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September 18, 2014

What Do We Do Now that the World Didn’t End in 2012? - Generic Top Level Domains

The countdown to the launch of the new generic top-level domains, or gTLDs, and the surrounding uncertainty about whether the potential commercial benefits will outweigh the perceived burdens, has begun.  Is your company ready?

In light of the new generic top-level domains (gTLDs) that are scheduled to launch in the latter half of 2013, companies should now review their global trademark portfolios for marks they want to protect.  The new gTLDs will allow companies to have “.brand” extensions (e.g., .yahoo, .nike) and allow the creation of new domain name registries with extensions containing generic words and locations (e.g., TheFrenchLaundry.restaurant, BuddhaBar.paris).  With the launch of almost 1,400 new gTLDs, the World Wide Web is poised to explode with new marketing opportunities and, it can be assumed, opportunistic cyber squatters and domain name thieves.  Now is an ideal time to conduct an audit of your company’s global trademark portfolio and decide which trademarks, if any, need to be defensively registered with the Trademark Clearinghouse (TMCH) in order to be protected against potential misappropriation. 

The TMCH is a centralized depository of information that will function as an authentication/validation mechanism for protecting registered, court-validated and statute- or treaty-protected trademarks as the new gTLDs roll out.  Registering trademarks with the TMCH will provide trademark owners (1) access to the Sunrise Period, i.e., the priority domain name registration period before registration opens to the general public; (2) Claims Notices, which will alert trademark owners when a new gTLD is registered that matches their exact trademark; and (3) access to the Uniform Rapid Suspension system and other dispute mechanisms for taking action against abusive and infringing domain names registered by third parties.

One quick and easy way to determine whether there are any new gTLDs of concern to your trademark portfolio and/or to proactively register new domain names with any of the new and approved gTLD registries is to review the attached list of gTLDs currently in the application process.  It is recommended to review this list not only to see if there are any new gTLDs that are similar to your company name or trademarks, but also to take note of any generic words or phrases that could be used as domain names for websites either detrimental or useful to your business.  For example, some of the new gTLDs include: .auto, .cloud, .corp, .deals, .food, .game, .health, .insurance, .law, .marketing, .online, .phone, .property, .restaurant, .search, .shop, .store, .tech and .website.  Of additional concern may be the new gTLDs in non-Latin characters (e.g., Arabic, Cyrillic, Chinese, etc.), for which assistance with the transliterations of a company’s trademarks may be required. 

Proactively consider all of the above so that you can watch, protect and, as appropriate, enforce your company’s trademarks and budget now for the complex issues that will undoubtedly arise from the thousands of new domain names likely to be registered in 2013 and in years to come.

© 2014 McDermott Will & Emery

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About this Author

Partner

Joanne Ludovici is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm's Washington, D.C. office.  As head of the Firm's global trademark prosecution practice, Joanne  focuses her practice on all aspects of trademark, copyright and domain name acquisition, enforcement and commercial exploitation.  She has significant experience in the coordination and strategic implementation of worldwide trademark and domain name portfolios for large multi-national companies, including those in the agricultural, alcohol beverage, computer...

202-756-8349
Lynne Boisineau, McDermott Will Emery Law Firm, Intellectual Property Attorney
Partner

Lynne Boisineau is counsel in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.  She focuses her practice on trademark prosecution and trademark litigation support.

949 757 7108
Michelle C. Burke, McDermott Will Emery Law Firm, Copyright Attorney
Counsel

Michelle C. Burke is counsel in the law firm of McDermott Will & Emery LLP and is based in the Chicago office.  She focuses her practice on trademark, copyright and unfair competition counseling and litigation, including the protection of copyrights and trademarks in cyberspace.  Michelle has practiced in this area for over 20 years, and her clients are and have been diverse, including manufacturers of electronics and a wide variety of other goods, health-care providers, management consulting firms, financial services providers, museums, engineering firms,...

312 984 7761