General information about the TMCH service

What is the Trademark Clearinghouse?

Trademark Clearinghouse was installed as a validation and protection mechanism to protect trademarks during the introductions of new gTLDs. It has two functions: To authenticate contact details and verify trademark entries, as well as store the trademark data in a central database.

ICANN has commissioned Deloitte to carry out the verification service. Deloitte verifies that the submitted trademark data is correct and checks that the data meets the TMCH requirements. There is no legal consultation.

Technical processing is undertaken in cooperation with IBM.

How can the TMCH service help protect trademarks?

When using the Trademark Clearinghouse service, trademarks are protected in two ways:

1.) Secure participation in new gTLD Sunrise phases
All new registries must offer a "Sunrise Phase" during the introduction of a new "open" gTLD in order to protect the rights of trademark holders. In this phase, trademark holders – depending on the guidelines of the respective registries – can register their trademark domains before anyone else. However, the trademark data must be verified first. This is done by saving all relevant trademark data in the TMCH. Once the data has been saved successfully, the trademark holder can take part in all new gTLD Sunrise phases and thereby protect his trademark rights.

2.) Protection with the Trademark Claims Service
In the Live phases, domain registration generally runs on a first-come, first-served basis and is open to anyone who meets the respective registration requirements of the relevant TLD. If an interested party wants to register a domain that matches a trademark, he receives a "Trademark Claims Notice", with the information that the registration may infringe the trademark rights of a third party. Should the interested party select to carry out the registration, the relevant trademark holder specified in the TMCH receives a "Notification of Registered Name" (NORN) and can therefore react appropriately.

Who can use the service provided by TMCH Agent?

Trademark holders and their representatives (e.g. license holders or authorized agents) can submit trademark to the Trademark Clearinghouse and use the service to protect their trademarks during the introduction of new gTLDs.

The services of TMCH Agent is provided for companies, resellers and professional users.

What is the Trademark Claims Service?

The Trademark Claims Service is a notification system that informs trademark holders and interested parties wishing to register trademark domains about the potential infringement of trademark rights.

In the General Availability, domain registration runs in general on a first-come, first-served basis and is open to anyone who meets the respective registration requirements of the relevant TLD. If an interested party wants to register a domain that matches a trademark stored in the TMCH during the first 90 days in this phase, he receives a "Trademark Claims Notice", with the information that the registration may infringe the trademark rights of a third party. Should the interested party select to carry out the registration, the relevant trademark holder specified in the TMCH receives a "Notification of Registered Name" (NORN) and can therefore react appropriately.

 

 

How does the Trademark Claims Service work?

Parties who wish to register a trademark domain stored in the TMCH during the first 90 days of a new gTLD General Availability receive a warning about potential trademark infringement.

If the interested party selects to register the relevant domain despite the warning, the affected trademark holder specified in the TMCH receives a "Notification of Registered Name" (NORN). The trademark holder is therefore informed and can react appropriately.

If the interested party decides to forgo the registration after being warned, the trademark holder does not receive a NORN.

 

 

How does the Extended Trademark Claims Service work?

The service informs trademark owners about all domain registrations that might infringe his trademark rights. The service will automatically be activated when using the Trademark Claims Service.

What exactly is a label?

In addition to the trademark name, so-called labels can also be stored in the Trademark Clearinghouse. These are variations of the trademark name that are generated automatically by the Trademark Clearinghouse and can not be selected individually by the trademark owner. Generally up to 10 labels can be stored in the Trademark Clearinghouse for free. At TMCH Agent, up to 20 labels are included free-of-charge.

For the trademark "Fisher & Son", for example, the following labels would be possible:

  • fisher-son
  • fisher--son
  • fisherandson
  • fisherand-son
  • fisher---son
  • fisher-andson
  • fisher-and-son

The Trademark Clearinghouse follows two rules in this regard:

  • Special characters that can not be included in domain names, e.g. asterisk, are either eliminated or replaced by a dash (hyphen).
  • The special character "&" is replaced by the word "and" in the respective language for the court of jurisdiction of the trademark name.

What happens to the trademark data in the TMCH?

After being checked and verified, the data is stored in the Tradermark Clearinghouse. The trademark data automatically undergoes annual validation to ensure that the entries in the Trademark Clearinghouse are kept up-to-date.

All new gTLD registries can access data in the Trademark Clearinghouse directly for the introduction of new TLDs. This enables easy participation in new gTLD Sunrise phases and notifications via the Trademark Claims Service.

What is the Abused DNL Service (+50)?

The Abused DNL Service (also +50) is an additional Trademark Claims service that helps trademark holders protect labels that have previously been abused and for which they have already prevailed in court or Uniform Domain Name Dispute. Subject to a fee, up to 50 officially confirmed labels at the Trademark Clearinghouse and make use of the Trademark Claims Service for these.

Please note: These labels are not included in the SMD file and can therefore NOT be used for the Sunrise Service.

Can I select any labels for the Abused DNL Service?

Subject to a fee, you can specify up to 50 labels (hence +50). However, these can not be selected at will - each label must explicitly be named in the relevant UDRP case or court decision.

What information must be submitted to use the Abused DNL Service?

