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Checklist for Protecting Your Entity's Trademark Rights in the New gTLD Environment

  • Make sure your entity has registered its trademark(s).We are rapidly transitioning from a system where trademark rights are based on use, to a system where international domain name rights are based on the formality of registration.
  • Review marketing materials, media and domain name internet usage of terms, and potential marks that may be used and associated with your brand and products. Other terms, such as acronyms, abbreviations and nicknames may slip into use, and it is important that these potential marks are monitored. NOTE: Our recommendation is that every federal agency registers its commonly-used acronym.
  • Begin an internal discussion on whether to file for a gTLD in the next two years. The priority for awarding applications will be based on the first to file with legitimate rights in the applied-for gTLD. The total processing time until an applicant finds out whether or not its new gTLD is granted may be 20 months or more.
  • Begin formulating a company or agency policy to oppose gTLD registrations that may conflict with those of your entity. Multiple entities may have legitimate rights in the same term being applied for as a new gTLD. ICANN's registration process allows time for entities claiming rights in an applied-for gTLD to oppose that applicant's registration. Similarly, multiple registrants applying for the same or similar gTLD must fight it out in a string contention proceeding.
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