TMCH

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Contents

Required Documents

  • TMCH requires all necessary documents in one .pdf or .jpg file, which must not exceed 10 MB file size.
  • The document file name must contain one of the document type declarations:
    <TMLICENSEEDECLARATION|TMASSIGNEEDECLARATION|TMOTHER|DECLARATIONOFPROOFOFUSESAMPLE|PROOFOFUSEOTHER|TMCOPYOFCOURTORDER>
Attention.png For example:
mycompany_DECLARATIONOFPROOFOFUSESAMPLE_20130628.pdf



Clearinghouse guidelines

TMCH_guidelines_v1.2_0.pdf
The Clearinghouse guidelines provide an overview of the eligibility requirements and what type of marks may be accepted for inclusion in the Clearinghouse.
Updated to 1.2. See last page for list of changes.

License declaration for registered trademarks

License Declaration-Registered Trademark.pdf
The license declaration for registered trademarks is a template declaration which needs to be provided when the Trademark Holder of a registered trademark has indicated that he/she is the licensee of a trademark and the license of the trademark has not been recorded with the relevant trademark office. This license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.


License declaration for marks protected under statute or treaty

License_Declaration-Mark_protected_under_statute_or_treaty.pdf
The license declaration for marks protected under statute or treaty is a template declaration which needs to be provided when the Trademark Holder of a mark protected under statute or treaty has indicated that he/she is the licensee of a mark protected under statute or treaty. This license declaration for registered trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.


License declaration for court validated trademarks

License_Declaration-Court_Validated.pdf
The license declaration for court validated trademarks is a template declaration which needs to be provided when the Trademark Holder of a court validated mark has indicated that he/she is the licensee of a court validated mark. This license declaration for court validated trademarks needs to be downloaded, completed and signed by both licensor (the current owner) and licensee (the holder of the mark). The licensee is the party that is mentioned on the trademark record submitted to the Clearinghouse.


Proof of use - signed declaration to Trademark Agents

Proof_of_use-signed_declaration_TM_Agent.pdf
The signed declaration for proof of use is a template declaration which needs to be provided, along with a single sample of proof of use, in order to benefit from the sunrise services. The signed declaration of proof of use should be downloaded, completed and signed. The name of the submitting party is the name of the Trademark Holder.


List of online databases

List of online databases.pdf
List of the jurisdictions in which an online database for registered trademarks is available. Please note that this list is subject to change.


Adding a trademark

[COMMAND]
COMMAND          = AddTrademark
MARKTYPE         = <REGISTERED_MARK|COURT_VALIDATED_MARK|STATUTE_OR_TREATY>
MARKNAME         = <Text> Trademark Name
ENTITLEMENT      = <OWNER|ASSIGNEE|LICENSEE>
TMHOLDER         = <CONTACTHANDLE-ID>
DOCTYPE          = <TMLICENSEEDECLARATION|TMASSIGNEEDECLARATION|TMOTHER|DECLARATIONOFPROOFOFUSESAMPLE|PROOFOFUSEOTHER|TMCOPYOFCOURTORDER>
GOODSANDSERVICES = <TEXT> List of all goods / services (the character limit is 4000 chars in summary)
OR
GOODSANDSERVICES0...4096  = <TEXT> List of all goods / services (the character limit per line is 4000 chars/50000 chars in summary)
PERIOD           = <1|3|5> Years (registration of trademark record)
[Optional: depends on MARKTYPE]
TMREGDATE           = <YYYY-MM-DD> Date when trademark was registered (only for REGISTERED_MARK)
TMREGEXPIRATIONDATE = <YYYY-MM-DD> Date when trademark will expire (only for REGISTERED_MARK)
TMREGNUMBER         = <Text> Trademark Register Number (only for REGISTERED_MARK)
TMREGJURISDICTION   = <Text> Legal responsibility for trademark (only for REGISTERED_MARK)
TMREGCLASS          = <1-45 | N/A> (only for REGISTERED_MARK - please see Nice Classification)
SOTEXECDATE         = <YYYY-MM-DD> Date when statute or treaty was established (only for STATUTE_OR_TREATY)
SOTTITLE            = <Text> Title of the statute or treaty (only for STATUTE_OR_TREATY)
REFNUMBER           = <Text> Reference number of the trademark (only for STATUTE_OR_TREATY/COURT_VALIDATED_MARK)
PRODATE             = <YYYY-MM-DD> Date when trademark was protected  (only for STATUTE_OR_TREATY /COURT_VALIDATED_MARK)
COURTNAME           = <Text> Name of the court (only for STATUTE_OR_TREATY/COURT_VALIDATED_MARK)
LABELS: read the rules here
ALABEL0...199         = <Text> Max.63 Chars ASCII representation of the label linked to the mark
ULABEL0...199         = <Text> Max.63 Chars Non-ASCII representation of the label linked to the mark
SMDINCLUSION0...199   = <0|1> Flag for sunrise services: the label will be included in the SMD file to be used in sunrise
CLAIMSNOTIFY0...199   = <0|1> Flag for the claims services: registrants will be made aware of mark existance and you will receive
                            notification on registration during the initial period of general availability
X-ACCEPT-ADDITIONAL-LABEL-COST = <0|1> Flag for accepting additional label costs if more than 10 labels (max.200)
[RESPONSE]
code = 200
description = Command completed successfully
runtime = 0.185
property[auth][0] = @xzwg4lP.GIJ
property[created date][0] = 2013-04-09 09:25:28.0
property[email][0] = 0B26A740-F9D5-45B2-B1C0-F16390164BBA@tmchhandling.info
property[registration expiration date][0] = 2014-04-09 09:25:28.0
property[renewal date][0] = 2014-04-09 09:25:28.0
property[status][0] = REQUESTED
property[trademark][0] = 0B26A740-F9D5-45B2-B1C0-F16390164BBA


