Survey Shows Lawyers Unprepared to ID and Address Trademark Risks Posed by New gTLD Applications

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.