[kictanet] Will the Trademark Clearinghouse Fulfill its Potential-Will Trademark Owners Even Use it?

Wed May 1 18:00:08 EAT 2013

By Thomas Barrett

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.

http://www.circleid.com/posts/20130501_will_the_trademark_clearinghouse_fulfill_its_potential/

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