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The Renewal Process within the Trademark Clearinghouse (TMCH)

 

Why renew ?

Deloitte has disclosed a study which offers a stunning insight : 95% of the queries for trademark terms are not being followed through to a live registration if the potential registrant is confronted with a TMCH notice warning about potential infringement of trademark rights !

If a mark is registered in the TMCH, such claim notice is sent as a warning to anyone attempting to register a domain name which matches the trademark term. Over 500,000 such Claims Notices have been delivered already on the basis of – per mid October 2014 - over 33.000 trademarks registered by 13.601 organizations in the TMCH covering 119 jurisdictions worldwide.

These metrics show that the Claim Notice is clearly working as deterrent. The high number of Claim Notices also indicates a high level of interest in trademarked terms from third parties.

A total of 129.095 official claim notifications have been sent out to potential infringers who have registered domains despite prior claim notice. The trademark owners have been informed in parallel.

So far, only a small part of new domain extensions have been launched. There are over 1.000 new extensions still to come. Also ICANN has announced a “second opening” : in 2016 or 2017 again, a new wave of domain extensions can be expected which will guarantee the usefulness of TMCH registrations for at least the next 5 years.

In sum : The TMCH remains the only universal rights protection system across the entire programme of new domain extensions. By recording protected terms in the TMCH, trademark owners are being offered the best protection available as more new domains are deployed. Together with the URS and UDRP, the TMCH completes ICANN’s right protection toolbox, and is the first line of defense as well as the most cost-efficient way before taking any litigating step.

Important : All mark records that were submitted for one year before the 4th of November 2013, will expire this year as from the 5th of November.

Notifications : 60 days – 30 days –(10 days grace period) starting from the 14th of November 2014 (cut-off day) - see below for details Expired Status : No changes possible once a record received an expired status.
Renewability : Once a mark record is within 1 year of expiring the option to renew with the TMCH will become possible.

Duration : Any mark which is eligible for renewal, can be renewed via TMCH Genius for 1, 3 or 5 years.

Pricing : The same as new records.

Impact to Mark Record :

a) Renewal : SMD files will be revoked and regenerated (the “notBefore” and “notAfter” dates will be updated in the new SMD file). Also the Certificates will be revoked and regenerated.
b) Expiration : status will change to expired. SMD file and Certificate will be revoked.

Global protection boosts your value
Lutz Berneke

Latest feeds

31 mars 2017

What to expect from the next round of gTLDs

New gTLDs coming soon ? A question we often are asked here at EBRAND Services is : when will I be able to apply for my own internet extension (like my competitor did) ? We usually reply that the process and policy used for the last round of applications are currently being reviewed and that it’s difficult to give a firm date. To help clarify matters, we’ve decided to write this article which will delve into the current review, and foreseeable date, of the next rounds of applications....

suite 14 juillet 2016

The Renewal Process within the Trademark Clearinghouse (TMCH)
Deloitte has disclosed a study which offers a stunning insight : 95% of the queries for trademark terms are not being followed through to a live registration if the potential registrant is confronted with a TMCH notice, which warns about potential infringement of trademark rights !

suite 30 janvier 2014

ICANN Passess 100 Delegations for New gTLDs This week ICANN announced they have passed the 100 mark for new gTLDs to be delegated. The move to being delegated is one of the final steps before the Registries that control the gTLDs may begin accepting registrations. In total, as of 21 January there were 107 gTLDs delegated.

In the past couple of weeks the first brand was delegated with the Australian university Monash having its gTLD delegated. And one of the pioneers of the new gTLD programme, those behind the application for .berlin became the second city gTLD to be delegated behind .wien (Vienna).

suite 13 janvier 2014

Latest .AT Report Outlines Policy Differences Between ccTLDs and gTLDs

With new gTLDs coming online early in 2014 one question many will be wondering is what will differentiate these new gTLDs to existing country code TLDs ?

That issue was addressed in the latest .at report from the Austrian registry, nic.at. The report notes the big differences will be in policies such as “who exactly is allowed to register a domain and under what conditions ? And what kinds of restrictions are in place ?”

suite 13 décembre 2013

Important update regarding the Trademark Clearinghouse (www.clearinghouse.org)

The Trademark Clearinghouse officials just announced that they “will extend the Claims Notifications from 90 days to an indefinite period.”

suite 4 novembre 2013

DotShabaka First gTLD To Launch Sunrise Period

The first new gTLD has quietly launched its Sunrise period with the dotShabaka Registry, the applicant for شبكة. (.shabaka in Arabic translates to .web in English).

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