You Need TM Registrations that EXACTLY Match the New Domain Names that You Covet

We recently reviewed the draft plan from ICANN regarding how it plans on handling exact matches in the Trademark Clearinghouse. We think this plan affects your trademark registration strategy.

The Trademark Clearinghouse provides an opportunity for the owners of registered marks to get certain preferences, such as a notice when someone tries to register an exact match of their marks as domain names, and such as a “sunrise” opportunity to register their marks as domain names before the domain names go on public sale.

This draft plan makes it clear that you need to have a trademark registration for exactly the same letter string as the domain name you covet.

For example, if you have a company called “Acme Healthcare, Inc.” and a trademark registration for the words-only mark ACME HEALTHCARE, that registration might give you first dibs on the chance to register the domain name But it would not give you first dibs on the chance to register the domain name

The moral of the story is that, if your business uses a common business-type-designation appendage site such as Inc., LLC or PLC, then you may wish to obtain a words-only mark registration that includes that appendage in addition to having a words-only mark registration that omits it. That will put you in a better position to fight for prime, matching domain names in the new generic top-level domain namespace.