Survey Shows Lawyers Unprepared to ID and Address Trademark Risks Posed by New gTLD Applications
June 04 2012 - 7:45AM
Business Wire
A new survey of attorneys responsible for trademark protection
shows that although the majority are ‘aware’ of ICANN’s new generic
top-level domain (gTLD) program, many remain unprepared for what
follows ICANN’s “Reveal Day” on June 13, 2012. The research was
conducted by Melbourne IT Digital Brand Services (DBS) in order to
determine the knowledge, preparedness and resource plans of
trademark attorneys across the U.S. Respondents included counsel
from leading Fortune 500 companies as well as law firms.
Key Findings Included:
- 91% of respondents are aware of the new
TLD program, although only 36% of them have read the new gTLD
Application Guidebook, showing a clear gap between “awareness” and
“understanding”
- 54% of respondents feel new domains
pose a moderate or high risk to their organization’s or clients’
online brands and trademarks
- More than one third of respondents are
unfamiliar with the public comment/objection period
- While 47% say they are somewhat
prepared or very prepared to monitor new TLD applications and
respond through the official comment and objection channels, only
12% have ever participated in an ICANN public comment process
before
Now that the gTLD application window has closed, ICANN will
begin to process more than 1,900 applications. The highly
anticipated list of applications is expected to be revealed this
month. If an organization takes issue with an application for a
gTLD, made by another party, it can either file a comment with the
application’s evaluation panel for free during the first 60 days,
or object formally through one of ICANN’s appointed agencies.
"With nearly two thousand new gTLD applications submitted, there
will be tens of thousands of pages of application data that
interested persons may have to wade through to identify TLDs that
could pose a risk to their brand. The math challenges time-strapped
attorneys to effectively take advantage of ICANN’s protection
mechanisms in a short timeframe,” said Kanchan Mhatre, EVP of
Melbourne IT Digital Brand Services.
“Given that very few organizations have participated in an ICANN
comment period prior to this round, and most have not read the
Guidebook, delivering an effective, coherent comment to the ICANN
evaluation panel within 60 days will be difficult for many
companies, particularly if they waste weeks actually analyzing the
applications to find potential risks,” added Mr. Mhatre.
With this challenge in mind, Melbourne IT DBS has created a
sophisticated analysis tool that can quickly and efficiently
conduct a detailed, customized search that goes well beyond what
will be provided by the ICANN website. This new system, called TRAC
(TLD Risk Assessment Center), helps interested parties to identify
potential legal rights infringement or criteria that could warrant
an objection, saving them time and money. The online custom search
tool enables users to:
- Conduct detailed searches of gTLD
applications
- Quickly find and view specific
application sections
- Search trademarks, brands and other key
terms
- Research and cross-reference multiple
criteria
The information found by TRAC will help legal teams be more
efficient and effective with time and resources. Specifically, it
can help find the information necessary to:
- File a public comment within the 60-day
window
- Prepare a legal rights or string
confusion objection to a gTLD
- Inform a decision whether to withdraw a
gTLD application that has the potential to be in contention (or
eclipsed by a community application)
Survey Methodology
The online survey was conducted in April and required that
respondents had a direct role in trademark/brand protection.
Findings are based on anonymous responses to 11 substantive
questions, from 100 attorneys based in the U.S., spanning
industries from financial services to retail.
About Melbourne IT Digital Brand Services
Melbourne IT DBS helps organizations manage, protect and
optimize their brands online to maximize the value of their online
assets. The company helps clients minimize risk and make smarter
decisions in managing their online presence. The company’s 3,760
clients include some of the world’s most recognizable brands.
Headquartered in Santa Clara, CA, Melbourne IT DBS maintains 15
offices in 10 countries, and is a division of the listed Melbourne
IT Group (ASX: MLB). For more information, visit
www.melbourneitdbs.com.
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