Want to protect a trademark in the Trademark Clearinghouse for the new gTLDs? I have found a new tool that may help brand owners.

First, the Trademark Clearinghouse allows owners of registered trademarks to get protections in the new global Top-Level Domains (gTLDs).  The protection would be in the form of the opportunity to register the domain name first during the “sunrise period” and it would provide notice if someone attempts to register a second-level domain in one of the new gTLDs, along with the opportunity to purchase the domain.

In order to use the Trademark Clearinghouse, brand owners must have a registered trademark.  In the US, trademark registration generally takes a minimum of 7 months.

But a petition to make special can expedite the USPTO process and likely save at least two months in the application timeline. And I just learned last week that the desire to use the Trademark Clearinghouse is a sufficient basis for a petition to make special.

You see, I filed to register ERIK PELTON with the USPTO on March 18, 2013. Since my primary domain name is www.erikpelton.com, it would be valuable to block anyone trying to register ERIK PELTON as a second level domain, such as erikpelton.email or erikpelton.lawyer or erikpelton.trademark. [I realize that I would very likely have other recourse against anyone using one of these second-level domain names, but such options would be much more expensive than the Trademark Clearinghouse.]

On March 21st, I filed a Petition to Make Special citing the Trademark Clearinghouse as the basis:

Special action is requested so that applicant may use the resulting registration of the mark to apply with the Tradmark Clearinghouse in order to guard against others from using the mark in registration of second-level domains in the new gTLDs (top-level domains) such as erikpelton.email, erikpelton.law, erikpelton.attorney, and more. The Trademark Clearinghouse, an “enhanced rights protection” mechanism built into the new gTLD program, is only available for registered trademarks. As the Trademark Clearinghouse is commencing this month and as the new gTLDs are set to be released by ICANN in the near future, the requested petition to mke special for expedited action is necessary and justified.

For more information regarding the Trademark Clearinghouse and the new gTLDs, see attached materials and the following websites:

On April 11th, the Petition was granted.

Brand owners who want to use the Trademark Clearinghouse, but do hot have a trademark registration, make still be able to use it by filing to register the trademark with the USPTO, followed by a Petition to Make Special.


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