Protect the brand and its capabilities

What is the Trademark Clearinghouse?

The Trademark Clearinghouse (TMCH) is an advanced intellectual rights protection mechanism and the integral part of ICANN’s new gTLD program. New gTLDs’ operators will hold the responsibility for introducing certain rights protection mechanisms, backed by the Trademark Clearinghouse. TMCH allows brand owners to submit data related to their trademark into one consolidated database, before and during the launch of new gTLDs.

Verification of data is the basic and most important condition to be fulfilled before the trademark holder is able to register its corresponding domain name during the Sunrise Period, that is the pre-registration period of multiple TLDs.

Pre-registration of new gTLDs is offered by Web Solutions free of charge. Click here to proceed.

For more information, contact our Support Team at support@web-solutions.eu.

Services offered by the TMCH:

Brands are protected by the TMCH in two ways: with a Sunrise Service and a Trademark Claims Service.

Web Solutions further offer a Managed TMCH Submissions service. Click here to read more.

TMCH Sunrise services:

Sunrise Period refers to an initial period of between 30-60 days prior to offering domain names to the general public. Trademark holders can benefit from the Sunrise by safeguarding the domain name that matches their trademark. A Sunrise Period is compulsory for all new gTLDs and the minimum requirement to participate in it is having a validated trademark entry in the Trademark Clearinghouse.

Trademark owners can register their IP rights directly with the TMCH or through an accredited agent. Web Solutions is an accredited agent with the Trademark Clearinghouse offering a Managed Submissions service ensuring a smooth and streamlined process of collecting and submitting all the necessary information to the TMCH.

Following verification, the IP rights are stored in a centralised repository and can be used to register the corresponding domain name during the Sunrise period of any new gTLD, before general registrations begin. With one single registration working across as many as 1000 gTLD launches, this process will greatly reduce the associated administrative costs and time consumption for trademark holders.

TMCH Claims services:

The Trademark Claims service comes after the Sunrise. It is a notification service – administered by ICANN for all new gTLDs – to alert both domain name registrants as well as trademark owners of possible infringements. The service works as follows:

A potential domain name applicant gets a warning notice when attempting to register a domain name that matches a trademark term listed in the TMCH.

If, after the receipt and acceptance of the notice, the domain name applicant does continue to register the domain name, the trademark owner with a corresponding mark will receive notification of the domain name registration, so they can decide whether or not to take any appropriate action.

Accepted Trademarks

The following are trademarks that can be accepted and verified by the Trademark Clearinghouse:

  • registered trademarks,
  • marks protected by statue or treaty,
  • court validated marks,
  • any other marks that constitute Intellectual Property (IP) rights according to the registry’s policies and that meet the Trademark Clearinghouse’ eligibility requirements.

In case other types of marks are accepted at a registry’s request, additional guidelines related to these marks will be published on the Website.

Registered trademarks

A registered trademark is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register within the mark’s jurisdiction. This means that the given trademark must have national effect and must be registered at the time it is submitted for verification.

The following are not regarded as registered trademarks and will not be eligible for inclusion in the Trademark Clearinghouse:

  • Trademark applications;
  • Trademarks registered by a city, state, province, or sub-national region;
  • International trademark applications made via the Madrid system unless the underlying basic trademark registration has national effect;
  • Registered marks that were the subject of successful cancellation, invalidation, opposition, or rectification proceedings.

The following are not regarded as registered trademarks but might be eligible for inclusion in the Trademark Clearinghouse under another type of trademark:

  • Well-known or famous trademarks (unless they are also registered);
  • Unregistered (including common law) trademark;
  • Court-validated marks;
  • Marks protected under statute or treaty;
  • Other marks that comprise intellectual property.

The following registered trademarks will not be accepted by the Trademark Clearinghouse:

  • A registered trademark that includes a top level extension, for instance, trademarks such as “icann.org” or “.icann”;
  • Any registered trademark beginning with or containing a “dot” (.) (for instance, the trademark “deloitte.” will not be accepted);
  • Any registered trademark that does not contain any letters, numerals, words or DNS-valid characters.

Marks protected by statute or treaty

In the case of marks protected by statute or treaty, the appropriate statute or treaty must be in effect at the time the mark is submitted to the Trademark Clearinghouse for inclusion. These marks may include but are not limited to designations of origin and geographical indications.

The following marks are not regarded as marks protected by statute or treaty and will not be eligible for inclusion in the Trademark Clearinghouse:

  • Trademark applications or applications for protection of a mark;
  • Well-known or famous trademarks (unless also protected by a statue or treaty);
  • US state trademarks;
  • International trademark applications made via the Madrid system;
  • Registered trademarks that were subject to successful cancellation, invalidation, opposition or rectification proceedings.

The following are not regarded as marks protected by statute or treaty but might be eligible for inclusion in the Trademark Clearinghouse under another type of trademark:

  • Registered trademarks;
  • Unregistered (including common law) trademarks;
  • Court validated marks;
  • Other marks that comprise intellectual property.

Please note that, for a mark to be accepted for the sunrise registration, it must be specifically protected by a statute or treaty currently in force and that was effective on or before 26 June 2008.

The following marks will not be accepted by the Trademark Clearinghouse, even if protected by statute or treaty:

  • Any mark protected under statute or treaty that consists of a top level extension such as “icann.org” or “.icann” as a mark;
  • Any mark protected under statute or treaty starting with or containing a “dot” (.) (e.g., the mark “deloitte.” will not be accepted);
  • Any mark protected under statute or treaty that does not consist of any words, letters, numerals, or DNS-valid characters; and
  • Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state.

Court validated marks

Court validated marks mean a mark that has been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks. In the case when a mark has been validated by judicial proceedings, the judicial authority must have existed as a competent jurisdiction as of the date of the order or judgment. Any referenced authority must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation evidencing the validation of the mark must be sufficient, without the need for the Trademark Clearinghouse to consult outside resources).

The following marks are not regarded as court-validated marks and will not be eligible for inclusion in the Trademark Clearinghouse:

  • Trademark applications;
  • US state trademarks;
  • International trademark applications made via the Madrid system;
  • Registered trademarks that were subject to successful cancellation, invalidation or rectification proceedings;

The following are not regarded as court-validated marks but might be eligible for inclusion in the Trademark Clearinghouse under another type of trademark:

  • Registered trademarks;
  • Marks protected under statute or treaty;
  • Other marks that constitute intellectual property.

The following marks, even if court-validated, will not be accepted by the Trademark Clearinghouse:

  • Any court validated mark that consists of a top level extensions such as “icann.org” or “.icann”;
  • Any court validated trademark beginning with a “dot” (.) or containing a “dot” (.);
  • Any court validated mark that does not consist of any words, letters, numerals, or DNS-valid characters; and
  • Any state or city court-validated mark.

Rights protection mechanism