Posted by Sequel on November 28, 2012
Topic: ICANN, Trademark
ICANN Takes Steps to Provide gTLD Owners With Added Protection

ICANN, the organization charged with overseeing various internet-related tasks, including the new global top-level domain name (gTLD) system, recently began implementing a “Proof of Use” verification process.  New gTLDs and their marks will be given protection through the Trademark Clearinghouse during its sunrise periods.  A sunrise period is a set amount of time where Clearinghouse data is used to determine whether any conflicting word marks exist.  Rights holders who take advantage of the sunrise period must also show proof of use which requires both a signed Declaration of Use and a single sample of current use ( i.e. labels, tags, containers or products or advertising and marketing materials).

With this added protection, the process of registering for a new gTLD is becoming more like the trademark registration process which includes a period for objection and a method for determining the level of protection one gains depending on the status of a mark.  When registering for a trademark, applicants distinguish between marks currently being used in commerce and those that they intend to use in commerce.

Ultimately, the new Proof of Use requirements will likely be quite burdensome on trademark holders.  For instance, the rule requires renewal once a year and a Declaration of Use with current samples to be provided every five years.  Not all countries require proof of use which makes this new rule an added burden on its registration process.  But, even for those countries that do have similar rules, an annual renewal can become onerous for larger organizations which own numerous trademarks.

Additionally, ICANN provides a list of examples of samples of use.  Consequently, if it is found that ICANN’s list is exhaustive then trademark holders will have yet another obstacle before them in complying with such a short list.  Rights holders may have one last reprieve once ICANN has responded to the feedback received during its comment period on the new regulations, depending on those responses.  Only time will tell.  It will also be interesting to see whether ICANN imitates any other aspects of the trademark registration process and if it creates an “intent to use” exception for rights holders who have not acquired adequate Proof of Use.

— Brent Radcliff

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