The Renewal Process within the Trademark Clearinghouse (TMCH)

By July 14, 2016Trademarks

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.

Lutz Berneke

Author Lutz Berneke

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