12.02.11 | Trademark Law Update: gTLDs Application Period Opening

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New Generic Top Level Domain Conundrums

By: Richard S. Stockton
Change is coming to the Internet—change that ICANN, the Internet’s governing board, calls the “Next Big .Thing.”

Beginning on January 12, 2012, ICANN will begin accepting applications for new generic top level domains. The application period closes on April 12, 2012, and no further application periods are currently planned. Applications will not become public until a few weeks after the application period closes and a US$185,000 application fee is required.

 As a result of the new gTLD process, businesses will have the opportunity to operate their own gTLDs, meaning that they—among other things—can create new marketing (e.g., “.brand”) and business paradigms (e.g., intranets and authorized dealer spaces online).
However, the new gTLD process also presents concerns. For example, a competitor could pursue a gTLD that might lead to a business advantage (particularly if your business does not). Moreover, “neutral” third parties have announced intentions to apply for gTLDs such as “.radio,” and it is unclear whether such gTLDs will shake up the way we use the Internet or else fizzle from the limelight.
After applications become public, an approximately seven-month period will begin in which certain parties can lodge objections to applications on grounds of (1) “string” confusion (i.e., confusing similarity to an existing gTLD), (2) legal rights (i.e., confusing similarity to another’s trademark), (3) “community” (i.e., detriment to a clearly delineated community) and (4) “limited public interest” (e.g., contrary to morality).

On December 15, Banner & Witcoff’s Richard Stockton will lead a complimentary webinar that will explore the current state of the new gTLD process and suggest strategies for moving forward, including:
  • A brief introduction to gTLDs and the new gTLD process;
  • Recent updates to the process (including updates from ICANN’s latest meeting in Senegal);
  • A pragmatic look at the players and pitfalls involved; and
  • Strategies for seeking new gTLDs and handling others’ pursuit of new gTLDs through objections or other means.

Please click here to register for this webinar.  CLE accreditation is pending.