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With New Internet Addresses on the Horizon, Companies Must Actively Guard Their Brands



November 05, 2012

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Intellectual Property 
Legal Updates

The generic top-level domain (gTLD) initiative of the Internet Corporation for Assigned Names and Numbers (ICANN) has resulted in more than 2,000 applications for new gTLDs. Companies should be considering brand protection measures in this expanded online environment.

The new gTLDs encompass a wide range of terms, including .energy, .grocery, .kids and many more.

The objection period for claims against new gTLDs expires on January 12, 2013. All brand owners should review the list of gTLD applications and file any relevant objections before the deadline. Internet address owners should also consider filing domain registrations with the new gTLDs – as these domains become available in 2013 – as well as defensive measures to stop infringement when the gTLDs go live, such as participation in the Trademark Clearinghouse, Sunrise Period, and Trademark Claims service. (Deadlines and procedures for these measures have not been set. Look for further updates from Husch Blackwell on these topics or contact your Husch Blackwell attorney for more information.)

Filing an Objection

Objections may be based on one of the following grounds:

  • Prior legal rights in a gTLD, which can be filed by a party that owns rights to a mark that may be similar to an applied-for gTLD.
  • Community objection, which can be filed by a significant portion of the community to which the gTLD string may be targeted (e.g., by a consortium of grocers against .grocery).
  • String confusion, which can be filed by one gTLD applicant or gTLD owner against another gTLD applicant.
  • Limited public interest objection, which can be filed by a party that believes the applied-for gTLD string is contrary to generally accepted legal norms of morality and public order.

The cost for filing objections is expected to range from $10,000 to $30,000 for the initial stages only.

What This Means to You

Brand owners should review the list of published gTLD applications to determine how to proceed: whether to file an objection or prepare to register for new domain names. In the coming months, the Trademark Clearinghouse will become available for the registration of key brands that will assist brand owners in protecting against infringements of their marks as gTLDs go live. Participation in the Clearinghouse will be required in order to access the Sunrise Periods and Trademark Claims services. Deadlines and procedures for these measures have not been determined. Look for further updates from Husch Blackwell on these topics.

Contact Info

For additional information about these or any other intellectual property issues, please contact your Husch Blackwell attorney, Alan Nemes at 314.345.6461 or Arkadia Olson at 314.345.6215.

Husch Blackwell LLP regularly publishes updates on industry trends and new developments in the law for our clients and friends. Please contact us if you would like to receive updates and newsletters or request a printed copy.

Husch Blackwell encourages you to reprint this material. Please include the statement, "Reprinted with permission from Husch Blackwell LLP, copyright 2012," at the end of any reprints. Please also email [email protected] to tell us of your reprint.

This information is intended only to provide general information in summary form on legal and business topics of the day. The contents hereof do not constitute legal advice and should not be relied on as such. Specific legal advice should be sought in particular matters.


Alan S. Nemes


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