Utilizing the Trademark Clearinghouse to Protect Your Brand from New gtlds

Transcription

1 Utilizing the Trademark Clearinghouse to Protect Your Brand from New gtlds Hosted by: March 27, MarkMonitor Inc.

2 Utilizing the Trademark Clearinghouse to Protect Your Brand from New gtlds Moderator Elisa Cooper Director, Product Marketing, Domain Management MarkMonitor Inc. Featured Speakers Patrick M. Flaherty Assistant General Counsel, Trademarks and Copyrights Verizon Sanjiv Sarwate Principal Legal Counsel, Trademarks and Copyrights DELL

3 Agenda About MarkMonitor New gtld Landscape Trademark Clearinghouse Overview

4 About MarkMonitor Largest and oldest corporate-only domain registrar ICANN-accredited since million domain names under management including all 5 of the worlds most highly-trafficked websites First to combine Domain Management with Brand Protection Long-standing participation with ICANN Chair of Registrars Constituency Chair of the Business Constituency Committed to serving the needs of brand owners Acquired by Thomson Reuters in 2012

5 New gtld Landscape

6 New gtld Landscape New gtld Program significantly changes the Internet landscape New TLD types Brands Community-based Geographical Open Generics Closed Generics

7 Reveal Day Statistics 1930 Applications (1409 Unique Strings) 1179 Uncontested Applications 751 Contested Applications (Representing 230 strings) 652.Brand Applications 40% of Fortune 100 applied 116.IDNs (Internationalized Domain Names) Geographical distribution of applicants 911 from North America 675 from Europe 303 are from Asia-Pacific 24 from Latin America and the Caribbean 17 from Africa

8 Total Applications by Type Community, 68, 4% Geographical, 66, 3% Brand, 652, 34% Standard, 1144, 59%

9 652.Brand Applications Technology 77 Media Financial Manufacturing 56 Online 49 Services 46 Auto 43 Sector Insurance Retail Travel CPG Pharma Luxury Apparel Number of Applications

10 Most Highly Contested Strings..APP.INC.HOME.ART Applied-for gtld.shop.llc.book.blog.music.movie.design Number of Applications

11 Top 10 Applicants Number of Applications

12 New gtld Timeline

13 Trademark Clearinghouse Overview

14 Trademark Clearinghouse (TMCH) Central repository of authenticated trademark information Primarily used to support pre-launch Trademark Claims and Sunrise Registrations and Dispute Resolution Policies The standards for inclusion are as follows: Nationally or regionally registered word marks from all jurisdictions Any word mark that has been validated through a court of law or other judicial proceeding Any word mark protected by a statute or treaty in effect at the time the mark is submitted Other marks that constitute intellectual property Ability to also include up to 50 previously abused domains associated with a validated record in the TMCH

15 Trademark Clearinghouse Purpose Enables Trademark Owners To 1) Receive notification (Claims Service) when exact-match domain name registrations are made for first 90 days of general availability Does NOT Prevent registrations or block others from registering trademarks as domain names 2) Register their trademarks as domain names during so-called Sunrise Periods

16 Benefit 1 of TMCH: Trademark Claims Service If a domain is submitted for registration and is an identical match to a mark in the TC, the Trademark Claims service will provide notification to the prospective registrant that: The mark is included in the Trademark Clearinghouse The prospective registrant understands this The use of the requested domain name will not be infringing Applicable in the first 90 days of general registration only If the domain is registered, the rights owner is notified

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18 Benefit 2 of TMCH: Sunrise Registrations Sunrise registration periods provide rightsholder with priority registration Assuming that eligibility requirements are met, Sunrise Registrations must be made available to all trademark holders in the Trademark Clearinghouse Must show Proof of Use to qualify Additionally, notices will be provided to all trademark holders in the Trademark Clearinghouse if someone is seeking a sunrise registration Conflicts that arise may be subject to a Sunrise Dispute Resolution Policy (SDRP)

19 Trademark Clearinghouse Data Required data Mark Holder Holder Type Mark Type Jurisdiction Application Number Registration Number Application Date Registration Date Expiration Date Goods and Services Class Number Goods and Services Description Uploaded Documents

20 Matching Rules

21 Acceptable Examples of Proof of Use Labels, tags, or containers from a product This provides a physical indication that a product is available for use or access by consumers Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials) This is meant to show that the rights holder is communicating to consumers that a product or service has a particular source Links, copies, or photographic submissions will be acceptable

22 Unacceptable Examples of Proof of Use Inclusion of a mark in a domain name Registration of a domain name does not provide an indication that there is a good or service being offered to consumers messages Private communications do not provide evidence of a product or service generally available to consumers Licenses to use a mark or applications for business licenses that include the mark as part of the business name These would provide an indication that an entity is preparing to use the mark, but does not constitute a demonstration that the mark is being used Business cards Business cards for an individual do not provide an indication that there is a good or service being offered to consumers in connection with the trademark

23 What benefits do you see in using the TMCH?

24 What should brand owners understand about the TMCH?

25 How will you make use of the TMCH?

26 How will you determine which marks to register in the TMCH?

27 How will Verizon handle enforcement issues using the TMCH?

28 What is Verizon doing to prepare for the launch of the TMCH?

29 How does DELL anticipate the TMCH affecting operation of their own TLD?

30 Q&A Moderator Elisa Cooper Director, Product Marketing, Domain Management MarkMonitor Inc. Featured Speakers Patrick M. Flaherty Assistant General Counsel, Trademarks and Copyrights Verizon Sanjiv Sarwate Principal Legal Counsel, Trademarks and Copyrights DELL

31 Thank You! For information on MarkMonitor solutions, services and complimentary educational events: Contact via Visit our website at: Contact via phone: US: 1 (800) Europe: +44 (0)