With the Launch of Over 1000 New gTLDs Over the Next Year…Is it Time for Brand Owners to Panic?

As we all know, there are already a handful of generic top-level domain names (“gTLDs”) in existence, such as .COM, .CO, .BIZ, .NET, .ORG, .EDU and .XXX, as well as many country code domains, including .CN (China), .JP (Japan), .PL (Poland) and .EU (Europe).  As you may also know, Internet pirates (a/k/a domain name squatters) seek to plunder the trademarks of others by using them in domain names for monetary gain, including the siphoning of Internet traffic from brand owners’ own websites and holding them for ransom.  Many brand owners have dedicated significant time and expense over the past decade (and continue to do so) to defend against these pirates in an effort to control unauthorized use of their trademarks on the Internet, including use of those trademarks in domain names.  With the imminent launch of over 1000 new gTLDs over the next year (possibly 20 per week), those fights may have only been primers for what is about to come for some brand owners.  

As of today, there have been over 1,900 applications filed by third parties for new gTLDs, including .ACCOUNTANTS, .ART, .CONSTRUCTION, .ENGINEERING, .FURNITURE, .SALON, .TICKETS, .THEATER, .TIRES, and so on.  To see the full list, click here.  

The launch of these new gTLDs has been delayed for several years due to brand owners’ and trademark practitioners’ concerns of rampant trademark hijacking and domain name squatting – and the expense and time to defend against such activities.  In an effort to minimize those concerns, the Internet Corporation for Assigned Names and Numbers (“ICANN”) (the entity created to oversee and coordinate domain names) created, what is known as, the Trademark Clearing House (“TCH”).   

What is the Trademark Clearing House (“TCH”)? 

The TCH is a global trademark registry for brand owners to register their trademarks.  TCH providers will verify trademark rights and data and maintain a database with the verified trademark data. 

Two primary benefits of the TCH are that trademark owners that register with the TCH would receive priority with respect to reserving new gTLDs during sunrise periods and receive claims notifications of third parties seeking reservation of domain names that incorporate their trademarks.   

What Trademarks Are Eligible? 

Trademarks that (1) are nationally or regionally registered, (2) have been recognized and validated through a court or other judicial proceeding and (3) are protected by statute or treaty may be registered with the TCH.   

One important aspect of the TCH is that only exact matches of trademarks may be registered, near exact or phonetically equivalent marks (to protect against “typo squatting”) are not eligible for registration.  

What are the Costs for Registering Trademarks with the TCH?

The cost to record marks with the TCH depends upon how many years the reservation is for and how much an agent charges for the recordal.  For a one-year recordal, the registration fee charged by ICANN is $150 per trademark. 

What are Sunrise Periods? 

Sunrise periods will allow brand owners that have registered their trademarks with the TCH to register new gTLDs corresponding with their marks before reservation periods open to the general public.  The aim of sunrise periods is to allow brand owners to “pre-register” their domain names in an effort to keep them away from domain name squatters.    

If a trademark owner plans to register during a sunrise period, it must first submit proof that the subject mark is currently in use, which includes a signed declaration and a sample of how the mark is actually used. 

Should there be competing domain name requests during a sunrise period, ICAAN ultimately wins as the parties would need to “duke it out” at auction.  Highest bid wins.  

What are Claims Notification Periods? 

Trademark claims notification periods follow sunrise periods and run for at least 90 days.  Anyone seeking reservation of a domain name that incorporates a trademark owner’s mark that has been registered with the TCH will receive notification that the reservation request may violate third-party trademark rights.  If the party proceeds with the registration after such notification, a trademark owner would then receive notification that someone has sought registration of a domain name incorporating its mark.  

Once a trademark owner receives such notification it may decide whether to object to the reservation by utilizing the Uniform Rapid Suspension system, a feature of the new gTLDs system, or take other action. 

What Should Brand Owners Do? 

The first step for brand owners is to review the list of applied-for gTLDs and decide if there are any domain names of interest (at least those that correspond to their industry, i.e., Goodyear.tire). 

If a brand owner intends to reserve certain gTLDs corresponding to certain of their trademarks (i.e., for its actual use or as defensive registrations) it should register those trademarks with the TCH.  Those brand owners should then monitor for sunrise periods corresponding to the interested gTLDs to seek reservation of the subject domain name(s). 

Brand owners not planning to reserve domain names that correspond to the new gTLDs, likely need not file their trademarks with the TCH – although reserving top-tier marks now is probably a good idea in the event those plans change.   

If brand owners are only interested in monitoring third-party reservation of domain names that correspond to their trademarks, a better alternative to registering with the TCH is to order a domain name watch from a qualified service provider.  The domain name watch would monitor for any domain name reservations that not only include exact spellings of watched marks but also misspellings and phonetically similar marks.  A domain name watch is relatively inexpensive – only about $250 per year per trademark. 

Although there is much to consider, it is not time to panic.   

