On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization overseeing the Internet’s domain name space, will begin to accept applications to record trademarks in the Trademark Clearinghouse (TMCH). The new generic Top-Level Domain (gTLD) program will add more than 1,400 new top-level domains, including .brand and .generic TLDs, to the Internet. Trademark owners should review their trademark holdings to determine which to record with the TMCH to protect against registration of domain names by third parties that incorporate the recorded marks.

Through its Trademark Claims Service, the TMCH will notify domain name applicants when domain names are sought that use trademarks recorded with the TMCH and advise trademark registrants if the domain names are registered. Recordation in the TMCH is also a prerequisite for sunrise-period registration of trademarks as second-level domain names before others are able to register domain names. Trademarks must also be in actual use for them to be eligible for sunrise registration. The TMCH will charge a fee of $145 per trademark per year to record the trademark for both services. Some discounts will be available for multiyear registrations. Preparation, filing and maintenance of TMCH recordations will require additional fees. Trademark owners will also have to pay if they wish to register their trademarks as domain names during sunrise periods.

Vedder Price can assist in determining which trademarks to protect in the domain name space, record and maintain trademarks in the TMCH, and review domain name registration notices. Please contact us for more information, to arrange for a cost and process briefing, and to record trademarks with this important trademark protection program.

If you have questions about this article, please contact Robert S. Beiser at +1 (312) 609 7848 or your Vedder Price attorney.

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