Adding a Trademark Record for registered trademarks

[COMMAND]
COMMAND = AddTrademark
MARKTYPE = [REGISTERED_MARK]
MARKNAME = [Text] Trademark Name
ENTITLEMENT = [OWNER|ASSIGNEE|LICENSEE]
TMHOLDER = [CONTACTHANDLE-ID]
DOCTYPE = TMLICENSEEDECLARATION| TMASSIGNEEDECLARATION| TMOTHER| DECLARATIONOFPROOFOFUSESAMPLE| PROOFOFUSEOTHER
GOODSANDSERVICES = [TEXT] List of all goods / services (the character limit is 4000 chars in summary)
OR
GOODSANDSERVICES0...4096  = <TEXT> List of all goods / services (the character limit per line is 4000 chars/50000 chars in summary)
PERIOD = [1|3|5] Years (registration of trademark record)
TMREGDATE = [YYYY-MM-DD] Date when trademark was registered
TMREGEXPIRATIONDATE = [YYYY-MM-DD] Date when trademark will expire
TMREGNUMBER = [Text] Trademark Register Nummer
TMREGJURISDICTION = [2-digit Code] Legal responsibility for trademark
Allowed values ​​for TMREGCOUNTRY and TMREGJURISDICTION: please see here
TMREGCLASS = [1-45 | N/A] - please see Nice Classification
Optional: ALABEL0...199 = [Text] Max.63 Chars ASCII representation of the label linked to the mark ULABEL0...199 = [Text] Max.63 Chars Non-ASCII representation of the label linked to the mark SMDINCLUSION0...199 = 0|1 (Sunrise Service: the label will be included in the SMD file to be used in sunrise) CLAIMSNOTIFY0...199 = 0|1 (Claims Service: registrants will be made aware of mark existance and you will receive notification on registration during the initial period of General Availability) X-ACCEPT-ADDITIONAL-LABEL-COST = <0|1> Flag for accepting additional label costs if more than 10 labels (max.200)


Adding a Trademark Record for court validated trademarks

[COMMAND]
COMMAND = AddTrademark
MARKTYPE = [COURT_VALIDATED_MARK]
MARKNAME = [Text] Trademark Name
ENTITLEMENT = [OWNER|ASSIGNEE|LICENSEE]
TMHOLDER = [CONTACTHANDLE-ID]
DOCTYPE = TMLICENSEEDECLARATION|TMASSIGNEEDECLARATION|TMCOPYOFCOURTORDER
GOODSANDSERVICES = [TEXT] List of all goods / services (the character limit is 4000 chars in summary)
OR
GOODSANDSERVICES0...4096  = <TEXT> List of all goods / services (the character limit per line is 4000 chars/50000 chars in summary)
PERIOD = [1|3|5] Years (registration of trademark record)
REFNUMBER = [Text] Reference number of the trademark
PRODATE = [YYYY-MM-DD] Date when trademark was protected
COURTNAME = [Text] Name of the court
Optional: ALABEL0...199 = [Text] Max.63 Chars ASCII representation of the label linked to the mark ULABEL0...199 = [Text] Max.63 Chars Non-ASCII representation of the label linked to the mark SMDINCLUSION0...199 = 0|1 (Sunrise Service: the label will be included in the SMD file to be used in sunrise) CLAIMSNOTIFY0...199 = 0|1 (Claims Service: registrants will be made aware of mark existance and you will receive notification on registration during the initial period of General Availability) X-ACCEPT-ADDITIONAL-LABEL-COST = <0|1> Flag for accepting additional label costs if more than 10 labels (max.200)


