Recording a mark with the TMCH provides two principal benefits to a trademark holder:
In addition, the TMCH simplifies the process of opposing SLDs for trademark owners who have registered their marks with the TMCH. Once the trademark owner has documented its registered rights in a mark with TMCH, this information is used each and every time the trademark owner lodges a challenge to an attempt to register a SLD incorporating the mark. It also will give gTLD Operators easy access to information in order to better review and assess claims by trademark owners.
While recordal of a trademark with the TMCH delivers these benefits, it is important to understand its limitations. It is primarily a repository of verified information. Recordal in the TMCH will not act as a bar to registration of any SLD. The obligation to give notice (item no. 2 above) is mandated for only the first 60 days following the opening of a gTLD. In addition, notification is required only with respect to SLDs that are identical to the recorded mark. No notification will be sent with respect to even slight misspellings or variations on the recorded mark.
Even with these limitations, trademark owners should consider recording key brands with the TMCH. The greatest benefit is likely to be the sunrise registration period, which will give trademark owners an early opportunity to register their mark as a SLD, thereby foreclosing a proactive third party from registering the brand and forcing the brand owner to spend time and money challenging the registration.
In order for trademarks to be eligible for inclusion in the TMCH, they must be (1) a federally registered trademark (a trademark registered only at the state level does not qualify); (2) a court-validated trademark; or (3) a trademark protected by statute or treaty. Detailed information proving the validity of a mark may be requested and proof of actual trademark use is required in order to participate in the sunrise registration period detailed below. Registration fees for one year will cost around $150 with modest discounts for a three- or five-year registration.
To learn more about the new gTLDs and the history of the TMCH, please refer to Foley Legal News Alert, ICANN Reveals List of Applied-for gTLDs: What Trademark Owners Can Expect.
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:
Dayna M. Frenkel
Richard J. McKenna