How to Protect Your Trademark by Registering with the Trademark Clearinghouse

Gandi can assist you in registering your trademark with the Trademark Clearinghouse, giving you access to the Sunrise period of domain registration for new extensions.

Gandi acts as an agent in the name and on behalf of the client in connection with the registration of its trademark with the TMCH. The Customer undertakes to comply with the terms and conditions applicable to the registration of his trademark in the TMCH database as detailed on the TMCH website.

How do I order the Trademark Clearinghouse service from Gandi?

You can order the TMCH service by following these steps:

  1. After logging into your account, click the “Organizations” tab in the left navigation menu.
  2. Click on the name of the organization that you are ordering for.
  3. On your organization’s overview page, in the section titled “TMCH Regsitration & SMD Files”, click on “Trademark registration request.”
  4. Download and fill out the “Declaration of Proof of Use Form” on this page.
  5. Click “Make a Request.”
  6. Fill out the form and provide any requested documents, including the completed Declaration of Proof of Use Form.
  7. Submit the completed form and complete the checkout process as normal.

You will receive a confirmation email once these steps are complete. If there are any problems with your application, or if we need additional documents, our support team will contact you via email.

What is the Trademark Clearinghouse or TMCH?

The Trademark Clearinghouse, abbreviated as TMCH, is an online database created by ICANN where trademark holders can officially register their trademarks and receive access to special protections in the registration of new generic top level domains.

When ICANN began expanding their selection of generic top level domains, many businesses were concerned with the added burden of protecting their trademark names across all the different extensions. In 2013 the Trademark Clearinghouse was formed to assist in giving trademark owners extra protections as new extensions are rolled out.

Note

The Trademark Clearinghouse only manages the registering of new domain names and is not a trademark office. You must still register your trademark with whatever legal body administers trademark protections in the country where you conduct business.

What are the new generic top level domains?

In 2012 ICANN began greatly expanding the number of generic extensions available for registration. These are also called “generic top level domains” and “gTLDs” for short. Previously, generic top level domains, such as .com, .net, .org, etc., were fairly limited. Now, there are hundreds of generic top level domains available and more are being added every few months.

What is the Sunrise period?

When a new generic top level domain is first opened for registration it goes through a series of stages. The first stage is called “Sunrise” and is only open to trademark holders who have registered with the Trademark Clearinghouse. In this way, certified trademark holders are given the first chance to register domains containing their trademark.

During the sunrise period any requests to register a domain name must be accompanied by a special file showing that you have registered the contents of the domain name as part of your trademark with the Trademark Clearinghouse. If you register your domain through Gandi, and register your trademark through Gandi, we will provide this file automatically for you during the order process. Or, you can download your file from Gandi for use with another registrar.

You can read more about the stages of registration for a new top level domain on our page explaining how to register with new extensions.

How can I download my SMD file after my trademark is accepted by the TMCH?

You can download your SMD file using the following steps. Please note that if you have used Gandi’s TMCH service, and are also attempting to register a domain during the Sunrise period of an extension through Gandi, we are able to provide this file automatically for you during the checkout process.

  1. After logging into your account, click the “Organizations” tab in the left navigation menu.
  2. Click on the name of the organization that you are ordering for.
  3. On your organization’s overview page, in the section titled “TMCH Regsitration & SMD Files”, click on “Manage.”
  4. Click the 3 green dots next to the SMD file you wish to download and select “Download SMD File.

If I register my trademark, will anyone else be able to register a domain name with my trademark?

During the Sunrise period for a new generic top level domain, only trademark holders who have registered with the Trademark Clearinghouse are able to register domains containing that trademark. If another company also registers the same trademark as yours, they will be able to register a domain name containing the trademark. If this happens, you will be notified of the registration so that you can take legal steps to protect your trademark if you feel the registration was made fraudulently.

After the Sunrise period anyone can register any available domain name, including domain names with your trademark. However, if a domain is registered containing your trademark after the Sunrise period you will still be notified so that you can decide if any legal action is required.

What variations of my trademark can I also protect?

During the sunrise period only your exact trademark will be protected. However, after the sunrise period you will be notified if a domain is registered using any of the variations you request. You will then be able to decide what action to take, if any.