Specific information is requested by the Trademark Clearinghouse, regardless of whether the label in question is related to a UDRP case or national court decision. The following information must be submitted to TMCH Agent:

For UDRP cases:

  • Name of the UDRP provider
  • Case reference number
  • Language in which the UDRP case was dealt with
  • List of the abused labels

For court decisions:

  • Name of the court
  • Court reference number
  • Language in which the court decision was made
  • Copy of court decision
  • List of the abused labels

Formal questions

What trademark types can be submitted?

The following types of trademarks can be submitted to the Trademark Clearinghouse:

  • Registered trademarks that hold national or multinational validity
  • Trademarks validated by court (according to customary rights, civil law) 
  • Trademarks that are protected by a statute or treaty (e.g. geographic designation, designation of origin)

Which trademark types are not accepted?

Trademarks that contain any one of the following criteria cannot be submitted to TMCH:

  • Trademark applications
  • Trademarks that have been repealed or deleted
  • International trademarks applied for over the Madrid System (unless the trademark registration has been recognized nationally)
  • Trademarks that contain a domain ending, e.g. "tmch-agent.com"
  • Trademarks that contain a full stop i.e. period
  • Trademarks consisting of mixed characters, i.e. consisting of ASCII and IDNs
  • Image trademarks, i.e. trademarks that do not contain at least one legible character

What evidence must be provided for registered trademarks?

If you would like to use the Sunrise service for registered trademarks (except those decided by court validation or treaty), you must provide evidence in two regards to confirm your right to use the trademarks:

 

Proof of Use - Declaration of Use
The Declaration of Use must be filled in, signed and sent to your TMCH Agent.

Proof of Use - Single Sample of Use
ONE digital instance of proof that the trademark is in use must be provided. The following forms of evidence are permitted for this:

  • Labels, stickers, tags, packaging material
  • Marketing material (brochure, flyer, catalogue, press release, screenshots of the website, leaflet etc.)
  • Manual or instructions i.e. product information


Please note:

  • The evidence must display the trademark completely, as validated in the Trademark Clearinghouse. Do not use abbreviations or internally used terms for the respective trademarks.
  • The evidence must enable a consumer to clearly distinguish the trademark from other offers or trademarks on the market with regard to the product or service.


The following evidence is not accepted:

  • Domain names that contain the trademark string
  • Email addresses
  • Links or URLs to a website
  • Business cards

Are special characters changed in the word mark?

No, the trademark must be submitted to the TMCH in the exact form as registered at the trademark office i.e. in the same form as defined on the trademark certificate.

How can document evidence be submitted?

All documents must be submitted in electronic form via your TMCH Agent. Documents will not be accepted by TMCH in paper form. Evidence may only be transmitted in PDF or JPG format. The maximum size per document is 10 MB. All required evidence can be uploaded directly in the TMCH Agent web interface.

Do trademarks that are registered in several countries need to be submitted more than once?

For validation in the Trademark Clearinghouse, one of the countries in which the trademark is valid must be selected. The possible labels i.e. the description of special characters is dependent on the country of origin and relevant language.

Is the trademark automatically registered under the new gTLDs?

No, this must be undertaken separately. However, the submission of trademark data to the Trademark Clearinghouse including Sunrise service is required in order to participate in the Sunrise phases of all new gTLDs.

Must the trademark domain be ordered via TMCH Agent later?

No, trademark domains in the upcoming Sunrise phases do not have to be ordered from TMCH Agent, even if the trademark was validated via TMCH Agent. The TMCH Service and domain registrations are separate services. However, customers may naturally use both services (trademark validation and domain registration) if they wish.

How long does the validation of a trademark take at TMCH?

This depends on several factors and can take up to several weeks.

Is the SMD file sent directly after the trademark has been validated?

No, the SMD file is created following a time lag.

Costs

For how long can the TMCH service be booked?

You can book the TMCH service for one (1), three (3) or five (5) years.

How is the pricing for the TMCH Service?

Term of contract     

Price per Entry

1 year:199,00 Euro*
3 years:529,00 Euro*
5 years:    929,00 Euro*


Up to 20 domain labels are included. You find a pricelist in the attachment of the user contract. To receive a contract please get in touch with the sales team of TMCH Agent by using the contact form.

*All offers and prices are valid for business customers only and exclude legal VAT.

Does the TMCH Service price include registration fees?

No, domain registrations are not included in the TMCH Service price. This price only covers the deposit of the trademark data at Trademark Clearinghouse and the related services. If a trademark owner wants to register domains during sunrise periods extra costs for the registration will apply. 

How is the pricing for the Extended Trademark Claims Service?

The Extended Trademark-Claims Service will be automatically activated for free when using the Trademark Claims Service.

What are the costs for additional domain labels?

The first 20 labels are included in the price for the TMCH Service. Additional costs will apply for each extra label according to the duration of the booked contract term (1, 3, or 5 years).

How much is the transfer of TMCH entries to TMCH Agent?

When transferring TMCH entries to TMCH Agent via the SMD file a transfer fee of 109,00 Euro*/entry will apply. The existing contract period will be taken over without extra costs.

* Information may be suject to change.