Trademark Owners – Protect Yourselves NOW as the New gTLDs Are Finally Launching

10/29/2013

The first wave of the new Generic Top Level Domain Names (the “new gTLDs”) was just approved to go live a few days ago, and cybersquatters and speculators may already be pre-registering your brand as one of these new domain names. The remaining 900 or so expected new gTLDs, such as .shop and .online, will go live on a rolling basis with little advance warning. Accordingly, it is time for trademark owners to review their domain name enforcement strategies and scale them appropriately to meet the challenges and opportunities brought by the introduction of hundreds of new gTLDs.

An important new tool for brand enforcement strategies is the Trademark Clearinghouse (“TMCH”), which is a centralized database where trademark owners can register their marks to take advantage of certain rights protection mechanisms. Registration for eligible trademarks can be completed online here - by either the trademark owner or an authorized agent or attorney. The cost of registering a trademark with the TMCH is approximately $150 per mark for one year of protection. The registration procedures and documentary evidence required vary for different types of marks submitted, and for the different advantages offered to trademark owners, such as if you want the first opportunity to obtain one of the new domain names or if you only want advance notice of someone else obtaining one for your brand.

Once a trademark is properly registered with the TMCH, trademark owners can take advantage of first-filer “sunrise periods” and advance notice “claims services” for every new gTLD launch. A sunrise period is the period at least 30 days before the launch of a new gTLD registry. During the sunrise period, trademark owners will have the opportunity to purchase and register domain names that match their TMCH registered trademarks. The claims service starts after the sunrise period ends and continues for at least 60 days. During this period, trademark owners are notified if anyone else tries to register their exact mark. But this is just a notification and not a bar to the third party obtaining the domain name. To block the domain name, the trademark owner must still take legal action.

One limitation of TMCH registration is that only the exact trademark registered is protected. Registration will not provide trademark owners with any relief for variations in mark spelling, punctuation or in combination with generic terms. However, the Intellectual Property Constituency, of which Haynes and Boone is a member, has worked hard to implement an additional service called “Trademark+50”. The Trademark+50 service allows a TMCH participant to submit a list of up to 50 related names that contain the registered trademark or a variation of the mark. To be included in Trademark+50, each of the related names must previously have been found to be the subject of an abusive domain name registration. All TMCH services are then extended to each of the related names. The cost for a Trademark+50 registration currently ranges from $75 to $200.

Perhaps the biggest benefit of the TMCH and Trademark+50 services is that for a single yearly registration, participants will reap the benefits of sunrise periods and claims services for every new gTLD registry that launches in that year. A full list of the approximately 900 new gTLDs currently slated for launch can be viewed here.

In addition to the TMCH and Trademark+50 services, some of the new gTLD registries may also provide additional protections for trademark owners. Already, Donuts, Inc. (the applicant for more than 300 new gTLD registries) has announced plans to offer a separate blocking service to TMCH participants. The blocking service allows trademark owners to actually block third party domain name registrations without further enforcement action. With a single registration and fee (estimated to be close to $3,000), trademark owners can protect a mark across all of Donuts’ expected 200+ new gTLD registries. Donuts has indicated that such a block will likely last for 5 years before a renewal is required. This service is only available to TMCH participants. It remains to be seen if other new gTLD registries will offer similar services.

Use of the TMCH and related services may not be the best strategy for every brand or every trademark owner, but these tools give trademark owners the flexibility to leverage their enforcement resources and to scale their enforcement efforts to meet the rapidly expanding gTLD universe.

For more information on the Trademark Practice Group and its members, you may visit the Trademarks, Advertising and Brand Management page of the Haynes and Boone, LLP website. If you have any questions about the new gTLDs, registering your trademarks with the Trademark Clearinghouse to take advantage of the sunrise and claims services, or objecting to another's new gTLD domain name registration, please contact one of the following lawyers.

Jeffrey M. Becker
214.651.5066
jeff.becker@haynesboone.com

 

Tiffany Ferris
214.651.5152
tiffany.ferris@haynesboone.com

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