ICANN’s new Generic Top-Level Domain (“gTLD”) program has been forging ahead, and it is expected that about 500 new gTLD applications will launch beginning late summer. Applications have been filed for a wide and varied range of new domains, including .buy, .music, .app, .cloud, and .coupon. Some of these domains may rise in popularity, bringing with it potential new business opportunities, and also challenges, including to trademark protection and enforcement.

Trademark owners bracing for the launch of new gTLD have probably seen several announcements that the Trademark Clearinghouse (“TMCH”) is now open for business. The TMCH is a centralized system that verifies the existence of trademark rights for all new gTLDs. Trademark owners that have their marks recorded in the TMCH:

  1. can register identical domain names on new gTLDs during “sunrise” periods before the general public;
  2. will have notice of their registered marks given to anyone trying to register an identical domain name on a new gTLD warning of possible infringement. (Click here to see a sample notice.); and
  3. will receive notice if the identical domain name is registered. The notice system (which is called a “claims service”) does not prevent or block registration of domain names.

Trademark owners can start thinking about an appropriate TMCH strategy, as well as a general enforcement strategy for new gTLDs. But, there is no urgency to get your marks recorded in the TMCH. There is no apparent need to record marks in the TMCH before the first gTLD launches, which is unlikely to happen before late summer.