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.
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.
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:
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.
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.
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.