Protecting Your Brand in the Era of New Top Level Domains (gTLDs)
Posted by Jennifer Wolfe on 09th July 2013 in 360 Blog

There are a number of steps necessary to build your defensive strategy to protect your brand in an expanding internet environment. But, of course remember, that sometimes the best defensive strategy is to start thinking in an offensive way – how do you capture your market share and not just protect but cultivate and build your brand? All too often, companies only look at how to stop infringers, rather than looking at how to boost their own brand value and presence.

You absolutely must start with an audit of all of your brands and sub-brands.This is the perfect time to do some house cleaning. What brands are you using? Will you continue to use? What gives you the greatest market share? Can those brands be protected globally or just in the US? Does your long-term strategy require any rebranding? These are all important questions that require an audit and analysis of your current brand portfolio. Rather than immediately begin with how do we protect everything in our portfolio, ask yourself: “What should we be investing in for the future?” When paradigm shifts occur, taking stock of what you have and placing value predictions on the future is essential.

Audit your domain portfolio. Likewise to auditing your brand, it’s time to also audit your existing portfolio of domain names. Companies large and small are often maintaining far more domains than needed just to box others out or “just in case” you later have a strategy that will use it. While you can certainly continue to do so, this is a good time to really evaluate your overall domain name strategy in light of the changing Internet. Because it will become so much more saturated, you actually may need to maintain fewer sites than before. And, are you investing properly in educating your consumers about how to find the one authentic “your brand”?

Expand your trademark protection. Evaluate if your current trademark portfolio will provide the protection you need under the ever changing dispute resolution rules. Where might you expand your business in the future? If the expanding Internet increasingly expands your business globally, you may need more protection than you have today. If you find that you don’t have the global protection you may need for your brands to survive scrutiny under the new dispute resolution rules, begin the application process to protect your brands around the globe. The global economy is moving all businesses in this direction, so evaluate options to cost effectively protect your core brand and sub-brands around the globe.

Survey the applicant list twice. You will want to carefully survey the applicant list twice to determine not only potential infringement on your brand and object or oppose to those applications, but, you will want to identify the generics and communities in which you may want to apply during the sunrise period. When reviewing the list of applicants, it’s a good idea to also start to flag what generics or community top level domains may fit your long-term strategy.

Register with the Trademark Clearinghouse. You will also want to register your portfolio of trademarks with the Trademark Clearinghouse. While there is still some debate about the cost benefit analysis of doing so, in all likelihood, the cost to register your marks for most businesses will be such that it simply makes sense to register. This provides you one world-wide source to point to in any dispute or litigation that you have these registered trademarks and can then provide a basis for you to participate in sunrise periods and be notified of potential infringing marks.

Monitor open sites. Once top level domain sites go live in 2013, develop a monitoring process for key words, phrases or brands. There are a number of companies offering this service as a watch service which can cost effectively provide you important information not just on protecting your brand on the Internet, but also having a heads up to what competitors are doing. Also, recognize that monitoring services can also double as market research to know what your competitors are doing. All too often, only the lawyers review the search reports scanning for potential infringement. This is an important function, but you can also pass along this information to business leaders to be apprised of what could be happening with competitors, how consumers who love or hate your brand are responding and even knowing who is trying to copy you can be critical to your business strategy.

Evaluate your internal processes for brand and domain management. Can you create greater economies of scale in the way you develop strategy both offensively and defensively? Should you centralize this function into a business function that measures itself not as a cost center, but in terms of profits, losses and traditional financial models? Can you create incentives to cross over disciplines and work outside of silos to maximize your impact? To function in this new world, IT, marketing, legal and executive functions must work together. All too often, this function is often left just to IT or just to legal and it really should be a cross-functional team that evaluates the changing Internet landscape. When everything could be at stake in the future of your business, why would you leave it to just one department?

Remember that the best defense is also good offense – use this as an opportunity to evaluate your high level brand protection strategy – what are you protecting – why – how do you maximize resources? Limit the number of sub-brands without clear strategy that includes brand protection. And, always balance with public relations and perception with protection strategies. A good legal decision intended to minimize risk can often be a very wrong public relations decision or fail to maximize opportunities. Brand protection is more about brand building and if you don’t clearly know what you are building, then what are you protecting?