Monday, 27 January 2014

New gTLD Trade Mark Protection Flow Chart

You have a registered trade mark and want to protect it within the new domain name extensions (new gTLDs) but you are unsure of the process to follow


You don't have a registered trade mark and would like to secure a domain name for the mark you use.

The flow chart below sets out three routes you can follow:
  • registered trade mark route;
  • landrush (medium risk) route; and
  • general availability (high risk) route.
We are aware that some new gTLDs have unique rules but in essence the vast majority should follow the chart we created.

The key at the foot of the flowchart briefly explains the acronyms used in the new gTLD process, which can be overwhelming for "newbies" to the domain name industry.

Click on chart to enlarge

The recommended route to take for any trade mark owner is the blue route. 
The blue route involves:
  1. Validating your trade mark via a TMCH agent such as Lexsynergy.
  2. Blocking your mark (an identical match) via the DPML. This only covers new gTLDs operated by the registry called Donuts, which amounts to approximately 300 new gTLDs.
  3. Submitting a Sunrise application for non-Donuts new gTLDs such as .sexy and .uno. 
  4. If you are the only applicant then you will be awarded the domain name. If not, you may have to dig deep in the auction to submit the highest bid. The domain name is allocated to the highest bidder.
It is possible under the Mark Validation System (MVS) to validate unregistered rights such as common law trade marks and company names but the MVS only applies to .africa, .joburg, .durban and .capetown.

Contact us to arrange a free discussion on how best to protect your trade mark within the new gTLDs. We provide bespoke domain name strategy advice for trade mark owners and trade mark attorneys.

No comments: