Related Practice Groups

Trademark and Copyright

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Francis Duffin

ARRIVAL OF NEW GENERIC TOP LEVEL DOMAINS

3.7.2013

You may have heard that this spring brings the arrival of new generic top level domains ("gTLDs"). Currently, the most common gTLDs include .com, .info, .net, and .org. But soon there could be many more, such as .bestbuy, .delta, .honda, .ibm, .maybelline, .samsclub, and .weatherchannel, to name just a few. You can find the full list of proposed gTLDs that have already been applied for by clicking here.

March 13, 2013 is the deadline to object to any gTLDs that infringe your trademark rights

As an initial step, if there is a gTLD that you believe infringes your trademark rights on the list of gTLDs that have been applied for, an objection to the new gTLD may be filed with the World Intellectual Property Organization. A panel of one or three experts will consider factors similar to those used in the traditional "likelihood of confusion" trademark infringement analysis to decide whether the applied-for gTLD will infringe the objector's trademark rights. A hearing will be held only in exceptional cases. The cost for an objection to one applied-for gTLD, to be decided by a single member panel, is $10,000, and $8,000 of that can be refunded to the prevailing party. This objection procedure does not preclude available court options. Further discussion of the objection procedure may be found by clicking here.

Trademark Clearinghouse goes live March 26, 2013

The "Trademark Clearinghouse" was established to offer a mechanism for trademark holders to protect their rights, and to assuage their concerns that the creation of new gTLDs would require rights holders to object to any number of attempts by others to register new gTLDs that include and violate their marks. Rights holders may – for a fee – validate with the Trademark Clearinghouse their rights in registered trademarks, court-validated common law trademarks, and trademarks protected by statute. The trademark holder can then take advantage of various rights protection measures, including the ability of the rights holder (1) to register its mark as a domain name on a new gTLD during the mandatory "sunrise" registration period before the general public registration period, and (2) for 60 days following the sunrise period, that the Trademark Clearinghouse inform a prospective registrant of the trademark rights of the owner in a validated mark. The Trademark Clearinghouse will also inform a trademark holder of an attempt to register a domain name on a new gTLD that is identical to the trademark holder's mark. The current cost for registering a mark with the Trademark Clearinghouse is $150/trademark for one year, $435 for three years, and $725 for five years. For additional information on the Trademark Clearinghouse, please click here.

Summary of Action Plan

  • Click here to review the list of applied for new gTLDs to ensure none infringe your trademark rights and, if so, decide by the March 13, 2013 deadline, whether an opposition to such new gTLD is necessary.
  • Decide whether to register your trademark rights with the Trademark Clearinghouse, especially if you want to utilize the sunrise registration period and claims services provided under the rules governing registration of new gTLDs.
  • Monitor approved new gTLDs for cybersquatting and trademark infringement.
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