Adding a Trademark Record for marks protected by statute or treaty

[COMMAND]
COMMAND = AddTrademark
MARKTYPE = [STATUTE_OR_TREATY]
MARKNAME = [Text] Trademark Name]
ENTITLEMENT = [OWNER|ASSIGNEE|LICENSEE]
TMHOLDER = [CONTACTHANDLE-ID]
DOCTYPE = TMLICENSEEDECLARATION|TMASSIGNEEDECLARATION|TMOTHER
GOODSANDSERVICES = [TEXT] List of all goods / services  (the character limit is 4000 chars in summary)
OR
GOODSANDSERVICES0...4096  = <TEXT> List of all goods / services (the character limit per line is 4000 chars/50000 chars in summary)
PERIOD = [1|3|5] Years (registration of trademark record)
SOTEXECDATE = [YYYY-MM-DD] Date when statute or treaty was established (only for STATUTE_OR_TREATY)
SOTTITLE = [Text] Title of the statute or treaty (only for STATUTE_OR_TREATY)
SOTPROTECTIONRULING = <Iso-Country-Code or Iso-Country-Codes> i.e. de or de,us,be (only for STATUTE_OR_TREATY)
REFNUMBER = [Text] Reference number of the trademark
PRODATE = [YYYY-MM-DD] Date when trademark was protected
Optional: ALABEL0...199 = [Text] Max.63 Chars ASCII representation of the label linked to the mark ULABEL0...199 = [Text] Max.63 Chars Non-ASCII representation of the label linked to the mark SMDINCLUSION0...199 = 0|1 (Sunrise Service: the label will be included in the SMD file to be used in sunrise) CLAIMSNOTIFY0...199 = 0|1 (Claims Service: registrants will be made aware of mark existance and you will receive notification on registration during the initial period of General Availability) X-ACCEPT-ADDITIONAL-LABEL-COST = <0|1> Flag for accepting additional label costs if more than 10 labels (max.200)

Registered trademarks

General

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.


Information to be provided to the Clearinghouse

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 exactly as recorded with the trademark office, abbreviations or other differences are not valid, e.g. "str." instead of "street"; and
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder.

Please note: In some cases the Trademark Record of the respective Trademark Office does not contain a street for the holder. Nonetheless it's necessary to fill in data in the corresponding field of the contact handle. In this case, please insert N/A in the street field.

Proof of use / Additional information related to Sunrise Eligibility Requirements

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:

The Trademark Holder or Trademark Agent must upload these documents into the Clearinghouse interface. These documents are mandatory for participation in sunrise services.

  • A signed declaration of use

A signed declaration by the Trademark Holder must be submitted. This document can be downloaded from the Website and must be duly signed by the Trademark Holder. A sample is provided below:
[Name of submitting party] hereby certifies that the information submitted to the Clearinghouse is, to the best of [Name of submitting party] knowledge, complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made to the Clearinghouse; that this information is not being presented for any improper purpose; and that if, at any time, the information contained in this submission is no longer accurate, the [Name of submitting party] will notify the Clearinghouse within a reasonable time of that information which is no longer accurate, and to the extent necessary, provide that additional information necessary for the submission to be accurate. Furthermore, if any Clearinghouse-verified mark subsequently becomes abandoned by the Trademark Holder, the Trademark Holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned, or has been the subject of successful opposition, invalidation, cancellation, or rectification proceedings.

  • A single sample of proof of use

The range of samples accepted to support verification of proof of use by the Clearinghouse is intended to be flexible to accommodate practices from multiple jurisdictions.
In establishing the list of accepted samples, the guiding principle that has been used is that a sample should be an item that evidences an effort on behalf of the Trademark Holder to communicate to a consumer so that the consumer can distinguish the products or services of one from those of another.
Accordingly, examples of acceptable evidence include items from either of the following categories:

  1. Labels, tags, or containers from a product; or
  2. Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials).

Physical copies of samples are not required. Links, copies, or photographic submissions will be acceptable.
Examples of acceptable evidence will be provided in the addendum to these Guidelines.
Examples of samples that would not be accepted as adequate proof of use include:

  1. Inclusion of a trademark in a domain name;
  2. Email messages;
  3. Licenses to use a trademark or applications for business licenses that include the trademark as part of the business name; or
  4. Business cards.

The sample submitted must contain the complete name of the registered trademark as recorded in the Trademark Records and as verified. The Clearinghouse will not assume the role of making determinations on the scope of rights associated with a recorded trademark or the labels it can generate.

Documentary evidence

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. A template can be downloaded from the Website. 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. A template can be downloaded from the Website.


Other documents

  • 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.

