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David Weslow Discusses Trademark Owners’ Strategies with New gTLDs

World Intellectual Property Review
December 27, 2013

David E. Weslow, a partner in Wiley Rein’s Intellectual Property Practice, was quoted by the World Intellectual Property Review in a December 19 article analyzing how actively trademark owners are registering their trademarks with the Internet Corporation for Assigned Names and Numbers (ICANN) Trademark Clearinghouse (TMCH) created in association with new generic top-level domains (gTLDs).

According to the article, there have been 20,000 registrations with the TMCH since it opened in March 2013. Trademark owners must record their trademarks with the TMCH to take advantage of so-called “sunrise periods” for early registration of domain names in any newly established gTLD suffix.  “The registration statistics suggest that many trademark owners may not yet be aware of the TMCH and the benefits conferred by registration, or that perhaps many trademark owners are pursuing selective TMCH registration strategies to support subsequent second-level domain registration strategies,” Mr. Weslow said.

Mr. Weslow also addressed trademark owners’ implementation of new strategies and tactics for protection of trademarks in relation to new gTLDs  “Defensive registration strategies will vary, with brands taking into consideration the correlation between the brand and new gTLD strings, online brand promotion plans and the history of cybersquatting activities related to the brand,” he said.