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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.
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:

  • a signed declaration of use
    and
  • a single sample of proof of use.

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)
  • Any registered trademark that does not contain any letters, words, numerals or DNS-valid characters.

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