Disparaging Marks in the International Context

In addition to possible challenges to federal trademark registration in the United States, trademark owners should be mindful of how their marks are viewed internationally.

With the recent implementation of the new generic top-level domains (gTLDs), the Internet Corporation for Assigned Names and Numbers provided a process to challenge prospective gTLDs that could be potentially disparaging to certain groups. Under the “limited public interest objection,” third parties can file an objection to a gTLD application if the applied-for gTLD is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law. Anyone may file a limited public interest objection. However, these objections are subject to a “quick look” designed to filter out frivolous or abusive objections. An objection also may be filed as a “community objection” if there is substantial opposition to the proposed gTLD from a significant portion of the community the gTLD string is targeting. An objector on this ground must be an established institution associated with a clearly defined community.

If an objection is filed, the applicant may withdraw the gTLD application, attempt to reach a settlement with the objector, or file a response and enter into dispute resolution proceedings. If for any reason the applicant does not file a response to an objection, the objector will prevail by default. Dispute resolution proceedings for these particular objections are administered by the International Centre of Expertise of the International Chamber of Commerce. The objection filing period opened in June 2012 and will end in March 2013.