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Articles

Fish’s Keith Barritt Quoted in January 2015 Thomson CompuMark Newsletter, “The Supersized Web: Making Sense of the New gTLD Expansion”

January 22, 2015

Articles

Fish’s Keith Barritt Quoted in January 2015 Thomson CompuMark Newsletter, “The Supersized Web: Making Sense of the New gTLD Expansion”

January 22, 2015

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Keith Barritt (DC) was quoted in Thomson CompuMark’s January Newsletter in its latest white paper, “The Supersized Web: Making Sense of the New gTLD Expansion,” published January 20, 2015.

“I think many brand owners see the new gTLDs as a headache,” says Keith Barritt, principal at Fish & Richardson in Washington, D.C. specializing in trademarks and Internet domain names. “So far, the majority of clients I’ve spoken to are in the ‘wait-and-see’ category—and maybe even in the ‘wish it would all go away’ category.”

Trademark Clearinghouse Pros and Cons
“If all you’re doing is monitoring to see if someone else is potentially creating trouble for your mark, then the TMCH is really not a very good option, due to the very limited identical match rules,” Barritt says. “There are lots of potential problems—minor misspellings, possessives, plurals, and the like—that will not trigger a TMCH alert. For this purpose, a private watch service is a much better option.”

Identifying and Managing Potential Conflicts
“I think brand owners should strongly consider taking advantage of private monitoring services so that they are made aware of potentially problematic domains, whether they are within the new gTLDs or the existing gTLDs,” Barritt says. “If clients don’t want to obtain new domain name registrations, they should at least invest a couple hundred dollars to be watching if anyone else is getting a domain name that they find is abusive. There are remedies they can pursue or court action, if necessary.”

“Over time, brand owners could end up with a stable of unwanted domain registrations. It can become a headache to maintain all of these,” Barritt points out, adding that the URS procedure offers an alternative.

“With the URS, the trademark owner may end up going through the same exercise with another registrant just a few years down the road. That has a lot of potential frustration,” Barritt notes. “So you have to balance the headache of maintaining those domains versus the potential of having to refile later on.”

Read the complete white paper here.

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