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 Trademark Issues and Domain Name Disputes

Trademarks help consumers distinguish providers of products and services from each other and thereby serve a critical source identification role. The goodwill represented in a company's trademarks is often one of the company's most valuable business assets.

However, in numerous countries, legal and procedural obstacles exist to securing and enforcing trademark rights. For example, many countries need to establish or improve transparency and consistency in their administrative trademark registration procedures. For example, the lack of opposition procedures or effective implementation of such procedures in countries such as Mexico and Russia, deprives legitimate brand owners of a key tool to challenge bad-faith registrations.

Of additional concern is a report that significant punitive damages were imposed on the owner of a trademark registered in Panama in connection with that owner's efforts to oppose the registration and use of a second mark which has been found to be confusing similar in other markets. While the decision in this dispute is not necessarily representative of a systemic concern in Panama, the damage award may discourage other legitimate trademark owners from entering the market out of concern that defending their marks will result in punitive action.

Mandatory requirements to record trademark licenses are another concern, as they frequently impose unnecessary burdens, both administrative and financial, on trademark owners and create difficulty in the enforcement and maintenance of trademark rights. The absence of adequate means for searching for trademark applications and registrations, such as by electronic information systems like online databases, makes obtaining trademark protection more complicated and unpredictable. The ability to research proposed new trademarks and determine whether there are any conflicting trademarks filed or registered in other countries is critical for launching products in foreign markets.

Also, in a number of countries, governments often do not provide the full range of internationally-recognized trademark protections. For example, dozens of countries do not offer a certification mark system for use by foreign or domestic industries. The lack of a certification mark system can make it more difficult to secure protection for products with a quality or characteristic that consumers associate with the product's geographic origin. Robust protection for well-known marks is also important for many U.S. producers and traders who have built up the reputation of their brands.

Another area of concern for trademark holders is the lack of protection of their trademarks against unauthorized uses under country code top level domain names (ccTLDs). U.S. rights holders face significant trademark infringement and loss of valuable Internet traffic because of 16