< Publications

New top-level domains are coming to a browser near you – how to protect your trademark in view of these changes

As new generic top-level domains (gTLDs) emerge, the Trademark Clearinghouse (“TMCH”), overseen by the Internet Corporation for Assigned Names and Numbers (“ICANN”), provides a centralized trademark database which trademark owners can use to protect their brands. By registering in the TMCH, trademark owners are eligible to register their trademark as a domain name in each emerging gTLD for a period of time before its public launch.

2013 July 19 SAM_New top-level domains are coming to a browser near you-how to protect your trademark in view of these changesA gTLD is a type of suffix at the end of a domain name, such as .com. There are over 1,800 active applications for new gTLDs being processed by ICANN, heralding a dramatic expansion in the number of domain names. Proposed new gTLDs include descriptive suffixes (such as .food and .news), brands (such as .nike and .microsoft), and geographics (such as .quebec). A full list of gTLDs may be found here.

Trademark owners may now record their trademarks with the TMCH to obtain the benefits of a “Sunrise Period Service” and/or a “Trademark Claims Service”.

The “Sunrise Period Service” is a minimum 30-day period before a new gTLD launches during which the owner of a trademark recorded in the centralized database will be permitted to register, in the new gTLD, a domain name exactly matching the trademark. This 30-day sunrise interval is available only to owners of trademarks recorded in the centralized database—others cannot apply to register domain names in the new gTLD during the sunrise interval.

The “Trademark Claims Service” is effectively a short-term monitoring service. For at least 90 days after a new gTLD launches, applications for domain names within the new gTLD will be monitored for conflicts with trademarks recorded in the centralized database. If a proposed domain name exactly matches a trademark in the database, a written warning is sent to the domain name applicant. If the applicant completes the domain name registration procedure notwithstanding the warning, the TMCH notifies the trademark owner who may then take remedial steps, e.g. initiation of domain name dispute resolution proceedings against the domain name applicant.

Trademarks can be recorded in the centralized database for renewable terms of 1, 3, or 5 years. The benefits outlined above exist only during the term for which the trademark is recorded in the centralized database. Only registered trademarks and trademarks otherwise validated by a validation process administered by the TMCH are eligible.

Whether you should record your trademark in the TMCH mainly depends on whether you intend to register your trademark as a domain name in a new gTLD. If so, the Sunrise Period Service offers trademark owners with a mark registered in the TMCH a competitive advantage.

The TMCH offers only a short-term monitoring service. Thus, if you are concerned that a third party may register a gTLD containing your trademark or a term containing your trademark, the Trademark Claims Service may not provide your brand sufficient protection. We recommend contacting a domain management service provider to oversee whether your mark, or a similar mark, is registered as a domain name online.

Trademarks should be recorded in the TMCH and/or a domain management service provider should be contacted as soon as possible given recent estimates of the first of the new gTLDs being launched beginning in the third quarter of 2013.



Information made available on this website in any form is for information purposes only. It is not, and should not be taken as legal advice. You should not rely on, or take or fail to take any action, based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Oyen Wiggs Green & Mutala LLP professionals will be pleased to discuss resolutions to specific legal concerns you may have.