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Trademark Owners’ Options as New gTLDs Launch

Posted by S. Rector On January 2, 2014

New domain name endings began being launched Nov. 26, 2013, and are expected to be released in batches of roughly 20 new gTLDs each week or 50 gTLDs each month thereafter during 2014.  Trademark owners should be attentive to this now to not miss the launch of a new domain ending for which they intend to file a new domain name.  The English language domain names with the first of seven new endings –  .bike, .clothing, .guru, .holdings, plumbing, .singles, .ventures — is expected to issue by the end of January 2014.

This post highlights considerations for trademark owners in connection with the launch of 1,400 new generic top level domains (gTLDs), i.e., the suffix of domain names to the right of the dot (for example: .com and .hotel).  Here is a link to an alphabetical link of all proposed domain names: http://www.newgtldsite.com/new-gtld-list/.  Due to potential abuse in this new domain name real estate, special provisions have been put in place for trademark owners.  This post provides background, describes the risks and opportunities and articulates a high-level conceptual approach to analyze how this development affects your business and how to proceed.

Background.  The April 16, 2013, post contained an overview of the new gTLD launch program and an explanation of the Trademark Clearinghouse.  In short, in order to record a domain name within the first 60 days that a new gTLD launches (the Sunrise Period), a trademark owner must first register its mark(s) in the Trademark Clearinghouse and provide validation of use of the mark prior to registering the domain name.  For the most up-to-date information regarding the launch of the new gTLDs and their respective Sunrise Periods and trademark claim periods, see http://www.trademark-clearinghouse.com/sunrise that is updated periodically.

Why should I care?  There are clearly two camps each with a school of thought on the new gTLDs.  One camp believes trademark owners should offensively register domain names useful to their business and defensively file domain names such as .gripe, .suck and .porn to block others from doing so.  They believe the costs incurred up front and on an annual basis to register and maintain the domain names are less expensive in the long run than pursuing infringers to stop use of a domain name in bad faith or that causes confusion with the brand.  The other camp views the launch of these thousands of gTLDs as another land grab by large domain name registrars solely to create demand for their registration services and to profit from provision of the new Trademark Clearinghouse services.

Analysis of how to proceed.  Before you make a determination as to which camp you are in and how to proceed, think through each of the steps below.  Like all business decisions, this decision necessitates ascertaining the degree to which benefits to your business outweigh the costs.  By reviewing each of these considerations in light of your existing trademark portfolio, your current and future marketing plans and your current and future search engine optimization (SEO) plans, you can determine whether and to what extent to register new domain names and whether to record a trademark or trademarks in the Trademark Clearinghouse.

  1. Identify new gTLDs among the 1,400 names to launch in the next two to three years in which one or more domain names should be filed.
  2. Identify new gTLDs within which defensive, blocking domain names should be filed to preclude others from filing, such as .gripe, .sucks or .porn.
  3. Develop a budget for recording marks in the Trademark Clearinghouse.  The filing fees per mark to record are as follows:
    • $150 for 1 year
    • $435 for 3 years ($15 savings)
    • $725 for 5 years ($25 savings)
  4. Because the new gTLDs are expected to take over two years to roll out, we suggest registering marks in the Trademark Clearinghouse for at least three years.
  5. Record marks to be used for filing and blocking in the Trademark Clearinghouse.
  6. Prepare and file evidence of use with the Trademark Clearinghouse (must be submitted prior to beginning of the Sunrise Period).
  7. Consider engaging a trademark watching service to monitor all domain names registered in the new gTLDs, because trademark owners will only receive Trademark Claims Notices for exact matches of trademarks registered in the Trademark Clearinghouse.
  8. As gTLDs of interest launch, promptly register your desired domain names during the relevant Sunrise Period.
  9. During the first 90 days after each gTLD launches, be prepared to promptly respond to each Claims Notice sent by the Trademark Clearinghouse giving you notice of domain names filed that contain your mark(s) registered in the Trademark Clearinghouse.

Please note that the only domain names that may be recorded and reserved during a Sunrise Period are those that (1) are an exact match for the trademark registered in the Trademark Clearinghouse or (2) were the subject of a successful Uniform Domain Name Dispute Resolution Proceeding (UDRP) and registered in the Trademark Clearinghouse.  Special rules exist for domain names that contain characters that are not permitted domain name characters, such as commas, spaces, apostrophes and some periods.  Rules permit up to 10 variations per mark for domain names containing these characters.  We can assist you to determine whether to register trademarks and which variations make the most sense.

