In this third and final segment of our series, we suggest strategies that trademark owners may want to adopt and report on a recent development in the new top level domain scheme.
The launch of new top level domain names is right around the corner, on January 12, 2012. Trademark owners, particularly those that have developed significant goodwill in their brands, will be faced with several decisions. This blog briefly surveys those decision points. It also reports on an important letter published by the Department of Commerce (DOC) that may mirror some trademark owners’ concerns.
Do You Want to Register a New Top Level Domain in the System?
These are some of the factors that a company otherwise in a position to register a new gTLD (i.e., because it has the financial resources to do so) might consider:
- Is the company’s brand name strong, and arbitrary or fanciful? If the company has a brand that it can protect under the trademark laws, it might simply object to any third party attempt to register its mark as a new gTLD, with some assurance that its objection will succeed.
- Is the company’s name merely descriptive, or at most suggestive, so that the company should register the name as a new gTLD to keep others from doing so, if it wants to use the name in this capacity?
- Does the company want to use the use its mark as a new gTLD for marketing purposes? Canon, for example, has announced its intent to register .canon and to issue second level domains to Canon customers who purchase cameras with unique chips so photos could be automatically uploaded to personal websites at [customer’s name].canon.
Apart from these issues, DOC’s letter raises a concern that may become widespread as the Internet opens up to new top level domains: Many trademark owners may feel compelled to file defensively at the top level, even if they are not going to use their top level domains, to prevent others from doing so. Of course, they will have an opportunity to object to third party attempts to register the same or confusingly similar letter strings as gTLDs. This, however, requires a trademark owner to be alert to the period for filing an objection, i.e., the period beginning approximately two weeks after the close of the application window on April 12, when ICANN posts the public portions of all applications that have been received on its website, and lasting for approximately seven months.
Should You Register Any Marks or Names as Second Level Domains?
Deciding whether you should register any marks or names as second level domains requires an in-depth familiarity with your organization’s portfolio. Some companies have dozens or even hundreds of trademarks, and will not wish to register all of them for cost and organizational reasons. A company may want to select (1) those marks that are its most valuable, and that it plans to continue using into the indefinite future or (2) any marks that it believes third parties will try to misappropriate.
Trademark owners must then submit evidence of their rights, of the sort we described in the second blog in this series, to the Trademark Clearinghouse. In addition, a rightful trademark owner may reserve its marks as second level domains with the new gTLD during the Sunrise Period, which will open at least 30 days before the launch of a new gTLD, ahead of others who might try to reserve the same names.