TradeMark Clearing House(TMCH)

Protect Your Trademark Rights During The New gTLD Expansion

Trademark Clearinghouse (TMCH) is a centralized database of validated trademarks established and mandated by ICANN to provide protection to trademark holders in the new coming general Top Level Domains (gTLD). Operated by world class providers – Delloitte and IBM, TMCH ensures trademark holders are free from the trouble about trademark infringement issue in relate to the launching of new gTLDs.

TradeMark Clearing House(TMCH)

TMCH consists of two primary functions:

  • The authentication of contact information of Trademark Records; and
  • The storage of such Trademark Records in a database in order to provide information to the new gTLD registries to support the providing of Notification of Registered Name (NORN).

Protections are provided by TMCH through two services: Sunrise Service and Trademark Claims Service. For more information on Sunrise Service and Trademark Claims Service, kindly visit our FAQs for more information.

Why I need to submit
my trademark to TMCH?

Peace of mind
Before a new gTLD is open for public registration, there is a sunrise period, where only trademark holders is eligible to apply for domain names under the new gTLD before anyone else. Trademark holders can take this advantage to secure the domain name that matches their trademark. In order to do so, applicant must already have a mark record validated by TMCH.

Trademark Claim Service
This is the second protection TMCH offered, where trademark holders will be notified whenever someone registered a domain matches their trademark for a certain period of time.

Why WebNIC?

We have created an exclusive
TMCH platform designed for you
as business owners and professionals.

  clearinghouse tmch feature webnic tmch feature
Servicing account manager  
Renewal notification
SMD Management, direct export for Sunrise
Sunrise period or launch notifications  
Submission of New gTLDs application and Management  
Multilingual customer support service by dedicated and
committed professionals
24/7 customer support  
Guidance and support during submission  
Multiple submission for credit card  

We can't always see who's attacking your brand online, but we can help you.

New GTLD Process Map

Secure Your Trademark In The Sunrise Period
Secure Trademark In Sunrise Period

Recording Trademark

What exactly is the Trademark Clearinghouse?

The Trademark Clearinghouse (TMCH) consists of two primary functions:

  • The authentication of contact information of Trademark Records; and
  • The storage of such Trademark Records in a database in order to provide information to the new gTLD registries to support the providing of Notification of Registered Name (NORN).

How TMCH and the new gTLDs related

The verified data in the TMCH will be used to support both Trademark Claims and Sunrise Services required in all new gTLDs. The TMCH will play an important role in the New gTLD Program and in the ongoing protection of trademark rights.

How is WebNIC related to TMCH?

WebNIC is one of the few official Trademark Agent of TMCH. We ensure the applicant is hassle-free from the complex procedures to record a trademark by submitting the Trademark Records on behalf.

How will recording trademarks with TMCH protect companies’ brands?

Recording trademarks within TMCH will help companies protect their brands in two ways: Sunrise Service and Trademark Claims Service.

Sunrise is an initial period of at least 30 days before domain names are offered to the general public. Trademark owners can take advantage of the Sunrise to safeguard the domain name that matches their trademark. A Sunrise Period is mandatory for all new gTLDs and having a validated trademark entry in TMCH is the minimum requirement to participate in this limited pre-registration period. So, to be prepared for “the biggest Sunrise ever”, trademark owner must make sure that they enter any trademark that needs protection into the TMCH.

The Trademark Claims service follows the Sunrise. It is a notification service – mandated by ICANN for all new gTLDs – to warn both domain name registrants as well as trademark holders of possible infringements. The service works as follows:

  • Potential domain name registrants receive a warning notice when attempting to register a domain name that matches a trademark term in the TMCH.
  • If, after receiving and accepting the notice, the domain name registrant does continue to register the domain name, the trademark holder with a corresponding mark will receive notification of the domain name registration, so they can take any appropriate action if should they so desire.

Applicant who submits their Trademark record via WebNIC will automatically opt in for above services for free.

How will the Trademark Claim Service function?

Trademark Claims services will be provided immediately after the end of Sunrise period. TMCH will notify the Trademark holder or the Trademark Agent when a third party registers a domain name that is identical to their trademark recorded in TMCH.

If I opt for the trademark claims services, will I be informed if a domain name applicant requests a domain name similar to my trademark recorded with TMCH? Orwill I only be informed when that domain name same with my trademark record?

