Required documents (TMCH)

License declaration for registered trademarks

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.

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.

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 a “dot” (.) or containing a “dot” (.).
  • Any registered trademark that does not contain any letters, words, numerals or DNS-valid characters.

License declaration for marks protected under statute or treaty

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.

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.

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

License declaration for court validated trademarks

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.

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.

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.
  • Any state or city court-validated mark.

Proof of use - signed declaration to Trademark Agents

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.

Further Information about 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 prod- ucts or services of one from those of another.
Accordingly, examples of acceptable evidence include items from either of the following categories:

  • Labels, tags, or containers from a product.
  • 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.
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:

  • Inclusion of a trademark in a domain name.
  • Email messages.
  • Licenses to use a trademark or applications for business licenses that include the trademark as part of the business name.
  • 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.

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