Implementation of the Trademark Clearinghouse (TMCH)

With the introduction of new gTLDs ICANN has created additional protection mechanisms for rights holders, especially trademark owners. Whereas existing rights protection mechanisms (RPM) such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP) apply to old and new gTLDs alike, new gTLDs will feature unique RPMs such as the Trademark Clearinghouse (TMCH). Although the Trademark Clearinghouse itself is not a rights protections mechanism per se, it is designed to perform functions that support trademark protection mechanisms during the registration of new gTLD domain names. Two of its associated services are the Trademark Claims Service and the Sunrise Period.

On 3 October 2011 ICANN has posted a Request for Information (TMCH RFI) regarding the TMCH. In April ICANN has released a draft implementation model for the TMCH. ICANN has yet to choose the TMCH provider. WIPO is not participating in the bid. Before any gTLD can be launched, the TMCH has to be up and running and it isn’t a simple task. With ICANN’s track record, the TMCH may cause another delay.

Looking at the registration numbers of the United States Patent and Trademark Office (USPTO) for national registrations (1,782 Mio (Q2, 2012)) and WIPO for international registrations (3.2 Million (2010)) the TMCH will be in a different complexity league compared to TLD Application System (TAS). Nevertheless the TMCH is advised to keep the procedures streamlined and as simple as possible:

„To facilitate prompt authentication reviews, all determinations should be made on the basis of a programmatic review of the data submitted, rather than on extended dialogues between submitters and the Clearinghouse.[1]“

The principle also applies to data that cannot be authenticated since such applications „should generally be rejected without any prejudice toward resubmission of the data.“

Then again verification may have varying complexity. If an applicant provides the registration number of a registered trademark the TMCH may verify this using online services where available. Naturally an automated approach beats the manual approach in speed, accuracy and expenditures. Many trademark offices sell their trademark data. The costs vary from less than USD $100 to a few thousand dollars. Other offices do not offer their data. For those that do not, contact should be made by the Clearinghouse to confirm the accuracy of the data.

Given that most jurisdictions have their own intellectual property offices and procedures, the verification process requires a solution for each jurisdiction.
Considering this diversity in structure, procedure and language, problems are far more likely to occur than a TAS „glitch“ and the time remaining is limited. Providing a registration number for a trademark that is registered in the US or Germany is probably one of the easier verification procedures. The TMCH also allows for trademarks that are based on statute, treaty or documented court proceedings. Again language and statute/treaty interpretation may cause delays if has to be processed manually. In general the TMCH implementation draft tried to minimize the workload und communication steps but even the most basic steps create a system with many variables.

Problems are going to occur but hopefully they will not delay the application process. A delay with the trademark verification in one major country will probably delay the whole gTLD process as sunrise registrations are not possible. Sunrise eligibility requires proof of use. Fortunately with regard to the complexity of the authentication of a trademark proof of use can be established fairly easy.

On a sidenote: This initial advantage may postpone problems. If proof of use is improperly verified, many domain grabbers will use trademarks that are not in use to register valuable domain names. These registrations are likely to be contested by others as happened after the .eu sunrise. After five years of legal proceedings, the Brussels Court of Appeal has finally decided on the most prominent case, the domain name sex.eu. With regard to a smooth gTLD delegation process Sunrise/TMCH authentication questions are not a priority. They may also be solved with different sunrise models, such as auctions.

The potential for mistakes with the TMCH is much greater but as long as they are not major problems ICANN should go ahead. In the end many problems may be fixed with raw manpower and/or in court but the TMCH certainly requires a very good project management.

[1] 2.1.1 TMCH Draft Implementation Model

Further Information:
- List of all intellectual property offices compiled by WIPO