What $150 Will Get You at ICANN's Trademark Clearinghouse

By Doug Isenberg Three and a half months after promising to announce the providers of its new Trademark Clearinghouse, ICANN has finally informed of us its selections: Deloitte and IBM.

While Deloitte and IBM are certainly well-credentialed, it remains unclear whether the Trademark Clearinghouse will, despite ICANN's assurances, truly provide much protection for trademark owners amid the gTLD expansion.

As described by the Applicant Guidebook, the purpose of the Trademark Clearinghouse is to serve as "a central repository for information to be authenticated, stored, and disseminated, pertaining to the rights of trademark holders." By registering their marks in the Trademark Clearinghouse:

  • Trademark owners will obtain certain advantages and notifications during "sunrise" periods that will apply to registrations of second-level domain names within new gTLDs as they are launched; and
  • Registrants of second-level domain names will receive (at least during the first 60 days after a new gTLD is open for general registration) notifications of trademarks that are an identical match to their newly registered domain names.

Although many have questioned whether these systems will do anything to combat cybersquatting in the new gTLDs, one lingering and important question appears to have been answered along with ICANN's most recent announcement: How much will trademark owners have to pay to participate in the Trademark Clearinghouse?

A new set of web pages on ICANN's site, posted simultaneously with the announcement of the selection of Deloitte and IBM, provides additional information about the Trademark Clearinghouse and "tracks the progress of implementation work done on the Trademark Clearinghouse." A document on the new page titled "Preliminary Cost Model" (dated June 1, 2012) indicates that the "authentication and validation" services are "expected" to cost trademark owners less than $150 "per submission" (that is, per trademark submitted to the Clearinghouse).

While the $150 fee may seem like a low price to pay for any type of trademark protection online, trademark owners need to keep a number of factors in mind as they decide whether -- or to what extent -- they want to participate, including the following:

  • The $150 fee is per trademark.  Therefore, a company with a large portfolio of different trademarks could face a substantially higher fee if it elects to register all of its trademarks at the Clearinghouse.
  • To the extent that participation in the Trademark Clearinghouse provides trademark owners with any meaningful protection, that protection will be limited to instances of only identical matches between trademarks and second-level domain names.
  • Participation in the Trademark Clearinghouse will not prevent cybersquatters or anyone else from registering any domain name.

In addition, a number of outstanding questions remain about mechanical issues relating to the Trademark Clearinghouse. Hopefully, these will be answered quickly, to give trademark owners time to fully consider their options before deciding whether even a $150 expense is a worthy investment.