The following are the rules for adding variations, as provided by the TMCH:

Allowed variations include:

  • Containing: This means that you can add text in front of or behind your trademark. Example: “testtestmark” and “testmarktest” are both valid variations.
  • Part of: This rule applies to a series of consecutive characters taken from one of the labels associated with the mark. You are allowed to submit variations for which the length is at least half of the length of the standard label. The minimum length for a variation is 3 characters. Example: “testma” and “mark” are both valid variations. However, “stark” is not allowed because the characters are not consecutive as in the standard label. Also, “tes” is not allowed because this variation is too short.
  • Similar to: This rule applies to similar marks, which means that characters of your standard label can be replaced by similar characters (e.g. ‘o’ by ‘0’, ‘e’ by ‘é’ and so on.) You are allowed to replace maximum one quarter of the total length (rounded up) of the standard label. Please note that you can replace a spacing by a hyphen, but a hyphen not by a spacing. Example: “téstmark” is a valid variation.

Variations should be added in lowercase.

Please note that the rules mentioned above cannot be mixed. This means that a variation should conform to one and only one rule, otherwise an error message will be returned. For example, “téstma” is not allowed as a variation since this does not conform to only one rule.

What trademarks are eligible for registration?

The following types of trademarks are eligible for registration:

  • Trademarks registered at a national or regional level.
  • Trademarks validated by a court decision.
  • Trademarks protected by law or treaty.

Other intellectual property rights are not accepted by TMCH (such as patents, designs, know-how, trade secrets, copyright, etc.).

Only word or semi-figurative marks with a predominant textual component are eligible.

In any case, the following trademarks are not considered eligible under the rules of the TMCH:

  • s made up of a first level extension (.com, etc.)
  • Marks made up of a point
  • Marks that do not contain letters or numbers
  • Trademarks made up of letters or numbers belonging to different alphabets. In fact, domain names made up of different scripts are not authorized under ICANN rules.
  • Trademarks which have been subjected to a procedure of invalidation, cancellation, opposition or rectification.

What do I need to provide to register my trademark with the Trademark Clearinghouse?

Generally, when registering with the TMCH you must provide:

  • Documentation that your trademark is valid
  • Proof that your trademark is currently in use

You will be prompted for this information during the checkout process on our website. If you are unsure what information you need to provide our support team will be happy to help you.

Below you will find a more detailed explanation of the documents needed, as provided by the Trademark Clearinghouse. If you have any questions do not hesitate to contact our support team.

The documentation you provide will depend on the type of trademark you have.

Trademarks of all types must provide:

  • Exact title of the trademark
  • The nature of the client’s right to the mark: owner, licensee or assignee
  • The company name and your address (as indicated on the trademark registration certificate, in the court decision validating the trademark, or in the law or treaty protecting the trademark),
  • Your contact information (surname, first name, e-mail address, telephone and fax).

The following additional documents may be required:

  • The license declaration completed and signed if you declare to be licensed from the trademark, and in the case of a registered trademark if the trademark license is not registered with the trademark office (this document will be provided to You by Our Corporate Team, also available on the TMCH website),
  • The declaration of assignment completed and signed if You declare to be the assignee of the trademark, and in the case of a registered trademark if the assignment is not registered with the trademark office (this document will be provided to the Client by the ‘Corporate Team, also available on the TMCH website).

In any event, if additional information or documents are requested, these must be provided within 20 calendar days, failing which the trademark registration will be rejected without any refund. Documents must be provided in .pdf or .jpg format with a maximum size of 10 MB.

Trademarks Registered at a National or Regional Level

A registered trademark is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register in the mark’s jurisdiction. This means that the trademark in question must have national effect and be registered at the time it is submitted for verification.

The following are not considered registered trademarks and will not be eligible for inclusion in the Clearinghouse:

  • Trademark applications
  • Trademarks registered by a city, state, province, or sub-national region
  • International trademark applications made via the Madrid system unless the underlying basic trademark registration has national effect
  • Registered marks that were subject to successful invalidation, cancellation, opposition, or rectification proceedings

The following are not considered registered trademarks but might be eligible for inclusion in the Clearinghouse under another type of trademark:

  • Well-known or famous trademarks, unless they are also registered
  • Unregistered (including common law) trademark
  • Court-validated marks
  • Marks protected under statute or treaty
  • Other marks that constitute intellectual property

In general, the following information must be submitted to the Clearinghouse in order to verify a trademark record that relates to a registered trademark:

  • Name of the mark corresponds to the name of the registered trademark itself
  • Registration number corresponds with the registration number as provided by the trademark office
  • Registration date corresponds with the date on which the registered trademark was registered [format: YYYY-MM-DD]
  • Application number (not mandatory) corresponds with the application number as provided by the trademark office
  • Application date (not mandatory) corresponds with the date on which the trademark was applied for [format: YYYY-MM-DD]
  • Jurisdiction corresponds with the national or regional territory in which the registered trademark is protected
  • Expiration date (not mandatory) corresponds with the date on which the registered trademark expires [format: YYYY-MM-DD]
  • Description of goods and services class corresponds with the Nice classification of the goods and/or services for which a registered trademark is protected
  • Detailed description of goods and services corresponds with the exact description of the goods and services for which a registered trademark is protected
  • Status of the Trademark Holder (owner/licensee/assignee) corresponds to the capacity of the Trademark Holder that is submitting the Trademark Record
  • Organization corresponds with the name of the Trademark Holder when the Trademark Holder is company or an organization
  • Full name corresponds with the name of the Trademark Holder when the Trademark Holder is an individual
  • Address of the Trademark Holder corresponds with the full address (i.e. street, city, postal code, country of residence) of the Trademark Holders as recorded with the trademark office
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder

Users may opt in for the sunrise services when submitting a registered trademark. In this case, the user shall be required to provide a submission for verification of proof of use. The submission for verification of proof of use must contain two elements:

  • A signed declaration of use
  • A single sample of proof of use

The Clearinghouse may request the Trademark Holder or Trademark Agent to submit additional documentary evidence, such as an article of incorporation in the event of an address change, if it determines that information is missing or is incorrect. In addition to the above, the following documents should be provided when applicable:

Licensee Declaration

A license declaration must be provided when 1) the Trademark Holder or Trademark Agent has indicated that he/she is a licensee of a trademark and 2) the license of the trademark has not been recorded with the relevant trademark office. The actual license agreement will not be required. Only the complete and signed template license declaration should be provided.

Assignee declaration

An assignee declaration should be provided when 1) the Trademark Holder or Trademark Agent has indicated that he/she is an assignee of a trademark and 2) the assignment of the trademark has not yet been recorded by the trademark office.

Copy of an official trademark certificate

In most cases, the information provided in a Trademark Record is verified against the official trademark office’s online database. If the trademark is registered in a jurisdiction where such online database is not accessible, the Trademark Holder or Trademark Agent must submit a copy of the official trademark certificate related to that specific trademark. An overview of the jurisdictions for which an online database is available will be provided in an addendum to these Guidelines.

A copy of the renewal request for a trademark must be provided when the trademark registration period will expire during the term for which a Trademark Record is submitted to the Clearinghouse.

Trademarks Validated by a Court Decision

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.

In the case of a mark validated by judicial proceedings, the judicial authority must have existed as a competent jurisdiction as of the date of the order or judgment. Any referenced authority must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation must be sufficient to show validation of the mark without the need for the Clearinghouse to consult outside resources).

The following marks are not considered court-validated marks and will not be eligible for inclusion in the Clearinghouse:

  • Trademark applications
  • US state trademarks
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation or rectification proceedings

The following are not considered court-validated marks but might be eligible for inclusion in the Clearinghouse under another type of trademark:

  • Registered trademarks
  • Marks protected under statute or treaty
  • Other marks that constitute intellectual property

The following information needs to be submitted to the Clearinghouse in order to verify a record that relates to a court-validated mark:

  • Name of the mark corresponds to the name of the mark as indicated by the court order
  • Reference number corresponds to the number of the court order
  • Date of protection corresponds to date of which the decision of the court order was taken or published
  • Country corresponds to country in which the court order is applicable
  • Description of goods and services corresponds to the goods and/or services for which the mark is protected
  • Court name corresponds to the official title of the court where the court order has been taken
  • Court order corresponds to the copy of the official court order itself
  • Status of the Trademark Holder (owner/licensee/assignee) corresponds to the capacity of the Trademark Holder that is submitting the Trademark Record
  • Organization corresponds with the name of the Trademark Holder when the Trademark Holder is company or an organization
  • Full name corresponds with the name of the Trademark Holder when the Trademark Holder is an individual
  • Address of the Trademark Holder corresponds with the full address (i.e. street, city, postal code, country of residence) of the Trademark Holders as recorded with the trademark office
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder

All of the requested information is mandatory.