  • Copy of the renewal request of the trademark

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.
In the event that one would forget to submit any of the documents and the Clearinghouse cannot verify the provided information, the Clearinghouse will request the submitting party to provide these documents within 20 calendar days 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.


Exceptions

As provided in the gTLD Applicant Guidebook, the following registered trademarks will not be accepted by the Clearinghouse.

  • A registered trademark that includes a top level extension, for example, trademarks such as “icann.org” or “.icann”
  • Any registered trademark starting with or containing a “dot” (.) (e.g., the trademark “deloitte.” as below will not be accepted)
Deloitte.png
  • Any registered trademark that does not contain any letters, words, numerals or DNS-valid characters.


Court validated marks

General

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.


Information to be provided to the Clearinghouse

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 exactly as recorded with the trademark office, abbreviations or other differences are not valid, e.g. "str." instead of "street"; and
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder. All of the requested information is mandatory.

Please note: In some cases the Trademark Record of the respective Trademark Office does not contain a street for the holder. Nonetheless it's necessary to fill in data in the corresponding field of the contact handle. In this case, please insert N/A in the street field.

Documentary evidence

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. A template can be downloaded from the Website.

  • 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. A template can be downloaded from the Website.
In the event that one would forget to submit any of the documents and the Clearinghouse cannot verify the provided information or other documents need to be provided, the Clearinghouse will request to provide these 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.


Exceptions

The following, even if court-validated, will not be accepted by the Clearinghouse:

  • Any court validated mark that includes a top level extensions such as “icann.org” or “.icann”;
  • Any court validated trademark mark starting with a “dot” (.) or containing a “dot” (.);
  • Any court validated mark that does not contain any letters, words, numerals, or DNS-valid characters; and
  • Any state or city court-validated mark.


Marks protected by statute or treaty

General

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.


Information to be provided to the Clearinghouse

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 exactly as recorded with the trademark office, abbreviations or other differences are not valid, e.g. "str." instead of "street"; and
  • Contact information of the Trademark Holder corresponds to the phone/fax number of the Trademark Holder.

Please note: In some cases the Trademark Record of the respective Trademark Office does not contain a street for the holder. Nonetheless it's necessary to fill in data in the corresponding field of the contact handle. In this case, please insert N/A in the street field.

Documentary evidence

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. A template can be downloaded from the Website.

  • 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. A template can be downloaded from the Website.
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.


Exceptions

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; and
  • Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state.


Labels (Domain names)

Introduction

The Clearinghouse will support sunrise services and trademark claims services offered by gTLD registries.
Sunrise services include: 1) generating an SMD file allowing Trademark Holders or Trademark Agents to register domain names matching the labels applicable for a Trademark Record and 2) providing Trademark Holders or Trademark Agents with Notification of Registered Names (NORNs) during the Sunrise Period. (NORNs are notifications sent by the Trademark Clearinghouse to Trademark Holders and Trademark Agents during a Sunrise Period or Trademark Claims Period to inform them that a domain name has been registered matching labels included in a Trademark Record.)
Identical labels (domain names) are automatically generated on the basis of the name of the trademark, according to the Matching Rules as established in the gTLD Applicant Guidebook.


Label rules

The following method can be used to verify if a label matches a name of a mark

  1. a dot ‘.’ is not allowed in a mark name – all mark names (and labels) with a dot will be rejected.
  2. determine which characters that can be represented in an IDN label determine which characters that can be represented in an IDN domain name (refer to IDN 2008 guideline)
  3. all other IDN non permissable characters can be omitted or replaced by a hyphen ‘-’
  4. in case the character is the ampersand (&) or the atpersand (@) it can be omitted, replaced by a hyphen ‘-’ or by a transliteration of ‘and’ or ‘at’ in the language linked to the jurisdiction or the country where the mark is registered. (see appendix 3)
  5. Verify if the label is conform the general domain name rules
    • name cannot start with a hyphen(‘-’)
    • name cannot end in a hypen(‘-’)
    • name with a dash on the 3rd and 4th position is rejected
    • name and its ascii representation (a-label) cannot be longer than 63 characters

If using the 5 above steps allow to convert the mark name in a label will be accepted.

Examples:

Mark name         Labels
ab & c            Allowed: ab-c, ab-c, abandc, ab-and-c (if jursdiction is US), ...
                  Not allowed: ab---c (dash on 3rd and 4th position), a-and-c (b cannot be omitted), ...
a+b               Allowed: ab, a-b
+abc+             Allowed: abc
                  Not allowed: -abc (starts with dash), abc- (ends with a dash), ...


