What Do the New gTLDs Mean for Brand Trademark Protection?

The Internet will soon expand as ICANN grants a new group of generic top-level domain names (“gTLDs”) in coming months. Instead of only  the usual “.com” or “.org”  suffixes to which we are accustomed, we will now start to see “.yourbrand” website addresses. While the deadline for a brand applying for its own gTLD has passed, marketers still need to pay attention to this development. The new gTLDs will bring in a flood of cybersquatters. Any brand whose customers find them by searching  the Internet or any brand that generates revenue on the Internet should work quickly with legal counsel to create  an action plan to protect its  trademarks.

On May 1, 2012, ICANN will publish a list of the new gTLDs that are pending. Trademark owners should scrutinize this list to see if any of the applications infringe upon current trademark rights. In particular, trademark owners should work with legal counsel to determine if any of the proposed gTLDs creates a likelihood of confusion or “takes unfair advantage of” their established trademarks.  If so, they should file objections to the application based on their legal rights. Brands have until December 1, 2012 to file these objections.

Even if none of the new gTLDs appear to threaten a brand’s trademarks, it is important to watch for infringing second level domain names.  To assist with monitoring that space, brands should list their trademarks with the anticipated “Trademark Clearinghouse” that ICANN will soon launch. If a second level domain is an exact match to the brand’s trademark, the Clearinghouse will notify the brand. In addition, ICANN will require the new gTLDs to offer a “Sunrise Services” period during which marks in the Trademark Clearinghouse will be given the first opportunity to reserve their marks as a second level domain within the new gTLD.

The new ICANN procedures can be overwhelming for brands that are not experienced in monitoring their trademarks. Immediate steps to take are:

1)   Speak with your trademark counsel about how to protect your existing trademarks.

2)   Now is the time to register all trademarks with the USPTO that you are using and represent meaningful investments for your brand.

3)   Inspect the list of new gTLDs for possible infringements and consult with your trademark attorney about how to protest.

4)   Take steps to list your trademarks with the Trademark Clearinghouse once ICANN announces the procedures.

5)   Monitor your trademarks with a watching service, and discuss how the watching service anticipates handling the new gTLDs.