Foley & Lardner LLP looks beyond the law to focus on the constantly evolving demands facing our clients and their industries. With over 1,100 lawyers in 24 offices across the United States, Mexico, Europe and Asia, Foley approaches client service by first understanding our clients’ priorities, objectives and challenges. We work hard to understand our clients’ issues and forge long-term relationships with them to help achieve successful outcomes and solve their legal issues through practical business advice and cutting-edge legal insight. Our clients view us as trusted business advisors because we understand that great legal service is only valuable if it is relevant, practical and beneficial to their businesses.
On June 13, 2012, the Internet Corporation for Assigned Names and Number (ICANN) revealed the list of new top-level domain names (gTLDs) applied for during the initial application period which ended on May 30, 2012.
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On June 13, 2012, the Internet Corporation for Assigned Names
and Number (ICANN) revealed the list of new top-level domain names
(gTLDs) applied for during the initial application period which
ended on May 30, 2012. See
http://newgtlds.icann.org/en/program-status/application-results.
The list discloses about 1,900 applications, including more than
100 in non-Latin characters. Many generic terms (e.g.,
"book," "baby" and "inc") are the
subject of multiple applications.
The good news for trademark owners is that it appears that most
— if not all — of the brand-name gTLDs on the
list (such as .ford and .gucci) have been applied for by their
legitimate owners. Nevertheless, trademark owners should review the
list carefully to determine if any of the applied-for strings
conflict with prior trademark rights. Even if a gTLD does not
conflict directly with a company's trademark, it may be a
generic, community, or geographic term that was applied for by a
competitor or is otherwise relevant to an industry. Brand owners
also should pay special attention to the non-Latin character
strings (e.g., Arabic, Chinese, and others) to ensure that a
translation or transliteration of the string does not infringe
prior trademark rights.
The gTLDs on this list are still far from being put into
operation. Now that the applications have been revealed,
ICANN's initial evaluation period begins. As part of this
evaluation, there will be a 60-day period during which any person
or business may submit comments on any application based on: (1)
"string confusion," i.e., confusing similarity to another
gTLD; (2) "legal right," i.e., infringement of a prior
trademark right; (3) "public interest"; or (4)
"community opposition," i.e., objections to a
community-based gTLD by a member of that community.
Applications that survive the initial 60-day evaluation period
will be "posted." Following such posting, there will be a
seven-month period during which parties may make a formal Legal
Rights Objection to any gTLD application. An Objection may be
lodged asserting that a string: (i) takes unfair advantage of the
unique character or the reputation of the objector's registered
or unregistered trademark; or (ii) impairs the distinctive
character or the reputation of the objector's mark; or (iii)
creates an impermissible likelihood of confusion between the
applied-for gTLD and the objector's mark. These disputes will
essentially be arbitrations to be resolved by panels of World
Intellectual Property Organization (WIPO) experts.
Accordingly, today's publication marks the beginning of a
period of increased vigilance for trademark owners.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
ICANN Reveals List Of Applied-For gTLDs: What Trademark Owners Can Expect
United StatesIntellectual Property
Contributor
Foley & Lardner LLP looks beyond the law to focus on the constantly evolving demands facing our clients and their industries. With over 1,100 lawyers in 24 offices across the United States, Mexico, Europe and Asia, Foley approaches client service by first understanding our clients’ priorities, objectives and challenges. We work hard to understand our clients’ issues and forge long-term relationships with them to help achieve successful outcomes and solve their legal issues through practical business advice and cutting-edge legal insight. Our clients view us as trusted business advisors because we understand that great legal service is only valuable if it is relevant, practical and beneficial to their businesses.
