(Publ. 6 OCT 2013) You can now submit your trademark to the Trademark Clearinghouse. The purpose of the Clearinghouse is to facilitate brand protection during the launch of the new generic top level domains. Trademark owners who submit their trademark to the Clearinghouse can participate in Sunrise and register corresponding domain names under the new top level domains before registration is offered to the general public. Also, if someone else registers a corresponding domain name during the launch of a new top level domain, the trademark owner who submitted the mark will be notified immediately. Please find more detailed information about the Clearinghouse under FAQ.   Groth & Co is an official Trademark Clearinghouse Agent As an official Trademark Clearinghouse Agent, Groth & Co can submit your trademark to the Clearinghouse.

• We prepare the required documentation, including your Declaration of Use and Proof of Use, and complete your application for registration with the Clearinghouse.
• We manage your trademark record during the Clearinghouse registration period and make any updates necessary for the trademark record to reflect the actual (base) trademark registration, e.g. company name change, change of contact details, renewals etc.
• We store the code (SMD file) that will be generated for you and which you need when you want to participate in Sunrise.
• We inform you well in advance of any trademark record expiration date and handle renewals.

Our trademark and domain name experts can also give you their advice on what trademarks should be prioritized in the Clearinghouse, what top level domains should be carefully monitored, and your options in the event someone else registers your trademark as a domain name. If you submit your trademark to the Clearinghouse through Groth & Co you are also invited to try out our monitoring service DOMAIN WATCHING. For a period of 12 months, and with no extra charge to you, we monitor new registrations under approx. 220 existing generic and national (ccTLDs) top level domains and provide you with weekly reports of domain name registrations that are identical or similar to your trademark. For more information about the Trademark Clearinghouse and our services, please send us an email at domain@groth.eu, or contact us by phone at +46 8 729 91 00.   Frequently Asked Questions about the Trademark Clearinghouse (TMCH) What is the Trademark Clearinghouse? TMCH is a global database with information about protected trademarks created exclusively for use in connection with the introduction of (this round) about 1400 new top level domains. TMCH verifies that the trademark information submitted is correct and assembles the information in a centralized database, to which registrys, registrars and registrants will have access. The database shall primarily be used in connection with new rights protections mechanisms such as Sunrise and the Trademark Claims Service. Deloitte and IBM are responsible for the management of the Clearinghouse. Why do I need to register my trademark with the Clearinghouse? If you register your trademark with the TMCH you may participate in Sunrise. A Sunrise period of a minimum of 30 days is mandatory for every new generic top level domain and allows trademark owners to register corresponding domain names before registration is offered to the general public. Also, if during the mandatory Trademark Claims Service Period, which shall last for at least 90 days following the introduction of the TLD, someone else registers a corresponding domain name, the trademark owner will be notified. The registrant of that domain name is notified about the corresponding trademark in the TMCH and is required to acknowledge the notification before he can complete the registration, as well as represent that to his knowledge the registration or use of the domain name will not infringe upon the trademark. When do I have to register my trademark with the Clearinghouse? The TMCH opened on March 26, 2013. There is no deadline for submitting your trademark and the TMCH is intended to run “forever” and be used in subsequent TLD application rounds and launches, but since validation at the TMCH may take some time it is preferable to submit the trademark as soon as possible to avoid missing out on the Sunrise and/or Trademark Claims period for any particular new TLD. What trademarks should be registered with the Clearinghouse? Your trademark counsel can advise you on what trademarks you should prioritize in the Clearinghouse. Generally, trademarks that are already exposed to abuse online and trademarks that have proven difficult to defend because of their lacking distinctiveness (e.g. marks that consist of generic or descriptive terms) may benefit from registration with the TMCH. Also, those who find themselves competing with others for the same name may benefit from participating in Sunrise, for which registration with the TMCH is required. What trademarks can be registered with the Clearinghouse? Eligible trademarks are word marks that are nationally or regionally registered trademarks, court validated marks and marks protected by statute or treaty. Marks that include a top level extension such as “.com”, marks that start with or contain a dot (“.”) and marks that do not contain any letters, words, numerals or DNS-valid characters are not accepted by the TMCH. Figurative marks that contain DNS-valid and non-valid characters will only be accepted if the DNS-valid characters are predominant, clearly separable or distinguishable from the device element and all predominant characters are included in the trademark record submitted to the TMCH in the same order they appear in the mark. Can a licensee register a trademark with the Clearinghouse? Yes, but the licensee must provide a licensee declaration, unless the license has been recorded at the relevant trademark office. Does the trademark have to be registered or can I submit a trademark application to the Clearinghouse? Please see above, the trademark must be registered and not merely applied for. Nor are registered trademarks that have been subject to successful invalidation, cancellation, opposition, or rectification proceedings accepted in the TMCH. What information do I need to include with my application for registration with the Clearinghouse? You need to submit your full name and contact details and information about the trademark such as registration number, classes of goods and services and jurisdiction. If you want to be able to participate in Sunrise, you also have to provide a Declaration of Use and a single sample of Proof of Use. Proof of Use; How do I show use of my trademark? You need to provide one sample of proof of use of the trademark to be able to participate in Sunrise. That sample can consist of labels, tags, or containers from a product, or advertising and marketing materials including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials. Domain names, email messages or business cards are not accepted as adequate proof of use. How much does registration with the Clearinghouse cost? You can choose to register your trademark with the Clearinghouse for periods of 1, 3 or 5 years. Please contact us for more information, send an e-mail to domain@groth.eu or call us at +46 8 729 91 00. Will I get a refund if my trademark is not accepted? No, the fee covers the validation process. There are no refunds, regardless of whether your trademark is accepted or not. What happens if the same word mark/trademarked term is submitted to the Clearinghouse by more than one trademark holder? All eligible trademarks will be accepted by the TMCH. More than one trademark holder may therefore be notified when a is registered. If more than one trademark holder wants to register the domain during Sunrise, the registry responsible for the top level domain decides who should be given priority. If the registry regulation does not contain specific requirements for registration, it is possible that the registry chooses to hold an auction. What happens if I do not submit my trademark to the Clearinghouse? Nothing happens, but you will not be able to benefit from the rights protection mechanisms that depend on the TMCH, such as Sunrise and Trademark Claims Service. The UDRP (Uniform Domain Name Dispute Resolution Policy) will also apply to the new generic top level domains, as well as the soon-to-be introduced Uniform Rapid Suspension System. Neither the UDRP nor the URS require registration with the Clearinghouse, but a Trademark Notice sent to a registrant may be useful evidence in a dispute. If I do not register my trademark with the Clearinghouse, can I still be notified if someone registers my trademark as a domain name? Not through any of the rights protection mechanisms in the New gTLD program, but there are many other monitoring services available that cover registrations under both generic and national (country code) top level domains. Please contact us at domain@groth.eu for more information. What can I do if someone registers my trademark as a domain name? There are specific dispute resolution procedures available for disputes over domain names. These do not apply to all top level domains but are often a good alternative to court proceedings which tend to be much more costly. Through these procedures, a complaining party, e.g. a trademark holder, can request that the domain name be transferred to the complainant if the domain name has been registered in bad faith, such as for example in an attempt to take unfair advantage of the fame of the trademark. Please contact us at domain@groth.eu for more information. Do we know what new top level domains will be introduced, and when? The applications for new top level domains are still being examined but many expect the first new top level domains to go live in Q2 or Q3 of 2013. A complete list of all applied for top level domains is available at http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en