As described above, the Trademark Holder or Trademark Agent is obligated to upload a copy of the official court order on which the corresponding mark is based. In addition to the above, the following documents should be provided when applicable:

Licensee Declaration

A license declaration must be provided when 1) the Trademark Holder has indicated that he/she is a licensee of a mark.

Assignee Declaration

An assignee declaration should be provided when 1) the Trademark Holder or Trademark Agent has indicated that he/she is an assignee of a mark.

Trademarks Protected by Law 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 Clearinghouse for inclusion.

These marks may include but are not limited to:

  • Geographical indications and designations of origin

The following marks are not considered marks protected by statute or treaty and will not be eligible for inclusion in the Clearinghouse:

  • Trademark applications or applications for protection of a mark
  • Well-known or famous trademarks, unless also protected by a statue or treaty
  • US state trademarks
  • International trademark applications made via the Madrid system
  • Registered trademarks that were subject to successful invalidation, cancellation, opposition or rectification proceedings

The following are not considered court-validated marks but might be eligible for inclusion in the Clearinghouse under another type of trademark:

  • Registered trademarks
  • Unregistered (including common law) trademarks
  • Court validated marks
  • Other marks that constitutes intellectual property.Note that, for purposes of sunrise eligibility, a mark must be specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008

The following information has to be provided to the Clearinghouse:

  • Name of the mark corresponds to the name of the mark protected under statute or treaty
  • Reference number corresponds to the serial number of the mark if applicable
  • Date of protection corresponds to the date on which protection was granted
  • Country corresponds to the country in which the mark was granted protection
  • Description of goods and services corresponds to the goods and/or services for which the mark is granted protection
  • Title of statute or treaty corresponds to the title of statute or treaty
  • Jurisdiction corresponds to a national territory in which the statute or treaty is applicable
  • Date of execution corresponds to date that the statute or treaty was in full force and effect
  • Status of the Trademark Holder (owner/licensee/assignee) corresponds to the capacity of the Trademark Holder that is submitting the Trademark Record
  • Organization corresponds with the name of the Trademark Holder when the Trademark Holder is a company or an organization
  • Full name correspond with the name of the Trademark Holder when the Trademark Holder is an individual
  • Address of the Trademark Holder corresponds with the full address (i.e. street, city, postal code, country of residence) of the Trademark Holders as recorded with the mark office
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder

Documentary evidence is generally not required for marks protected by statute or treaty because this information is accessible through official online databases. The Clearinghouse might, however, request Trademark Holders or Trademark Agents to submit documentary evidence in the event that information is missing in order to perform the verification, for example:

Copy of the Treaty or Statute

A copy of the treaty or statue may be requested if the Clearinghouse is unable to retrieve the treaty or statute as indicated in the Trademark Record.

Copy of the Certificate If Applicable

In some cases, the treaty or statute refers to protection of marks in general, with certain eligibility requirements and an official authority that has right to certify certain marks that qualify under the statue or treaty. In the event there is no online database, a copy of such certification needs to be provided (e.g., certificate of designation of origin).

In addition to the above, the following documents should be provided when applicable:

Licensee Declaration

A licensee declaration must be provided when the Trademark Holder or Trademark Agent has indicated that he/she is a licensee of a trademark.

Assignee Declaration

An assignee declaration should be provided when the Trademark Holder or Trademark Agent has indicated that he/she is an assignee of a mark.

In the event that one would forget to submit any of the documents upon submission of a mark and the Clearinghouse cannot verify the provided information, the Clearinghouse will request the Trademark Holder or Trademark Agent to provide any of the applicable documents within 20 calendar days after the moment of verification and prior to taking a final determination to accept a Trademark Record. In the event that no documents have been provided, the Trademark Record will not be accepted.

The following will not be accepted by the Clearinghouse, even if protected by statute or treaty:

  • Any mark protected under statute or treaty that includes a top level extensions such as “icann.org” or “.icann” as a mark
  • Any mark protected under statute or treaty starting with or containing a “dot” (.) (e.g., the mark “deloitte.” will not be accepted)
  • Any mark protected under statute or treaty that does not contain any letters, words, numerals, or DNS-valid characters
  • Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state

Can I update or correct my trademark after it has been filed?

It is important to keep your registration up to date so that in the case of any disputes you will have the latest information available in the clearinghouse. If you wish to update your registration contact our support team.