Please contact Susan Rector at Susan.Rector@icemiller.com with any questions.  We are prepared to help you determine the best way to proceed to protect your marks and register new domain names that are most beneficial for your business.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

Top-Level Domain .XXX Available Soon – Protect Your Brand!

Posted by Nick Merker On September 15, 2011

Although the intent of the .XXX top-level domain is for it to be used in the adult context, brands not in this space may wish to protect their image by proactively registering a .XXX domain containing their registered trademarks. The new top-level domain .XXX will become available to the adult community starting on November 8th, 2011 and then open to the general public on December 6, 2011.  The ICM Registry, sponsor of the .XXX top-level domain, is giving registered trademark owners a special window of time (open now until October 28, 2011) to reserve domains ending in .XXX which contain their registered trademark.  Such special registration will protect registered .XXX domains from falling into the hands of a third party.

An applicant wishing to protect its rights in this reserved window must submit a reservation request with ICM corresponding to its trademark before October 28, 2011.  Registration through GoDaddy costs approximately $200 and requires a trademark owner to apply for registration by filling out a form online.  Only registered trademarks having registration dates before September 1, 2011 and still in full force and effect qualify for this special domain registration.  Further, the trademark registration must be issued as a national registration in a respective country, not simply a pending national trademark application or a State trademark registration. For example, an applicant with a United States trademark registration issued before September 1, 2011 that is still in full force and effect may seek protection under this reserved window.

After December 6, 2011, any registered .XXX domain through this early registration process will resolve to a standard informational page reflecting the status of the domain as reserved.

If trademark owners do not register a .XXX domain in this special window of time, any available .XXX domain will be allocated to members of the adult community submitting a request.  Then, starting on December 6, 2011, registration opens to the general public and anyone, whether in the adult community or otherwise, may register these domains.  Although trademark owners may be able to obtain domains registered using their trademark after this special registration window, it may be a more involved path than taking advantage of this reservation process prior to October 28, 2011.

For more information about protecting your brand on the Internet, please contact info@theiceloop.com.

On Friday, March 18, 2010, the World Intellectual Property Organization (WIPO) published statistics comparing 2009 trademark filings under WIPO’s Madrid System for the International Registration of Marks (Madrid) to filings made in 2008. In total, and as noted in the WIPO article available HERE, Madrid filings decreased 16 percent in 2009, with several countries reporting double-digit decreases. For example, countries in the top 40 by total number of filings such as (in order by number) Germany, Benelux, Italy, Spain, Denmark, the Czech Republic, Sweden, Portugal, Latvia, Liechtenstein, Greece, Lithuania, Belarus, Monaco, and Romania all had more than 20 percent fewer filings, with Portugal having the largest percentage decrease at 60.8 percent. A number of countries had more Madrid filings in 2009 as compared to 2008, such as (in order of total number of filings) the European Union (3.1 percent), Japan (2.7 percent), the Republic of Korea (33.9 percent), Hungary (14.5 percent), Croatia (17.5 percent), and Singapore (20.5 percent). The United States filed 13.1 percent fewer applications in 2009 than in 2008. Complete statistical data for the top 40 2009 filing countries dating back to 2005 are available at the link referenced above.

WIPO Announces 23rd Trademark Standing Committee Session

Posted by M. Reichel On March 17, 2010

On April 19-22, 2010, the World Intellectual Property Organization (WIPO) will be hosting its Twenty-Third Session of the “Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications” in Geneva, Switzerland. This meeting (WIPO meeting link HERE), will cover several topics, including “Grounds for Refusal of All Types of Marks,” “Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks,” “Draft Questionnaire Concerning the Protection of Names of States Against Registration and Use as Trademarks,” and “Possible Areas of Convergence in Industrial Design Law and Practice,” with materials currently available in PDF format for each topic on the WIPO link above. For example, the documentation in connection with the Grounds for Refusal references 16 individual reasons, including signs not constituting a trademark, lack of distinctiveness, descriptiveness, genericness, functionality, public order and morality, and deceptiveness, to name a few. A formal draft agenda (PDF link HERE) is also available, noting the topics to date and the order in which they will be presented.

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