Will I Need to Protect My Trademark in Many New TLDs?Posted: February 24, 2012
Most of the heat has died down from opponents of the new TLD programs, but many are still uneasy about new TLDs. The proverbial “fear of the unknown” is at work here, since there has never been a time when hundreds of new global TLDs would be released at once.
While some industry associations like the RIAA had concerns about security of extensions and piracy, much of the criticism leveled at the new TLD program was about trademark protection. As it is, many larger companies defensively register hundreds if not thousands of domains and often still find themselves in domain disputes over clear trademark-infringing domains.
Small businesses unsure of what the internet landscape will be like once new TLDs hit worry that defensively registering their exact name in hundreds of extensions will be a necessity. Especially with startups who need a smooth and steady cash flow and as few extra expenses as possible, massive defensive registrations would be crippling.
We have discussed previously about being selective when protecting your trademark and it holds true for new TLDs as well.
The only companies that would really need to worry about their name in nearly every new TLD are Google, Facebook, Apple and similarly gargantuan companies. For them, the added expense of doing so won’t exceed the net profit they make in a couple of minutes on an average day – a mere drop in the bucket.
For the rest of companies out there, the amount of defensive registrations needed will largely depend on what new extensions will come out. While there has been speculation that a majority of new TLDs will be .brand, many of which would be closed off for public registration, in reality we may see a lot of generic TLD registrations.
The need for defensive registrations will depend on these factors:
1. How many “.com alternatives” will there be?
One of the extensions looking to be a .com alternative has been rumored for many years and will likely finally see the light of day: .web. Whether there will be many of these kinds of general extensions remains to be seen. It’s highly unlikely there would be a lot of them as the marketing costs needed to compete with .com and other established extensions would price many companies out.
Still, these kinds of extensions are the ones where you would most likely see trademark-infringing registrations. If you’re not a large company or you serve a limited area, you may not need to worry about protecting in some if not most of these extensions. You should still keep them in mind though, and at least have some awareness of which of these extensions have success as you may need to monitor your trademarks in them at some point.
2. How many specialized but still general extensions will there be?
Even if an extension isn’t designed to please everybody, it may still be a general extension serving most if not all industries. One recently publicized extension along those lines is .club. While we have seen generic extensions not take off well in the past, an extension like that can serve a purpose and attract a wide variety of registrants. Larger companies could have offshoot “fan club” sites in the extension.
TLDs like that should be on your radar as well. Again, if you’re a smaller business and/or only hit a local market, it may not be necessary to defensively protect your name, but be aware that if such an extension should be come popular, you may find yourself disputing the name later.
3. How many extensions will serve your industry or niche?
One of the areas that have been attracting many larger industries are the potential .industry or .niche extensions arising from the new TLD program. Most of these will be completely irrelevant to your business, and as such likely won’t require protective registration.
However, there’s a chance that an extension or two may come out that covers the industry or products/services your company offers. Just like you might consider domains like Your Brand + Your Generic Product in .com, you should definitely consider protecting your name in those fitting extensions.
4. How many geo extensions will share your local market?
Are you a local company merely serving your locale? A vast majority of the new extensions may not be worthwhile for you to consider defensive registrations, but your .locale certainly would. While it may be unlikely for many of them to see high adoption until most major cities are covered, we see how avid some countries use their country code. The same can happen with .locale domains.
We have said many times that we don’t feel the new TLDs as a whole will detract from the long-held wide-sweeping authority of .com – at least not for several year and even then still unlikely. That said, for trademark protection, you should still pay close extension to how the new TLDs will unfold.
At Domainate, we can help you find and buy the right domain for your business or organization as well as help you determine the best plan for protecting your trademark with domains. Contact us if you want a better domain or assistance in protecting your trademark.