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ICANN has developed a few mechanisms for dealing with disputes, whether or not the disputes are trademark based.  First, if two applicants are simply applying for the same gTLD, the gTLD will, generally, be delegated on a first-come, first-serve basis, unless neither applicant has completed the application process.  If the latter case occurs, ICANN will determine the winner based a set of four ownership-based criteria.  In the event of a tie on the criteria, the gTLD will be auctioned to the highest bidder.  ICANN hopes that many disputes will be resolved by the applicants themselves and plans to notify any applicants in contention in order to facilitate this process.  However, once an applicant is granted ownership of a gTLD, the applicant may decide, at their discretion, who may register on their TLD.

Second, ICANN has collaborated with WIPO (World Intellectual Property Organization) to ensure that ICANN's procedures adequately protect intellectual property holders.  Although ICANN is not requiring applicants to own a trademark in order to apply for a gTLD, ICANN has stated that it will take any trademarks, registered anywhere in the world, into consideration when evaluating gTLD applications.  ICANN is also likely to publish any applications that are chosen for evaluation, thus affording trademark owners the opportunity to protest an application, but it appears that such objections will be somewhat expensive.  Further, it appears that ICANN and WIPO are working towards either expanding the current Uniform Dispute Resolution Policy (UDRP) to include new gTLDs or developing a UDRP-type program specifically tailored for the new gTLDs.

Finally, ICANN has implemented separate procedures for the adult top level domain names (.xxx).  Many companies believe, and rightfully so, that being associated with adult material might adversely affect their trademark or brand.  As such, ICANN has granted ICM Registry the .xxx TLD and ICM is allowing trademark owners to file applications requesting that their trademark be prevented from being registered on this TLD.  The application period for this type of application is set to be open from September 7, 2011, to October 31, 2011.  

Each of these processes has nuances and exceptions associated with it, so it is important to consult an attorney before applying for a gTLD or attempting to resolve a gTLD dispute.  For more information about ICANN's dispute resolution procedures please consult ICANN's guidebook on www.icann.org.

ICANN has said that between 300 and 1,000 new TLDs will be created on a yearly basis.  However, ICANN is accepting applications in batches, allowing the first round of applications to be submitted between January 12, 2012 and April 12, 2012.  ICANN has stated that it will accept 500 applications during this time period, but many professionals observing the process believe ICANN will accept more than this amount of applications.  ICANN has stated that after this initial batch of applications is accepted, batches, or rounds, of applications will be limited to 400 applications.  ICANN has yet to announce dates for subsequent application periods. 

This past June, Internet Corporation for Assigned Names and Numbers (ICANN), the organization designated to regulate domain names, approved the creation of new generic top level domain (gTLDs) names and the adult domain name, .xxx.  The new gTLD's will be available to companies, brands, organizations and will allow these groups to further partition the web.  Currently, only about 300 top level domain names are in existence, including twenty-two general use-approved TLDs, such as .com, .org, and .net, and nearly two hundred and eighty country code TLDs, such as .it, .ca and .tv.  While certain internet sites have already been attempting to distinguish themselves by utilizing country code TLDs, most notably using the islands of Tuvalu's .tv country code, to distinguish themselves, organizations will no longer be limited to 300 TLDs. 

Once implemented, ICANN's approval will allow organizations to use TLD's ranging from specific, brand-related domain names like .pepsi, .disney, or .apple, to product-related domain names, such as .ipad, or .droid, to extremely generic TLDs like .soda or .golf.  However, it is important to differentiate owning a gTLD from merely using a second level domain name on a TLD.  For example, in google.com, google is a second level domain name registered on the .com TLD registry.  An applicant for a new gTLD is applying to create and operate a registry of a new top level domain name, not just applying for a single web address.  If an organization complies with the requirements and pays the necessary fees, an organization will now be able to acquire a gTLD.  The introduction of these new TLDs will provide businesses with new marketing opportunities, but it will also present some unique trademark questions.

USPTO Releases New Five-Year Strategic Plan
Plan builds on record breaking progress in 2006

The Department of Commerce’s United States Patent and Trademark Office (USPTO) released the agency’s “2007-2012 Strategic Plan,” which lays out goals and objectives to guide the agency in accomplishing its mission of fostering innovation and competitiveness by providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy and delivering intellectual property information worldwide.

The plan builds upon the record-breaking progress the USPTO made during fiscal year 2006 in the areas of quality production, electronic filing and processing, teleworking and hiring.

The Strategic Plan has three complementary strategic goals: (1) optimizing patent quality and timeliness; (2) optimizing trademark quality, and (3) improving intellectual property protection and enforcement domestically and abroad. The plan outlines approaches toward attaining these goals, articulates underlying challenges and opportunities, and identifies steps that can be taken toward implementation. It provides a framework for continuing to make measurable quality improvements, reducing patent application pendency, increasing the percentage of patent applications filed electronically and improving worldwide intellectual property expertise.

The five-year plan also has a management goal of achieving organizational excellence. As part of this goal, the agency will strive to become an employer of choice with a culture of high performance and to enhance organizational communication, prerequisites to achieving the strategic goals focused on the agency’s core mission.

The plan is the outcome of a collaborative process that included input from the public, stakeholders and employees. A draft Strategic Plan was released in September 2006 and comments were solicited. Through public comment, employee focus sessions and the input of the Patent Public Advisory Committee and the Trademark Public Advisory Committee, the plan’s ambitious goals are more clearly stated.  Further, the final plan seeks to outline transformational strategies that balance the short-term needs of today’s applicants with strategic changes needed to deal the increasing complexity and numbers of patent applications.

Under Secretary Dudas Addresses U.S. Chamber Intellectual Property Summit in Beijing and Also Meets with Heads of Chinese IP Offices
Meetings further deepen U.S. cooperation with Chinese IP Offices and speech outlines what governments are doing to address exponential worldwide growth in patent applications and intellectual property theft

The U.S. Under Secretary of Commerce for Intellectual Property (IP) and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas recently spoke at the Global Forum on Intellectual Property Rights Protection and Innovation in Beijing where he stressed the need for strong intellectual property protection and enforcement to foster innovation and wealth creation. The meeting in late March was hosted by the U.S. Chamber of Commerce and China’s Council for the Promotion of International Trade.

This was Mr. Dudas’ seventh trip to China to work on IP issues. He used the opportunity to meet with representatives of Chinese IP-related agencies to further bilateral cooperation on finding solutions to IP protection and enforcement challenges. Mr. Dudas met with Commissioner Tian Lipu of the State Intellectual Property Office (SIPO), China's Patent Office for their second heads-of-offices meeting. The USPTO and SIPO have witnessed dramatic growth in patent application filings, and last year, the two agencies signed a work plan of strategic cooperation intended to reduce the workloads of both agencies and to further cooperation. Under the work plan, the USPTO has implemented an examiner exchange program and initiated an automation expert group meeting, as well as providing training to SIPO examiners and managers on biotechnology patent examination, examiner training and certification, and quality assurance.  Cooperative programs planned for the future include training of SIPO examiners at the USPTO Patent Academy, a workshop on traditional knowledge, genetic resources, and folklore, and an IP enforcement program.