“Trademarks are scary,” says the provider
0 min read
Now that the first gTLDs have become available and are actually being registered, we have noticed hat there is some restlessness with the brand owners: what should they expect?
In the conversations we have had with these parties (existing customers, trademark offices and brand owners) we have noticed how much unclarity there still is. And if we get these types of questions, our customers will get a multitude of these types of questions!
This is not usually the speciality of the provider. Is this thus ‘scary’? No, of course not! This blog explains exactly what you can offer to your customers.
What happened previously
In my previous blog I looked into the benefits for the brand owners. This information was written with as little jargon as possible and can thus also be useful for you to use for your own customers.
I have assumed that the brand owner is aware of the possibilities and knows what he wants. I will thus start this at the moment that he approaches you with the question: «I have a brand name and want to use the new gTLDs. Can you help me?». Following below you can see the various options.
Without validating the brand at the Trademark Clearinghouse (TMCH) one is unable to use the various services. The first step is to always register the brand in this centralized database. If the brand owner is able to send the below mentioned things, then the application is no more than a formality:
- An excerpt from the trademarks office: here you can find all of the information needed for the application such as registration date, jurisdiction and owner’s details. Openprovider does not use this further and it may thus also be an online excerpt. If there is no excerpt then ask your customer for all the details.
- Declaration of use: this is a form in which the brand owner confirms that he is the owner of the brand and that he uses the brand in the way it has been classified. It is important that the name of the brand owner is filled in in all three fields and that it corresponds to the information of the trademark office.
- Single sample of proof of use: this is a mouthful but it is ‘something’ which proves that the brand owner actually uses the brand. Usually, a screenshot of the website with a clear view of the products used and the brand is sufficient. A flyer, manual of the product, packaging or press releases are also accepted as long as the brand is clearly visible in combination with the product or service.
- Application period: you may request validation for a period of 1, 3 or 5 years. A longer period has several advantages: reapplication is not needed as often (and the new extensions will certainly continue for the next few years) and a longer period means a lower annual price.
With this information you fill in the online form through the Openprovider control panel and we will take care of the rest. Usually the application will be completed within a few days. You will then receive the SMD file (Signed Mark Data) from us. This file acts as a unique password by which someone can prove that he is indeed owner of a brand.
After this, the world of the new gTLDs will open for you and the brand owner.
Now that the Trademark Clearinghouse validation has been acquired, the brand owner may register his domain in the Sunrise period of every extension. This works the same as any regular domain application, the only difference is the use of the SMD file. If the brand corresponds to the requested domain name, then the application will be accepted.
In addition to the active protection of a Sunrise registration, brand holders are also passively protected with reports of any registered domain name that matches their brand.
Once we receive such a notification, we will send it to you. You in turn can inform your customer.
DPML (Domains Protected Marks List) is an extra service offered by the registry Donuts. With an expected 200-250 extensions which they will be managing, Donuts gives brand owners the chance to block the brands in all of their extensions. Calculated back to one domain, this will cost you 2-3 US dollars per domain per year to block and protect your brand.
To use DPML you need a valid SMD file. As DPML is initially for five years, a five year TMCH registration might be a good idea: this can save you another four applications and even save some costs!
The registry Rightside offers a similar service for a smaller amount of extensions (but still more than 20). More information and examples about DPML can be found in our knowledge base. Application can be done through one simple e-mail to email@example.com.
As described above it is not a very complex theme. Brands are just different discipline to domain names and DNS! If at any time you do get stuck or have some questions, our Account Managers are always at your service.
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