The Trademark holder will receive a Trademark Claims notification as of the registration of a domain name matching their trademark record, not one that is similar. The Trademark holders will not receive a notification if the domain name applicant decides not to pursue with his/her request to register a domain name matching your trademark record after he/she has receive a notification informing him/her of the existence of your TMCH trademark record.

How to submit a Trademark Record via WebNIC?

Premier Partner may submit Trademark Record via Trademark Manager in Partner Central, please download the submission guide for more information on the procedure.

What type of Trademark Record is accepted by TMCH?

  • Registered trademarks – a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register in the mark’s jurisdiction. Must have national effect and be registered at the time it is submitted for verification.
  • Court validated marks – refer to a mark that has been validated by a court of law or other judicial proceeding at the national level, such as unregistered (common law) marks and/or well-known marks.
  • Marks protected by statute of treaty – for marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the TMCH for inclusion.
  • Other marks that constitute intellectual property.

What mark is considered as not eligible?

Marks that are not accept by TMCH includes but not limited to:

  • Picture mark that does not consists of any word element;
  • Marks that includes a toplevel extension such as “icann.org” or “.icann” or “trademarkexample.com”;
  • Marks with mixed language scripts, i.e., WebNIC注册商;
  • Mark that is not of national effect.

What additional supporting documents do applicants require to provide when recording Trademarks via WebNIC?

Registered trademarks:

  • A signed declaration of use (download link ); and
  • A single sample proof of use.

Court validated marks:

  • Official court order on which the corresponding mark is based

Marks protected by statute nor treaty:

  • Below documents are only require to submit by request, which includes, but not limitto:
    • Copy of the treaty or statute; or
    • Copy of the certificate is applicable.

In addition to the above, if the applicant is a licensee nor assignee of the Trademark, they are required to submit following documents:

  • Licensee declaration
  • Assignee declaration

All documents can be provided electronically in PDF nor JPG format, with a maximum file size of 1 MB per document. The documents must be humanly-readable.

What is considered as a proof of use?

The range of samples accepted to support verification of proof of use by TMCH is intended to be flexible to accommodate practices from multiple jurisdictions.

Accordingly, examples of acceptable evidence include items from either of the following categories:

  • 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).

Physical copies of samples are not required. Copies of photographic submissions will be acceptable.

Examples of samples that would not be accepted as adequate proof of use include:

  • Inclusion of a trademark in a domain name;
  • Email messages;
  • Licenses to use a trademark application for business licenses that include the trademark as part of the business name; or
  • Business cards.

The sample submitted must contain the complete name of the registered trademark as recorded in the Trademark Records and as verified. TMCH will not assume the role of making determinations on the scope of rights associated with a recorded trademark or the labels it can generate.

In the declaration of use, is the ‘Submitting Party’ the agent?

The submitting party is the name of the trademark holder.

If I submit several trademark records for the same trademark, will I have to submit several proof of use or will one be sufficient?

Applicant will need to provide a declaration of proof of use and a sample of proof of use for EACH Trademark Record.

Should only one sample of use be shown if there are multiple goods and services registered and only a few are verified by the submitted proof?

Yes, only one sample of proof of use is necessary per trademark record.

Concerning the evidence of use for an international trademark, does an evidence of use in one country will be sufficient or will we have to send evidences for all countries covered?

One sample of proof of use is sufficient per trademark record.

Can a screenshot of a website be submitted as proof of use?

Yes, a screenshot of a website containing the name of the trademark can be accepted as proof of use.

For proof of use, is a link to a website enough?

A link to website is insufficient.

Can I submit paper evidence, such as a proof of use?

All documents need to be provided electronically.

To benefit from the sunrise services, do I have to submit a sample of proof of use even if my trademark registration is based upon proven usage?

Yes, if applicant submit a registered trademark in TMCH and wish to benefit from the sunrise services, applicant will have to submit a single sample proof of use as well as a signed declaration of proof of use.

For a multi-class registration, are we required to provide a detailed description for every class?

Yes, applicant should provide a description of every class you have selected if the description is different from description and class number as provided in the description of goods and services class. The detailed description will be included in the SMD (Sunrise file) as well as on the notification provided to third party during the trademark claims services.

Is it possible to record a trademark if the name of the trademark consists only of two characters?

Yes, any mark with at least one character is acceptable in TMCH.

Are trademarks containing numbers accepted in TMCH?

