This year marks the tenth anniversary of the Trademark Clearinghouse, what’s become an important service supporting rights protection within the domain name space. After 10-years, we thought it was timely to revisit the benefits of the TMCH to marks owners, as well as review how it protects domain names in practice.
What is the Trademark Clearinghouse (TMCH)
The Trademark Clearinghouse (TMCH) is a centralized database of validated and registered trademarks that was established by ICANN in 2013, a period when hundreds of new gTLDs (generic Top Level Domains) were starting to become available for registration. Its purpose is to deter marks infringement in domain name registrations and alert owners when their marks are registered by other parties.
Trademark Clearinghouse Benefits for Brands with Marks
As a cornerstone trademark protection measure available to domain owners, the Trademark Clearinghouse offers several key protective benefits, including:
- Trademark holders with registered TMCH marks receive exclusive first access during the launch of new top-level domain names, with the ability to register their trademarks during “Sunrise Period” which precedes all other registration phases. Having already gone through the pre-validation process to be entered into the TMCH, Sunrise registration is almost always successful and protects your mark in a nTLD before other parties can access registration.
- Note: If the rights details included for a Sunrise registration are incomplete in any way, the registration will fail. Unfortunately, this is not uncommon. When you work with Webnames Corporate, we pre-validate all requirements for TMCH enrollment before submission to the Trademark Clearninghouse thereby minimizing the chance of failure and resubmission at further cost.
- Trademark holders who have marks registered in the TMCH database receive notifications when another party registers a domain name that matches their TMCH record, altering them to potential infringement.
- Parties who attempt to register a domain name that includes a mark that is registered within TMCH are alerted that they may not be entitled to register the domain in question, in essence, warning them that proceeding may constitute infringement
The cost of Trademark Clearinghouse enrollment varies according to the term selected (1, 3 or 5-years) and is roughly equivalent to implementing a domain name lock – affordable protection for a brand’s critical intellectual property.
Who Should Use Trademark Clearinghouse?
Trademark Clearinghouse is an important tool in the toolbox of any brand – be they large and established or growing in profile – that seeks to be proactive around implementing offensive measures to counteract infringement. Typically, we work with either in-house or external legal professionals such as trademark agents, intellectual property lawyers, IP and brand managers, as well as IT professionals such as CTOs or domain managers to lineup requirements and process the enrollment into the TMCH.
The ability to protect trademarks by registering them as domains in the earliest period of a new top-level domain coming to market is powerfully preventative. And while it’s true that Trademark Clearinghouse alone cannot stop trademarks from being registered as domain names, enrollment qualifies brand owners to be able to use domain block programs such run by various domain registries such as the Domains Protected Marks List (DPML), AdultBlock, EPS and Trademark Sentry to fully block the registration of domain names that contain or match your trademark across more than 300+ domain extensions. Domain blocks give brands full-coverage protection at a fraction of the cost of maintaining defensive registrations of individual domain names.
Domain Blocking Programs available through Webnames Corporate
Used together, Trademark Clearinghouse and DPML (in addition to other domain blocks) are highly effective at protecting brands from being registered as domain names, limiting the ability of bad actors to leverage recognized and growing brands in cybercrime and cyberattacks via phishing, brandjacking, malware distribution and more.
Ten years on, the TMCH remains an important tool for preventing mark infringement in the domain name space. For strategic advice about whether TMCH makes sense for protecting your marks in the domain space, simply contact our Webnames Corporate team to speak to a domain management expert.