Algorithm

  1. We will assume the trademark name TM is according to ICANN specifications (no dot allowed)
  2. create an empty list of lists A
  3. for all characters C in the name TM check if the character C can be represented in IDN2008
    • yes : create a list L with a single element, the character C
    • no: create a list L with 2 elements : an empty string and the character ‘-’
    • if the character is ‘&’ or ‘@’ add additional transliterations to the list L (based on country or jurisdiction – see appendix 3)
    • add the list L to the list of lists A
  4. create a complete set S of labels by calculation all unique combinations of exactly one choice for all lists L in the list A (this can easily be done by recursion or by straight for- ward looping over all combinations)
  5. eliminate all labels from the set S that start or end in a ‘-’, have a ‘-’ in 3rd and 4th position or are longer then 63 characters
  6. S now contains the list of all possible labels linked to the mark name TM


Generate labels

The "TMCH Label Generator" can be used through the webinterface or by the following API command:

[COMMAND]
command=GetTrademarkLabels
MARKNAME=Fäther & Sön & Mother & Daughter &
MARKTYPE=REGISTERED_MARK
COUNTRY=DE
[RESPONSE] code = 200 description = Command completed successfully runtime = 0.359 property[alabel][0] = xn--fthersnmotherdaughter-51b33b property[alabel][1] = xn--fthersnmother-daughter-04b15b property[alabel][2] = xn--fthersnmother--daughter-v7b96b property[alabel][3] = xn--fthersnmother---daughter-qbc78b property[alabel][4] = xn--fthersn-motherdaughter-04b15b property[alabel][5] = xn--fthersn-mother-daughter-v7b96b property[alabel][6] = xn--fthersn-mother--daughter-qbc78b property[alabel][7] = xn--fthersn-mother---daughter-lec50c property[alabel][8] = xn--fthersn--motherdaughter-v7b96b property[alabel][9] = xn--fthersn--mother-daughter-qbc78b property[alabel][10] = xn--fthersn--mother--daughter-lec50c property[alabel][11] = xn--fthersn--mother---daughter-ghc32c property[alabel][12] = xn--fthersn---motherdaughter-qbc78b property[alabel][13] = xn--fthersn---mother-daughter-lec50c property[alabel][14] = xn--fthersn---mother--daughter-ghc32c property[alabel][15] = xn--fthersn---mother---daughter-bkc14c property[alabel][16] = xn--fther-snmotherdaughter-04b25b property[alabel][17] = xn--fther-snmother-daughter-v7b07b property[alabel][18] = xn--fther-snmother--daughter-qbc88b property[alabel][19] = xn--fther-snmother---daughter-lec60c property[alabel][20] = xn--fther-sn-motherdaughter-v7b07b property[alabel][21] = xn--fther-sn-mother-daughter-qbc88b property[alabel][22] = xn--fther-sn-mother--daughter-lec60c property[alabel][23] = xn--fther-sn-mother---daughter-ghc42c property[alabel][24] = xn--fther-sn--motherdaughter-qbc88b property[alabel][25] = xn--fther-sn--mother-daughter-lec60c property[alabel][26] = xn--fther-sn--mother--daughter-ghc42c property[alabel][27] = xn--fther-sn--mother---daughter-bkc24c property[alabel][28] = xn--fther-sn---motherdaughter-lec60c property[alabel][29] = xn--fther-sn---mother-daughter-ghc42c property[alabel][30] = xn--fther-sn---mother--daughter-bkc24c property[alabel][31] = xn--fther-sn---mother---daughter-5mc06c property[alabel][32] = xn--fther--snmotherdaughter-v7b17b property[alabel][33] = xn--fther--snmother-daughter-qbc98b property[alabel][34] = xn--fther--snmother--daughter-lec70c property[alabel][35] = xn--fther--snmother---daughter-ghc52c property[alabel][36] = xn--fther--sn-motherdaughter-qbc98b property[alabel][37] = xn--fther--sn-mother-daughter-lec70c property[alabel][38] = xn--fther--sn-mother--daughter-ghc52c property[alabel][39] = xn--fther--sn-mother---daughter-bkc34c property[alabel][40] = xn--fther--sn--motherdaughter-lec70c property[alabel][41] = xn--fther--sn--mother-daughter-ghc52c property[alabel][42] = xn--fther--sn--mother--daughter-bkc34c property[alabel][43] = xn--fther--sn--mother---daughter-5mc16c property[alabel][44] = xn--fther--sn---motherdaughter-ghc52c property[alabel][45] = xn--fther--sn---mother-daughter-bkc34c property[alabel][46] = xn--fther--sn---mother--daughter-5mc16c property[alabel][47] = xn--fther--sn---mother---daughter-0pc97c property[alabel][48] = xn--fther---snmotherdaughter-qbc09b property[alabel][49] = xn--fther---snmother-daughter-lec80c property[alabel][50] = xn--fther---snmother--daughter-ghc62c property[alabel][51] = xn--fther---snmother---daughter-bkc44c property[alabel][52] = xn--fther---sn-motherdaughter-lec80c property[alabel][53] = xn--fther---sn-mother-daughter-ghc62c property[alabel][54] = xn--fther---sn-mother--daughter-bkc44c property[alabel][55] = xn--fther---sn-mother---daughter-5mc26c property[alabel][56] = xn--fther---sn--motherdaughter-ghc62c property[alabel][57] = xn--fther---sn--mother-daughter-bkc44c property[alabel][58] = xn--fther---sn--mother--daughter-5mc26c property[alabel][59] = xn--fther---sn--mother---daughter-0pc08c property[alabel][60] = xn--fther---sn---motherdaughter-bkc44c property[alabel][61] = xn--fther---sn---mother-daughter-5mc26c property[alabel][62] = xn--fther---sn---mother--daughter-0pc08c property[alabel][63] = xn--fther---sn---mother---daughter-vsc89c property[label][0] = fäthersönmotherdaughter property[label][1] = fäthersönmother-daughter property[label][2] = fäthersönmother--daughter property[label][3] = fäthersönmother---daughter property[label][4] = fäthersön-motherdaughter property[label][5] = fäthersön-mother-daughter property[label][6] = fäthersön-mother--daughter property[label][7] = fäthersön-mother---daughter property[label][8] = fäthersön--motherdaughter property[label][9] = fäthersön--mother-daughter property[label][10] = fäthersön--mother--daughter property[label][11] = fäthersön--mother---daughter property[label][12] = fäthersön---motherdaughter property[label][13] = fäthersön---mother-daughter property[label][14] = fäthersön---mother--daughter property[label][15] = fäthersön---mother---daughter property[label][16] = fäther-sönmotherdaughter property[label][17] = fäther-sönmother-daughter property[label][18] = fäther-sönmother--daughter property[label][19] = fäther-sönmother---daughter property[label][20] = fäther-sön-motherdaughter property[label][21] = fäther-sön-mother-daughter property[label][22] = fäther-sön-mother--daughter property[label][23] = fäther-sön-mother---daughter property[label][24] = fäther-sön--motherdaughter property[label][25] = fäther-sön--mother-daughter property[label][26] = fäther-sön--mother--daughter property[label][27] = fäther-sön--mother---daughter property[label][28] = fäther-sön---motherdaughter property[label][29] = fäther-sön---mother-daughter property[label][30] = fäther-sön---mother--daughter property[label][31] = fäther-sön---mother---daughter property[label][32] = fäther--sönmotherdaughter property[label][33] = fäther--sönmother-daughter property[label][34] = fäther--sönmother--daughter property[label][35] = fäther--sönmother---daughter property[label][36] = fäther--sön-motherdaughter property[label][37] = fäther--sön-mother-daughter property[label][38] = fäther--sön-mother--daughter property[label][39] = fäther--sön-mother---daughter property[label][40] = fäther--sön--motherdaughter property[label][41] = fäther--sön--mother-daughter property[label][42] = fäther--sön--mother--daughter property[label][43] = fäther--sön--mother---daughter property[label][44] = fäther--sön---motherdaughter property[label][45] = fäther--sön---mother-daughter property[label][46] = fäther--sön---mother--daughter property[label][47] = fäther--sön---mother---daughter property[label][48] = fäther---sönmotherdaughter property[label][49] = fäther---sönmother-daughter property[label][50] = fäther---sönmother--daughter property[label][51] = fäther---sönmother---daughter property[label][52] = fäther---sön-motherdaughter property[label][53] = fäther---sön-mother-daughter property[label][54] = fäther---sön-mother--daughter property[label][55] = fäther---sön-mother---daughter property[label][56] = fäther---sön--motherdaughter property[label][57] = fäther---sön--mother-daughter property[label][58] = fäther---sön--mother--daughter property[label][59] = fäther---sön--mother---daughter property[label][60] = fäther---sön---motherdaughter property[label][61] = fäther---sön---mother-daughter property[label][62] = fäther---sön---mother--daughter property[label][63] = fäther---sön---mother---daughter property[markname][0] = Fäther & Sön & Mother & Daughter &


Additional API Commands

Query a trademark list

[COMMAND]
COMMAND       = QueryTrademarkList
TYPE          = <DEFAULT|SHOWSUBLAYER>
REGISTRAR     = <my_sub_reseller>
WIKE          = <0|1>
TRADEMARKNAME = *example* search pattern is possible
TRADEMARKTYPE = <REGISTERED_MARK|COURT_VALIDATED_MARK|STATUTE_OR_TREATY>
ORDER         = <TRADEMARKNAME|TRADEMARKTYPE|TRADEMARKSTATUS|RENEWALDATE|ENTITLEMENT|REGISTRAR>
ORDERBY       = <ASC|DESC>