Yes, trademarks containing numbers can be accepted by TMCH.

Is it possible to record a mark containing a dot, if the dot is replaced with a hyphen or the word “dot”?

Yes, recording a mark containing a dot is allowed.

Can trademark subject to cancellation or invalidation procedures be accepted in TMCH?

Trademarks subject to successful cancellation or invalidation procedures cannot be accepted in TMCH.

Can trademarks subject to rectification proceedings be accepted in TMCH?

Trademarks subject to successful rectification proceedings cannot be accepted in TMCH.

Can I submit information about trademarks with the same name but registered in different countries, under the same trademark record?

No, this is not possible. Trademarks with the same name but registered in a different jurisdiction by the Trademark Holder will be treated as separate and independent trademark records. This will mean that if applicant desire, for instance, to submit to TMCH a trademark registered in France and in the United Kingdom, applicant will have to submit two separate and independent records: one for the trademark registered in France and one for the trademark registered in the United Kingdom.

Are trademark registered at state level accepted in TMCH?

State trademarks are not eligible for insertion in TMCH as trademarks need to be at least of national effect in order to be accepted in TMCH. Trademarks registered by a city, state, province, or sub-national system will therefore not be accepted in TMCH.

Are applied for trademarks accepted in TMCH?

No, trademarks which are currently under application will not be accepted in TMCH.

Is it possible to submit trademarks in TMCH as an assignee?

Yes, assignees are allowed to submit TM in TMCH. They fall into the category of Trademark Holders. They will need to provide an assignee declaration.

Is it possible to submit trademarks in TMCH as a licensee?

Yes, licensees are allowed to submit TM in TMCH. They fall into the category of Trademark Holders. They will need to provide a licensee declaration.

What is the term of registration for Trademark Record?

Applicant can choose to record their Trademark with TMCH for 1, 3 or 5 years.

Why should I submit my trademark record for 3 or 5 years?

A one (1) year registration will require the renewal of the record. When recording a trademark record for three (3) or five (5) years the trademark record will be automatically renewed. This minimizes the chance of missing out on a sunrise period because your trademark was pending renewal.

What will be the starting point of the term of registration (e.g. 1 year)?

For a Trademark Holder who recorded or submitted one or more Trademark Records in TMCH during the Early Bird Registration Period (i.e. the period before the first Sunrise of the first new gTLD) for a period of one year, the initial registration period will begin from the date that the first Trademark Record has been registered or submitted in TMCH; the initial Registration Period will end on the first anniversary of the Early Bird Registration Period’s closing date.

For a Trademark Holder who did not record or submit a Trademark Record during the Early Bird Registration Period, but rather registered for one year, the initial registration period will begin as from the date the Trademark Record is recorded or submitted in TMCH, and ends on the first anniversary of such date.

Why should I submit my trademark record as early as possible?

It can take some time to verify a trademark record. Consequently, waiting too long to submit your trademark records could imply that applicants may miss a sunrise registration for a specific new gTLD.

Can I benefit from the prior registration during a sunrise period offered by a new gTLD for a trademark which is not registered with TMCH?

No, it is impossible to register a domain name matching our trademark during a Sunrise period without the SMD file (Signed Mark Data). This file provided to applicant by TMCH once the trademark record has been verified.

Verification

How will the verification work?

There are three types of trademarks accepted in TMCH, and depending on the type of the mark and the country of protection, TMCH will do a check against the online databases or perform an in-depth analysis.

How long will the verification process take?

This depends on the number of verifications requested at the time your trademark record is submitted and of whether all provided information is correct.

Will I be charged if my trademark record is deemed invalid by TMCH?

The applicant will be charged per trademark record they submitted regardless of the final decision taken by the verification agents of TMCH, applicant will be charged even if the trademark record is deemed invalid.

Are there additional charges for rectifying errors in my trademark submission?

Applicant will have the possibility to correct errors free of charge one time. Applicant will be notified by the verification agents of TMCH should the information submitted be incorrect. Applicant can provide a correction within a time limit of 20 business days. Only if the information is still incorrect after this first correction, or if applicant has failed to correct the information within 20 business days, the trademark record will be deactivated.

Are the domain name registration fees in the Sunrise period included in the fee for a trademark record registration in TMCH?

The fee TMCH charges, is for recording the trademark in the TMCH. If applicant wish to participate in a Sunrise for a TLD, applicants are require to pay separately for the registration fees.

