Trademark Clearinghouse (TMCH)

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).

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.

WebNIC is one of the few official trademark agents of TMCH. We ensure the applicant enjoys a hassle-free experience from the complex procedures of recording a trademark by submitting the trademark record on behalf of him/her.

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 Sunrise Period, trademark owners must make sure that they enter any trademark that needs protection into the TMCH.

The Trademark Claims service follows after 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 actions if or should they so desire.

Any applicants who submit their trademark record via WebNIC will automatically opt in for the above services for free.

The Trademark Claims Service will be provided immediately after the end of Sunrise Period. TMCH will notify the trademark holder or the trademark agent.

The trademark holder will receive a Trademark Claims notification when the registration of a domain name matches 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 received a notification informing him/her of the existence of your TMCH trademark record.

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

1. 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.
2. 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.
3. Marks protected by statute or 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.
4. Other marks that constitute intellectual property.

Marks that are not accepted by TMCH include but are not limited to:

• Picture marks that do not consists of any word elements;
• Marks that include a top-level extension such as “icann.org” or “.icann” or “trademarkexample.com”;
• Marks with mixed language scripts, i.e., WebNIC注册商;
• Marks that are not of national effect.

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

• Official court order on which the corresponding mark is based

• The documents below are only required to submit upon request, which include, but are not limited to:
  • Copy of the treaty or statute; or
  • Copy of the certificate if applicable.

• Licensee declaration
• Assignee declaration

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, screenshots, or social media marketing materials).

Physical copies of samples are not required. Copies of photographic submissions are 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 or applications 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.

The submitting party is the name of the trademark holder.

Applicants will need to provide a declaration of proof of use and a sample of proof of use for EACH trademark record.

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

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

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

A link to a website is insufficient.

All documents need to be provided electronically.

Yes, if the applicant submits a registered trademark in TMCH and wishes to benefit from the Sunrise services, he/she will have to submit a single sample proof of use as well as a signed declaration of proof of use.

Yes, the applicant should provide a description of every class you have selected if it is different from the 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 Service.

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

Yes, trademarks containing numbers can be accepted by TMCH.

Yes, recording a mark containing a dot is allowed.

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

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

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, for instance, if the applicant wishes to submit to TMCH a trademark registered in France and in the United Kingdom, he/she 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.

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

No, trademarks which are currently undergoing the application process will not be accepted in TMCH.

Yes, assignees are allowed to submit trademarks in TMCH. They fall under the category of trademark holders and they are required to provide an assignee declaration.

Yes, licensees are allowed to submit trademarks in TMCH. They fall under the category of trademark holders and they are required to provide a licensee declaration.

Applicants can choose to record their trademark with TMCH for a term of 1, 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 in case your trademark is pending renewal.

For a trademark holder who has 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 new gTLD) for a term of one year, the initial registration period will begin from the date that the first trademark record is 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 has not recorded or submitted a trademark record during the Early Bird Registration Period, but rather later on registered for one year, the initial registration period will begin from the date the trademark record is recorded or submitted in TMCH, and ends on the first anniversary of such date.

It can take some time to verify a trademark record. Consequently, waiting too long to submit your trademark records can imply a possibility of missing a Sunrise registration for a specific new gTLD.

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