Information of a trademark

[COMMAND]
COMMAND   = StatusTrademark
TRADEMARK = <TOKEN> (e.g. 3BD0B280-1FF5-4573-8CF5-C95F75C1D5FB)


Request the Signed Mark Data (SMD)

[COMMAND]
COMMAND    = StatusTrademark
TRADEMARK  = <TOKEN> (e.g. 3BD0B280-1FF5-4573-8CF5-C95F75C1D5FB)
STATUSTYPE = (smd|enc) (the output of "smd" is human readable format and "enc" equals base64 encoding)
[RESPONSE]
code = 200
description = Command completed successfully
runtime = 0.013
property[smd file][0] = Marks: my example
property[smd file][1] = smdID: 000000XXXXXXXXXXXXXXX-1
property[smd file][2] = U-labels: my-example, myexample
property[smd file][3] = notBefore: 2013-07-26 14:15:04
property[smd file][4] = notAfter: 2015-07-01 00:00:00
property[smd file][5] = -----BEGIN ENCODED SMD-----
property[smd file][6] = PD94bWwgdmVyc2lvbj0iMS4wIiBlbmNvZGluZz0iVVRGLTgiPz4KPHNtZDpzaWduZWRNYXJrIHht
property[smd file][7] = bG5zOnNtZD0idXJuOmlldGY6cGFyYW1zOnhtbDpuczpzaWduZWRNYXJrLTEuMCIgaWQ9Il9iOTNm
property[smd file][8] = NzQ4NDA5MDQ1NzUtMTwvc21kOmlkPgogIDxzbWQ6aXNzdWVySW5mbyBpc3N1ZXJJRD0iMSI
property[smd file][n] = ...
property[smd file][n] = -----END ENCODED SMD-----
property[smd file][n] = 
property[smd filename][0] = 000000XXXXXXXXXXXXXXX-1.smd
property[smd id][0] = 000000XXXXXXXXXXXXXXX-1

Modifying a trademark

These trademark properties can be updated (realtime to TMCH if trademark has been submitted to TMCH, otherwise update is at RRP only).

Attention.png Please note that TMCH allows only one update!
For more detailed information, please check the FAQ section below!


[COMMAND]
COMMAND       = ModifyTrademark
TRADEMARK     = <TRADEMARK_TOKEN> 
PERIOD        = <1,3,5> ONLY as long as the trademark has not been submitted to TMCH (RRP status: REQUESTED/DOCUMENTS_RECEIVED)
AUTH          = <Text>
MARKNAME      = <Text>
ENTITLEMENT   = <OWNER|ASSIGNEE|LICENSEE>
TMHOLDER      = <CONTACTHANDLE-ID>
GOODSANDSERVICES    = <TEXT> Listing of all Goods/Services (the character limit is 4000 chars in summary)
OR
GOODSANDSERVICES0...4096  = <TEXT> Listing of all Goods/Services  (the character limit per line is 4000 chars/50000 chars in summary)
TMREGDATE           = <YYYY-MM-DD> 
TMREGEXPIRATIONDATE = <YYYY-MM-DD|NULL>
TMREGNUMBER         = <Text>
TMREGJURISDICTION   = <Iso-Country-Code>|<Trade zones>
TMREGCLASS          = <1-45 | N/A> (multiple classes can be separated by comma)
SOTEXECDATE         = <YYYY-MM-DD>
SOTTITLE            = <Text>
REFNUMBER           = <Text>
PRODATE             = <YYYY-MM-DD>
COURTNAME           = <Text>
SOTPROTECTIONRULING = <Iso-Country-Code or Iso-Country-Codes> i.e. de or de,us,be (only for statute or treaty)
(ADD|DEL)ALABEL0...199         = <Text> 
(ADD|DEL)SMDINCLUSION0...199   = <0|1>
(ADD|DEL)CLAIMSNOTIFY0...199   = <0|1>

FAQ for ModifyTrademark

How many times can I update the content of the mark ?

It's only possible to update the content of the mark ONCE, if it has the state 'INCORRECT', for a period of 30 days. After a successful update the mark will be set to NEW at TMCH and any content updates are prohibited.
If the update was not sufficient, the registration will fail and no further updates will be possible on this trademark. The registration fee cannot be refunded in this case!
Please note: All invalid details have to be updated simultaneously in one ModifyTrademark command!

TMCH Validator complaints about contact handle: How can the referenced contact handle be updated?