Are well known or famous non registered marks accepted in TMCH?

Well known or famous non registered trademarks can be accepted in TMCH provided that the Trademark Holder can submit to TMCH a court order providing for such protection. Such trademark must be recorded under the trademark type “court validated mark”.

How often will a Trademark Record be re-verified?

If applicant register a Trademark Record for a period of three (3) or five (5) years, it will be re-verified annually. In the event that the provided information is incorrect or no longer up-to-date a notification will be sent out to the Trademark Holder.

Renewing Trademark Record

How do I renew my Trademark Record?

Premier Partner may submit renewal request via Trademark Manager in Partner Central.

For renewal purpose, is additional proof of use required?

If the information of the trademark is the same, then you only need to provide additional proof of use every 5 years.

What is required to renew my trademark record?

If the Trademark Record is registered for 3 or 5 years, it will be automatically renewed. Applicant will only need to resubmit information again, if the information previously submitted is no longer complete and/or accurate, or if the applicant is require to do so by the verification agent during the automatic annual re-verification.

If the Trademark Record in the TMCH has expired, applicant will have to submit the same information as when submitting a trademark record for the first time.

Domain Name Label

What is “label”?

If applicant opts in for Sunrise Service when record a trademark with TMCH, TMCH will (i) generate an SMD file allowing Trademark Holders to register domain name matching the labels applicable for a Trademark Record and (ii) provide Trademark Holders with Notification of Registered Names (NORNs) during the Sunrise period.

Identical labels (domain names) are automatically generated on the basis of the name of the trademark. The labels generated are identically matched with the trademark, meaning that the label must consist of the complete and identical textual elements of the trademark.

For example, if the Trademark Holder’s trademark is AB, then the domain name label that is applicable must be AB for it to be deemed identical match. If the Trademark Holder’s trademark label is èé, than the identical label is èé and not ee.

In addition, a domain name containing a plural version of the mark is not considered to be an identical match.

Additions to the identical match rule.

When a trademark contains a special character that cannot be represented in a domain name label, the following rules will apply:

  • Special characters contained within a trademark that are unable to be used in a domain name label may be either: (i) omitted; or (ii) replaced by hyphens.
  • Special characters [email protected] and “&” contained within a trademark may be spelled out with appropriate words of the official language(s) of the country/jurisdiction in which the mark is protected. However, labels with mixed scripts will not be generated.

Example:

Hypothetical Trademark Rule Possible identical matches label in the .test TLD
ICANN Example A icann-example.test
Icannexample.test
ICANN-Example A icann-example.test
Example&Test
(US trademark)
B exampletest.test
example-test.test
exampleandtest.test
Example&Test
(Canadian trademark)
B exampletest.test
example-test.test
exampleandtest.test
exampleettest.test
ICANN_Example A icann-example.test
icannexample.test
Deloitteテスト A None

What is the difference between a “domain name” and a “label”?

The term “domain name” is a name consisting of two or more levels, such as, for instance, “webnic.cc”. A label is a part of a domain name, such as, for instance, “webnic” from the domain name “webnic.cc”.

How many domain name labels can I link to my Trademark Record?

There is no maximum amount of domain name labels that can be linked to a Trademark Record.

My trademark contains a character with an accent. When generating the labels, will this character be replaced with the corresponding character without accent?

The character with the accent will be present in the label generated by TMCH. It will not be replaced by a character without accent as IDN characters are accepted by TMCH.

Dispute

What is two or more identical trademarks are registered in TMCH? Who will be able to register the corresponding domain name during sunrise?

Both trademark records, if eligible, will be able to participate in TMCH, but it is up to the registry to decide how they want to accept the domain name applications (e.g. first come, first serve, auction, etc.).

What options will a trademark owner have for challenging a website registration if someone tries to register a website using a company’s trademark?

Sunrise services allow trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public. New gTLD registries are required to offer a Sunrise period for at least 30 days.

The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration. During the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in TMCH will receive a notification displaying the relevant mark information.

If notified party goes ahead and registers the domain name, TMCH will send a notice to those trademark holders with matching records in TMCH, informing them that someone has registered the domain name.

If different Trademark Holders or Trademark Agents have recorded in TMCH two identical trademarks, when will they be informed?

The Trademark Holders or Trademark Agents will only be notified when another party registered a domain name matching the name of their trademark during a sunrise period or a trademark claims period.