Please help me, I just received a trademark claims notice...

A trademark claims notice is a warning sent to you if the domain name you're trying to register matches a trademark registered with the Trademark Clearinghouse. Trademark infringement is scary stuff, but if you receive a trademark claims notice it doesn’t necessarily mean you won’t get the name you want, or worse - a pack of hungry lawyers at your door (Sorry Luc). In many cases the rights being claimed are concerning a trademark limited to a particular industry or product, or to a certain jurisdiction. Let me explain...

by Meg - 21.03.2014

Why you might receive a claims notice

In an effort to reduce trademark infringement ICANN introduced a new trademark registration process for the new domain extensions.

Called the Trademark Clearinghouse (TMCH), it's a vast database containing verified trademarks. At the end of February this year, the TMCH reported that it had sent over 17,500 trademark claims notices to trademark owners so far.

No way Jose! There are already more than 26,000 trademarks registered so it’s no great surprise that there are so many matches.

The TMCH database

What’s interesting/disturbing is the large number of common words the database contains. Everyday words that include city, holiday, fire, hotel, tango, money, party, pizza, and many more.

Whilst these words have probably been registered in good faith by users wanting to protect their brand, it does mean that the odds of receiving a trademark claims notice are high.

Don't give up your registration just yet

What’s worth remembering is that despite being protected by the TMCH, there are limitations to the ‘claims of infringement’ to trademark owners’ rights. Limitations include restrictions to a particular jurisdiction, and the intended field of use.

Supposing UK Company Britvic, registered the word ‘tango’ with the TMCH to protect their fizzy orange drink. Imagine the scenario if a small Argentinian dance school applied to register; the school would receive a trademark claims notice from a rather large orange corporation. Scary, no? But, it's highly unlikely that Britvic would want the name or feel threatened by it, so the dance school would almost definitely be granted the name if they continued with the registration.

Accept the notice & carry on

With the TMCH database housing so many common/generic words, the chances of receiving a claims notice are high. But, if your intention is to use the domain name in relation to the common meaning then it should be okay. If you want to carry on with your registration, simply accept the notice. By doing this you are agreeing that to the best of your knowledge, your registration will not infringe on the trademark owner’s rights with regard to jurisdiction or intended field of use.

If you’ve received a trademark claims notice and you’re unsure whether you should proceed or not, have a chat with your account manager - they’re here to help.

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