Even in the current Internet landscape of only 23 generic top-level domains (gTLDs)—including .com, .net, .org and a handful of others—many organizations find that protecting against domain name infringement is quite a challenge. To make the challenge even more formidable, the Internet Corporation for Assigned Names and Numbers (ICANN) is currently considering applications to add up to 1,400 new gTLDs to the Internet landscape, with some gTLDs opening for domain name registrations beginning as early as mid-October 2013.
This rapidly approaching expansion of the Internet space brings several trademark-related developments to the forefront for brand owners, whether or not they have applied to operate their own gTLDs.
From an enforcement perspective, to manage the anticipated onslaught of activity, ICANN has devised a Trademark Clearinghouse (TMCH) which will serve as a repository for information regarding trademark rights. The TMCH will accept, authenticate and verify any registered trademarks, marks protected by statute or treaty or court-validated marks as well as any other marks that constitute intellectual property rights that can be represented within the technical limitations of the Domain Name System. The TMCH will then facilitate both a Trademark Claims Service, in which brand owners who have registered marks in the TMCH receive notice when a third party registers a domain name for their mark, and Sunrise services, which permit pre-registration of domain names in new gTLD registries. Accordingly, companies may find it sound strategy to register the trademarks for their core brands in the TMCH so that they have access to both of these services.
In addition, numerous applicants for new gTLDs may wish to begin considering how to protect the names of their registries from a trademark perspective. In response to this concern, the United States Patent and Trademark Office (USPTO) has prepared a draft update to the policies and procedures related to the USPTO’s handling of trademark applications for marks comprised of gTLDs, and has set forth the circumstances under which a mark consisting of a gTLD for domain-name registration or registry services may be registered. The USPTO is accepting comments on this draft update through September 8, 2013.
In order to be prepared for this rapid expansion of the domain name space, companies should be giving serious thought to how they will continue to protect their brands in this new and evolving environment. Our Internet and Trademark Portfolio practitioners offer a one-stop solution to brand owners navigating these changes to the Internet, including counseling on overall Internet presence, strategy and registration of marks in the TMCH, follow-up enforcement efforts, and related brand protection measures. Katten’s attorneys are recognized leaders on cutting-edge Internet issues such as ICANN’s new gTLD program, having been actively engaged with the initiative since 2008 and having attended more than 20 ICANN meetings around the world.
Clients in fashion, retail and apparel, media and communications, to name a few, have already benefited from our experience and depth of relationships with government and industry leaders and laud our understanding of both ICANN’s policy development process and the underlying ICANN ecosystem in helping them to achieve their objectives.