With the New TLD Program being officially approved yesterday at the ICANN meeting in Singapore, Trademark applications for so far non-existent TLDs are expected to heat up.

One of the most famous examples is .eco, which was originally filed by Colored Planet Connextion and looked set to be approved back in 2009. However, the Canadian company Big Room also filed for the .eco mark in direct competition with Colored Planet’s application. Colored Planet won out in the end however and they now hold a valid trademark on the TLD.

It’s interesting to note that while both of these companies were interested in setting up .eco, neither of them are affiliated with Dot Eco LLC which is the group endorsed by Al Gore himself! Dot Eco and Colored Planet are now locking horns over the status of the current trademark, with Colored Planet sending a cease and desist letter to Dot Eco, and the latter petitioning for the cancellation of the currently registered trademark.

And they are not alone. Top Level Domain Holdings, Ltd who are an investor in the new TLD consulting Firm “Mind + Machines” have already filed a large number of trademark applications for the TLDs .movie, .kids, and .books along with many others which they hope to acquire.

Many people have questioned how organisations are already filing trademarks on New TLDs when applications are not being accepted by ICANN until January 2012. Companies have tried this in the past with applications for New TLD trademarks being filed as far back as the early 90s, almost all of which were rejected outright.

So why choose now to apply for your trademark? It seems to be widespread opinion that owning a trademark prior to making your application with ICANN will work in your favour, and increase the likelihood of getting your application approved – although this is by no means the deciding factor! By the same token it’s also likely to give you a significant advantage over anyone applying for the same New TLD if they do not own a trademark prior to their application.

Top Level Domain Holdings have even been quoted as saying that they are defensively applying for trademarks to avoid any hassle if they decide to apply for any New TLDs in the future:

“TLDH is applying for trademarks for “dot name” in areas we, or our clients, might want to apply for a top-level domain... We don’t actually believe that they are necessary or even helpful, but we want to avoid having to deal with someone else’s trademark-based claim in the event that we decide to apply for one of these.”

It’s no doubt that the internet is changing forever, and as more people start proceedings to apply for their desired TLDs we will see more and more trademark battles develop.

Tweet