Protecting Trademarks Under New .US Top Level Domain

Author:Mr Michael Turgeon
Profession:Vedder, Price, Kaufman & Kammholz, P.C.
Originally appeared in the March 2002 issue of Intellectual Property & Technology Reporter

A new top-level domain (TLD), ".us," has been recognized by the Internet Corporation for Assigned Names and Numbers (ICANN) as the official country code TLD (ccTLD) for the United States. For this new ccTLD, there is a time-limited opportunity for trademark owners to protect their marks from being registered as domain names by others. This memorandum provides information regarding actions necessary to protect trademarks and the steps necessary to obtain .us domain name registrations.

The new .us TLD is designed for use by those individuals or organizations that have a substantive connection to the United States. In order to obtain a .us domain name, a registrant must be in compliance with the U.S. Nexus requirement, which requires that all registrants for a .us domain name must be either:

A natural person (i) who is a citizen or permanent resident of the United States of America of any of its possessions or territories, or (ii) whose primary place of domicile is in the United States of America or any of its possessions, or

An entity or organization that is (i) incorporated within one of the fifty U.S. states, the District of Columbia or any of the United States possessions or territories or (ii) organized or otherwise constituted under the laws of a state of the United States of America, the District of Columbia or any of its possessions or territories, or

An entity or organization (including a federal, state or local government of the United States, or a political subdivision thereof) that has a bona fide presence in the United States.

The registry for this new domain will be administered by NeuStar and will be implemented with a three-step process.

Step 1: Sunrise Registration Period (March 4, 2002 - April 9, 2002)

Domain name applicants that own a United States trademark or servicemark that has been registered or applied for with the United States Patent and Trademark Office prior to July 27, 2001 can preregister the mark as a .us domain name. Requested domain names during the Sunrise period must exactly match the trademark application or registration on file with the U.S. Patent and Trademark Office. Special characters within a trademark, such as ~ ' @ # $ % ^ & * ( ) _ + = { } [ ] | /, spaces and punctuation must be eliminated entirely or replaced with hyphens within a domain name.

All .us domain name applications submitted during the Sunrise period must contain the...

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