearinghouse (TMCH) as a way to streamline the repetitive process forced on trademark owners during the launch of new top-level-domains. With the expected tsunami of hundreds of new TLD’s starting later this year, the TMCH should generate a clear benefit for trademark owners who elect to participate in Sunrise and Claims Periods.

The side effect of introducing new TLDs is that the legacy TLDs will be making changes to make sure they are competitive against the new TLDs. This means they will be relaxing restrictions and opening up unused namespaces at the second and third-levels. Many of these will follow a Sunrise or Grandfathering process as a way to implement the changes.

Already three existing TLDs (one sTLD and two ccTLDs) have announced such policy changes and decided they would like to utilize the TMCH Sunrise tokens for their Sunrise Period. This includes .Jobs, Radio.AM and Radio.FM. Donuts, the largest applicant with over 300 TLD applications, have also indicated they will use the Sunrise token from the TMCH for a universal blocking service called Domain Protected Marks List (DPML).

All this is happening before the TMCH has even supported its first new TLD. While ICANN has welcomed the use of TMCH by .Jobs, it remains to be seen if ICANN will also welcome use of the TMCH by ccTLDs.

The eventual benefits and viability of the TMCH will hinge on a few factors:

• Will trademark owners even use it?
• Will the main driver be participation in Sunrise or Claims?
• Will other existing TLDs want to use it?

Will Trademark Owners Even Use it?

It is a given that trying to participate in every future Sunrise Period would overwhelm the budgets of nearly every trademark owner. Every sage legal advisor is counseling that the trademark owner must be ultra-selective about which Sunrise Periods they engage in.

On the other hand, a review of the Trademark Agents published on the TMCH website show a good number of law firms have already advanced the TMCH the minimum $15000 required to be an Agent. If this trend continues, then it is a clear indicator that law firms will aggressively market the TMCH to their clients. (Disclosure: My firm, TM.Biz is offering a portal for these Trademark Agents).

Will the Main Driver Be Participation in Sunrise or Claims?

Trademark Claims provides some protection in every new TLD. But it is for exact matches only and only for the first 90 days. This forces trademark owners to also subscribe to a watching service that catch confusingly similar registrations not caught by the Claims service. I predict trademark owners will elect to do both Claims and watching to ensure they catch domains that might confuse their customers.

Will other existing TLDs want to use it?

There are actually two parts to the TMCH. The validation service is performed by Deloitte and CHIP. They are issuing Sunrise tokens called Signed-Mark-Data (SMD) files to trademark owners as proof that a trademark has satisfied the requirements for the typical Sunrise Period. The Database Administrator for the TMCH is IBM. They actually help Registries and Registrars operate the Sunrise and Trademark Claims Periods. The validation service initially launched on March 26. The database part is expected to launch in July.

But there are applications for just the TMCH Sunrise tokens that do not require IBM to be used. This is because the SMD file is portable. For example, any country-code TLD who decides to change their policies and wanted to conduct a Sunrise Period first, could accept SMD files from trademark owners.

Also, any TLD that wanted to accept SMD files for a new Rights Protection Mechanism, as Donuts is planning; also do not need IBM in the process.

The .Jobs Sunrise Period

The .Jobs TLD has decided to eliminate the current restriction that .Jobs domain names must match company names. This means that product and division names will be eligible for .Jobs. Before this change takes effect, .Jobs will first conduct the Sunrise Period that is designed for new TLDs. .Jobs will utilize both parts of the TMCH. Thus they need to wait for IBM, their Back-end Registry and Registrars all to be operational before they can conduct their Sunrise Period.

The Radio Global Domains

The .AM and .FM ccTLD’s, have long been re-purposed for the Radio industry. They are now introducing new namespaces, called Radio Global Domains, which are designed to target new market segments within the Radio industry. These will be radio.am and radio.fm. Before these changes take place, they will also undergo a Sunrise Period starting May 28. Validation for the Radio Global Domains Sunrise Period will be performed on either trademark data or the Sunrise tokens called Signed-Mark-Data (SMD) files issued by the TMCH. All this is happening without the need for the involvement of IBM, or even for Registrars to support the new protocols required for the new TLD Sunrise Periods. (Disclosure: My firm, TM.Biz will be handling the trademark validation, SMD validation and direct submission of Sunrise registrations to the Registry).

It is still an open issue whether the TMCH will be capable of issuing SMD files by May 28 for use by the Radio Global Domains. Or if the TMCH is capable of issuing SMD files by this date, whether ICANN will allow the TMCH to release the SMD files so that the ccTLDs can use them.

There are no doubt other ccTLDs that are interested in changing their registration rules and restrictions that might consider holding a Sunrise Period first. I predict that these ccTLDs would be interested in using the SMD files as well, if allowed by ICANN.

Additional Rights Protection Mechanisms

The largest TLD applicant, Donuts, is also planning to accept SMD files for its universal blocking service called Domain Protected Marks List, or DPML. As applicant of over 300 TLD’s, with half of those uncontested, a DPML represents a good value for trademark owners.
There may be other applicants that decide to offer new Rights Protection Mechanisms that utilize the SMD file.

Hopelessly Optimistic

The Trademark Clearinghouse has enormous potential to support the domain name industry. The portability of the SMD files enables many uses that were not originally envisioned by its creators. Certainly, the days of a TLD manually checking trademark databases should be coming to an end with SMD files becoming the new de facto standard for trademark validation. It will be interesting to see how this evolves over time.

By Thomas Barrett, President - EnCirca, Inc

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