IP Summit: Microsoft attorney urges rights owners to prepare now for gTLDs


Rights owners should begin developing their enforcement strategies for protecting their marks in the new generic top-level domain (gTLD) space, Microsoft attorney Russell Pangborn has warned.

Pangborn, speaking at the IP Summit conference in Alicante, said trademark owners should be planning how they will use mechanisms such as the Trademark Clearinghouse, a central database of marks.

“The trademark mechanisms will need attention. You should start creating your enforcement strategies now, as no one wants to register all their marks in the Clearinghouse. Be selective and budget-conscious.”

“We are hoping the Clearinghouse will be cost effective but it will cost $150 to file a mark plus annual renewal fees. That’s more than you pay at some regional IP offices.”

The first new domains are expected to launch in April 2013, with ICANN and the Clearinghouse’s operators working now to finalise the mechanism so that rights owners can begin filing their marks early next year.

Pangborn warned that brands must take a long term view of the gTLD process, reminding the audience that ICANN has already committed to opening a second application round (not clear when), before there could be a “rolling application process”.

He said that brand applicants like Microsoft, which has applied for 11 gTLDs such as .microsoft and .bing, should be wary of the path ahead.

“You will be dealing with ICANN—working in a multi-stakeholder, bottom-up process—and will need to invest time and money working with the organisation.”

He added: “Think about your policies if you are running your own registry: a lot of businesses don’t know about their final strategies or policies at the moment.”

Pangborn said Microsoft may face string contention processes, which resolves the ownership of identical or similar domains, for some of its applications.

“There is .bing versus .bingo, and potentially .hotmail versus .hot and .mail separately, and you can go on down the list.”

This article was first published on 11 December 2012 in World IP Review

Microsoft, gTLD, Internet, IP Summit

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