Elizabeth A. Kleinberg, Esq., Contributor

The new gTLD program for domain names is proceeding, and we are getting closer to the launch of hundreds of new gTLDs. A gTLD is a generic top-level domain name, such as .com and .org. With new gTLDs will come new opportunities for trademark infringement as people try to register second-level domain names containing trademarks belonging to others. The Trademark Clearinghouse is an attempt to decrease these potential problems. If you are a trademark owner, registering your marks with the Trademark Clearinghouse can help you protect your marks. The Trademark Clearinghouse is scheduled to open on March 26, 2013.

What is the Trademark Clearinghouse? It is a global repository for trademark data. It has two primary functions: (i) to verify trademark data; and (2) to maintain a database of the verified trademark records. The Trademark Clearinghouse will provide information to the new gTLD registries to support Sunrise services and Trademark Claims services prior to the launch of gTLDs.

What are Sunrise Services? Sunrise services give trademark owners an advance opportunity to register domain names corresponding to their marks before the names are available to the public. For instance, if a “.computer” gTLD is going to launch, Apple Inc. would be able to register APPLE.computer during the Sunrise period, before the general public would have the chance to do so. New gTLD registries currently are required to offer a Sunrise period of at least 30 days.

What are Trademark Claims Services? These services are provided during at least the first 60 days of the general availability of a new gTLD. During this time, anyone attempting to register a domain name that matches a mark recorded with the Trademark Clearinghouse will receive a notification containing information about the relevant mark. If the notified party proceeds with registering the domain name, the Trademark Clearinghouse will send a notice to the trademark owner, informing the owner that someone has registered the domain name. The Trademark Claims Service will not prevent the notified party from registering the domain name, but this process will give the trademark owner the chance to decide whether to take action.

When will the Trademark Clearinghouse be Operational? Verification services are expected to begin on March 26, 2013. At that time, trademark owners will be able to submit their trademark data to the Trademark Clearinghouse before any new gTLD registries perform domain name registrations.

What Trademarks Can Be Included in the Trademark Clearinghouse? Four types of marks are eligible: (1) nationally or regionally registered word marks from all jurisdictions; (2) word marks that have been validated through a court of law or other judicial proceeding; (3) word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; and (4) other marks that constitute intellectual property by arrangement with a registry.

How Much Does the Trademark Clearinghouse Cost? Generally, the Trademark Clearinghouse will cost $150 per trademark per year. This annual fee includes enrollment in the Trademark Claims Service, but it does not include Sunrise registrations. Individual gTLD registries will set prices for Sunrise registrations, and it is expected that most will cost approximately $200 each.

What are the Next Steps? Registering your trademarks in the Trademark Clearinghouse is an important step to protect your marks, particularly in the gTLDS most relevant to your field. See here for a list of new gTLD applicants. First, register your key marks once the Trademark Clearinghouse opens on March 26, 2013. Second, keep an eye out for the launch of new gTLDS and their Sunrise periods.

Elizabeth A. Kleinberg, Esq., Intellectual Property & Technology Group