Trademark Clearinghouse (TMCH) extends TM claims notification

In a move that first came to light during the last ICANN meeting of the year, the Trademark Clearinghouse (TMCH) has announced its intention to extend Trademark Claims notifications from 90 days to an indefinite period.

In a notice to agents today, the Trademark Clearinghouse announced:

The decision to extend the claims service has been made in response to market demand by IP holders for an open-ended notification solution. The service will only be available to trademark holders recording marks into The Trademark Clearinghouse…”

The notification goes on to state that IP holders with trademarks verified in the clearinghouse will be able to opt in to the service. While the details have not been made available to agents or rights holders, the clearinghouse expects to launch the service next year.

Trademark Claims is a new rights protection mechanism in the New gTLD program designed to (a) notify prospective domain name registrants of a prior right in the clearinghouse for a desired domain name, and (b) notification to a verified rights holder of the registration of a domain name in a New gTLD that is an exact match of a verified mark in the clearinghouse.

Although the clearinghouse characterizes the extension of  Trademark Claims as a notification solution for IP holders, brand and trademark owners still have a number of considerations when it comes to online domain name monitoring in New gTLDs:

  • Verified TMCH records account for exact matches of the mark name, not keyword-rich strings that may include the trademark name plus a relevant term (e.g., the BRAND only, and not BRAND+keyword such as my-brand-online.tld)
  • TM Claims alerts and notices only apply to exact match as stated above
  • TM Claims notices to verified rights holders only occur after the domain name has been registered

For continuing coverage and updates on this and other developments in the New gTLD program, please subscribe to the Digital Brand Insider mailing list or contact your CSC Digital Brand Services representative for access to the Brand Circle New gTLD information center.