However, it is time to understand that there are pirates ready to plunder the trademarks of others with hopes of financial gain.  Although many trademark owners may have bigger fish to fry than worrying about Internet pirates and new gTLDs, brand owners should still take a moment to consider their strategy for defending against potential online attacks to their valuable treasures (a/k/a/ their trademarks and brands).   

Related Trademark Titan Blawg Posts: 

1.  Six Actions Brand Owners Can Take To Prepare For Potential Deluge Of New Generic Top Level Domain Names 

2.  Uniform Domain-Name Dispute-Resolution Policy (UDRP): To Catch a Cybersquatter  (Includes: Domain Name Squatting vs. Domain Name Speculation)    

3.  Study Suggests That Trademark Owners Need Not Worry About New gTLDs 

4.  Ten Essential Rules for Internet Brand Names

U.S. and International Trademark Marking: Use TM, SM, ®…or None of the Above?

Trademark Marking: Use TM, SM or ®?

Trademark markingTrademark marking generally refers to the use of the trademark designations “TM,” “SM” and ®, which are commonly accepted designations for identifying trademarks and indicating their ownership.

U.S. Trademark Registration and Use

When brand owners use their trademarks within the U.S. – the issue of whether to use the trademark symbols TM, SM or ® is relatively straightforward. 

“TM” and “SM” – Trademark Marking Rules

The general rule is to use the designation “TM” for (federally) unregistered trademarks for products (Trademark™) and “SM” for (federally) unregistered marks for services. 

Therefore, those symbols may be used before a trademark is federally registered and thus may be used immediately upon brand launch to let the world know that you are making claim to your trademarks!

® – Trademark Marking Rule

Once a trademark registers with the United States Patent and Trademark Office (“USPTO”), however, the TM or SM may be replaced with the coveted “R in a circle” — ®.

However, once trademarks register with the USPTO and brand owners begin using the registration symbol “®” next to their marks on packaging, product sheets and/or marketing materials, what should brand owners do with respect to using the “®” symbol in countries where their marks are not registered?

International Trademark Use

Trademark markingWhen U.S. registered trademarks are used in countries where the marks are not registered, the issue of trademark marking can be complicated.  The issue is complicated because many countries have their own trademark marking laws.  Therefore, understanding local laws and legal issues that may arise with respect to trademark marking is a first step to understanding and minimizing the potential risks of violating certain country laws and requirements.

It seems clear that most countries recognize the trademark registration symbol ® – and common law trademark symbols SM and TM – in practice.  Their use, however, is typically optional and/or have no recognized legal effect as to protection of trademark rights in some countries. 

Alternative Wording for Trademark Marking

Although the ® symbol has become well-recognized, it is by no means universally accepted.  For instance, “Marque Deposee” is preferred in some French language territories and “Marca Registrada” or “M.R.” is preferred in certain Spanish or Portuguese speaking territories.

Trademark Marking Requirements and Possible Penalties

Certain country laws including, China, Chile, Costa Rica and Indonesia, require the use of proper registration notice in order to maintain a registration and trademark rights.  Furthermore, other countries, including the United States, Bolivia, Denmark, Philippines, and European Union, require proper use of the registration symbol ® to recover damages and attorneys’ fees for willful infringement, while some other countries require proper use to protect against loss of trademark rights (such as the mark becoming generic).

Trademark markingHowever, some local laws make it unlawful to claim trademark registration status when a mark is not registered in that country.  Countries, including Germany, China, Ireland, Italy, New Zealand, Pakistan and Peru, may actually impose penalties for mismarking of trademarks, such as fines, damages, injunctions and/or imprisonment. There are also a few countries that may impose penalties for use of the symbols “TM” and/or “SM” if consumers would perceive use of those designations as an indication that the mark is actually “registered” in that country; France appears to be one of those countries.

Conclusion – Trademark Marking 

The dilemma for brand owners that have registered their marks in only some of the countries in which they conduct business is that in order to conform to local trademark marking law requirements, they may need to develop tailored marketing and packaging materials to avoid violating those laws.  The main problems associated with such tailoring of marketing and packaging materials are – of course – costs and time.

Based upon the differences in local trademark laws, developing a “one-size fits all” trademark marking strategy is likely to prove difficult, as one strategy might violate – to a certain extent  – certain local laws or result in loss of certain trademark rights against an infringer, while others may not.  

Adopting a global trademark marking strategy that is not tailored to each specific jurisdiction, however, should be one that seeks to minimize potential risks.  Although it is preferable for brand owners to tailor their trademark marking policies to conform to local law requirements, for most companies, however, business realities, such as cost and time, result in the implementation of strategies designed to minimize cost, time and risk.

Therefore, we aim to review each trademark portfolio on a case-by-case basis and offer an assessment on best strategies for our clients.

  • You may read more on this issue here.

Contact Us if you require assistance with your global trademark protection and marking strategies.

Trademark Registration and Protection Posts

For discussion about the benefits of securing U.S. federal trademark registration and about global trademark protection considerations, please review my blog posts here, here and here.