Ahead of the annual meeting of the International Trademark Association (INTA) in Dallas earlier this month, a group of experts convened to discuss the challenges businesses face when protecting their brands online. They also discussed what lies ahead in the digital world on KRLD 1080 AM’s “Pulse of the City” radio show, CBS reports.
The annual meeting attracted nearly 10,000 intellectual property attorneys and business leaders from around the world, and highlighted the importance and emphasis that is placed on brand protection.
During the broadcast, trademark and intellectual property trends in the online realm took center stage. One takeaway was that every company, regardless of size, is prone to misrepresentation in the digital world and needs to make sure its intellectual property is protected.
Mei-lan Stark, vice president of INTA, said: “Brands are one of the most effective communication tools ever invented.”
Trademarking properties is vital for businesses, and is especially important on the Internet, where brands and their reputation can quickly become tarnished. For example, failing to trademark a name could lead to another party doing so, which could prove costly.
Another problem is cybersquatting, where individuals register a domain name that is similar to the brand or name of a company in order to profit from, or cause harm to it.
The Internet Corporation for Assigned Names and Numbers (ICANN) is rolling out its new generic top-level domains (new gTLDs) later this year. Ahead of the move it launched the Trademark Clearinghouse (TMCH) as one component of broader rights-protection mechanisms designed to enable companies to register their marks during priority Sunrise phases for each new gTLD.
Under the program, brand owners can register their trademarks in the TMCH and leverage that filing to participate in upcoming Sunrise phases. By registering their marks with the TMCH, even brand owners who have not applied for new gTLDs can benefit, receiving trademark claims alerts if a third-party registers an exact match of their mark during the first 90 days of registration (post-Sunrise).
Coupled with the TMCH, ICANN will introduce the Uniform Rapid Suspension (URS) system, which is meant to be a cheaper and faster version of the UDRP for “obvious” and clear-cut cases of abuse and/or infringement.
While these resources provide a level of consistency and uniformity to how rights-protection mechanisms will be applied by ICANN, the new gTLD expansion promises a more complex name space that brand owners must plan for and navigate within a relatively short period of time.
If the high level of participation during the new gTLD sessions at this year’s INTA meeting is any indication, trademark owners are interested in knowing more. As ICANN’s new gTLD program progresses toward the delegation of the first new gTLDs and their accompanying Sunrise phases later this year, brand owners must contemplate a balanced strategy to mitigate risk and leverage the expansion of the name space by identifying potential opportunities.
This includes:
- Selecting trademarks for inclusion in the TMCH
- Identifying new gTLDs that will have the greatest impact, and then registering the domain during the sunrise phase
- Monitoring registry-based rights protection programs that offer cost-effective blocking options and other limited preventative registrations
- If not in place already, consider a domain monitoring or watching program for your marks that is comprehensive (across all existing and new gTLDs), accurate and timely, with prioritized results and expert analysis to enforce your rights
- Rationalizing the current domain portfolio by divesting low-value domains, and registering branded and business-related generic names in the new gTLDs
For more information on new gTLDS and protecting your brands in a digital world, please contact CSC Digital Brand Services.