After you modified the contact handle, you have to use the following command:

[COMMAND]
COMMAND   = ModifyTrademark
TRADEMARK = <TRADEMARK_TOKEN>
TMHOLDER  = <CONTACT-HANDLE_ID>

TMCH Validator complaints about the markname: How can the markname be updated and how can the labels be changed?

1. Update the name of the Mark (and other fields if necessary), after executing the command to change the name of the Mark the existing labels attached to the Mark record will be AUTOMATICALLY REMOVED.

[COMMAND]
COMMAND   = ModifyTrademark
TRADEMARK = <TRADEMARK_TOKEN>
MARKNAME  = <NEW MARK NAME>

2. Add the labels you want, if any, to the Mark record (if you do not perform this step no labels will be attached to the Mark record).
The number of labels you can attach to the Mark record is either the number of labels originally attached to the Mark record or 10 labels, whichever number is biggest.

[COMMAND]
COMMAND                                       = ModifyTrademark
TRADEMARK                                     = <TRADEMARK_TOKEN>
(ADD)ALABEL0...MAX_ORIGINALLY_SUBMITTED       = <Text> Max.63 Chars ASCII representation of the label linked to the mark
(ADD)SMDINCLUSION0...MAX_ORIGINALLY_SUBMITTED = <0|1>
(ADD)CLAIMSNOTIFY0...MAX_ORIGINALLY_SUBMITTED = <0|1>

How can the smdInclusion/claimsNotify flags be update?

Please be aware that the SMD Inclusion flag can only be set when a Proof of Use document has been uploaded (this can be done at any time except if the Mark record is being verified or is expired).
When enabling or disabling the smdInclusion flag(s) you need to follow the next steps in the exact order, in separate commands:

1. Remove the label(s).

[COMMAND]
COMMAND    = ModifyTrademark
TRADEMARK  = <TRADEMARK_TOKEN>
DELALABEL0 = my-label-to-update 

2. Add the label(s) again with the smdInclusion flags enabled or disabled.
More specifically, to do this please send an update command with a <rem> section to delete the specific label(s) followed by an update <add> command to add the label(s) again with the appropriate flags set.

[COMMAND]
COMMAND          = ModifyTrademark
TRADEMARK        = <TRADEMARK_TOKEN>
ADDALABEL0       = my-label-to-update 
ADDSMDINCLUSION0 = 1
ADDCLAIMSNOTIFY0 = 1


How is the renewalmode changed?

The renewalmode of a TMCH entry can be switched between AUTORENEW and AUTOEXPIRE as explained in the following API example:

[COMMAND]
COMMAND     = SetTrademarkRenewalMode
TRADEMARK   = <TRADEMARK-TOKEN>
RENEWALMODE = AUTORENEW|AUTOEXPIRE
EOF

Renew a trademark

If renewalmode is AUTORENEW (=default) then the trademark will be automatically renewed for 1 year.

Manual renew:

 [COMMAND]
 COMMAND        = RENEWTRADEMARK
 TRADEMARK      = <TRADEMARK-TOKEN>
 PERIOD         = <PERIOD> # 1 or 3
 EXPIRATIONDATE = <YEAR>

Transfer a trademark

TransferIN

If the transfer is executed successfully a new mark id is returned

[COMMAND]
COMMAND = TransferTrademark
TRADEMARK = <TRADEMARK-TOKEN>
ACTION = <execute>
AUTH = 12345
[RESPONSE]
code = 200
description = Command completed successfully
property[new tmch id][0] = 000001123456789876543211113333-1
property[trademark][0] = <TRADEMARK_TOKEN>
property[transfer date][0] = 2014-01-30T15:27:14.3Z
runtime = 0.003

TransferOUT

To initiate a transfer out for a mark that is in your portfolio you can send the transfer initiate command and you will receive an authcode. The transfer code will be active for 14 days, after this period you can request a new transfer code by following the same process as described below.

[COMMAND]
COMMAND = TransferTrademark
TRADEMARK = <TRADEMARK-TOKEN>
ACTION = <initiate>
[RESPONSE]
code = 200
description = Command completed successfully
property[authcode][0] = 12345
property[trademark id][0] = 00000113976353131397635313-1
property[transfer status][0] = <pendingTransfer>
runtime = 0.001

Push a trademark

[COMMAND]
COMMAND = PushOjbect
TYPE    = TRADEMARK
TARGET  = <SUBUSER>
OBJECT  = <TRADEMARK-TOKEN>

Deleting a trademark

Deleting a trademark is only possible as long as the trademark entry has not become ACTIVE, which means it has not been validated and verified by TMCH.

[COMMAND]
COMMAND   = DeleteTrademark
TRADEMARK = <TRADEMARK-TOKEN> (e.g. 3BD0B280-1FF5-4573-8CF5-C95F75C1D5FB)


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