Two years ago, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.… More
Category Archives: Domain Names
Just in time for the holiday season, we present our third annual Trademark Year in Wine and Beer, a wrap-up of alcohol-related trademark and trademark-ish disputes dating back to December 2015, when we published our last edition. Our scope includes lawsuits brought in U.S. Courts, actions before the Trademark Trial and Appeal Board (“TTAB”), arbitrations pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”),… More
Trademarks, the core legal protection for the names of companies and their products and services, are powerful and potentially timeless intellectual property rights, but are also frequently misunderstood by attorneys and laypersons alike. In-house attorneys in particular are likely to encounter trademark issues on a day-to-day basis,… More
This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More
Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week. Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City. The economic impact of this biannual event is estimated to be close to $900 million.… More
Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I’m supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year’s gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.… More
Trademark and Copyright Law Blog Welcomes Natasha Reed as Author and Counsel in Foley Hoag’s New York Practice
We are delighted to welcome Natasha Reed as counsel in Foley Hoag’s Intellectual Property Department and — more importantly for present purposes — as our newest blogger. She’ll join Peter Sullivan in our New York City Office and on the author column of the blog.
Natasha has helped owners of some of the world’s most recognized brands in the luxury goods,… More
It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation, Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get the Trademark and Copyright Law Blog into the holiday spirit,… More
Just in time for the holiday season, we present our second annual Trademark Year in Wine and Beer. Whether you are planning a holiday party or just having some friends over, you are probably in the market for some liquid holiday cheer. Sure, you could make your beverage purchases based only on taste or price, but instead why not mix it up this year and pick a drink that was the subject of a recent notable trademark dispute?… More
Just as it is important for start-up companies to be mindful of early-stage trademark and copyright protection strategies (see our guides entitled “Trademark Strategies for Start-Up Companies” and “Copyright Strategies for Start-Up Companies”), savvy start-up founders will be thinking about domain name acquisition and related issues right at the beginning.
These days, it is essential for a start-up company to have at least a basic web presence,… More
Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival,… More
On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression,… More
Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of “goods or services.” On May 18, 2015, State Senator Steve Hershey gave up his right to appeal to the Fourth Circuit from the District of Maryland’s decision that he was infringing the Hershey Chocolate trade dress. On May 19, 2015, however, the Fourth Circuit overturned the case on which the District of Maryland had been relying.… More
I’m back from the International Trademark Association (INTA) Annual Meeting in beautiful (if a bit cloudy and windy) San Diego, which featured the usual array of client meetings, networking with counsel from around the world, and seeing the sights. The convention center area, the USS Midway, and the street of the Gas Lamp Quarter were temporarily overrun with the nearly 10,000 trademark (with a smattering of patent) professionals proudly displaying their INTA badges and ribbons.… More
Hot on the trails of .porn and .adult, a new gTLD enters the fray next week — one that’s already giving PR departments heartburn. The .sucks domain launches for sunrise registrations on March 30, 2015, and with it yet another potentially costly headache for brand owners.
What Is .Sucks?
The .sucks gTLD is similar to .xxx, .porn, and .adult, in that companies are rightfully concerned that their names and trademarks may be associated with domains and websites that could harm those brands or otherwise generate ill will. … More
Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment. As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name space. … More
By now you’ve probably heard of Snapchat. But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids. … More
Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the computer to its original configuration, i.e., giving it a clean slate. Fortres’ complaint against Batman is that, in the weakest installment (IMHO) of Christopher Nolan’s otherwise-awesome Batman trilogy,… More
College Football Crowns an Undisputed Champion; But Rights to the Trademark COLLEGE FOOTBALL PLAYOFF Remain In Dispute
This has been an exciting week in Buckeye Nation – The Ohio State University’s football team won the first-ever college football national championship determined by a playoff system, defeating the Oregon Ducks 42 to 20. It has also been an exciting week for College Football Playoff (CFP), the company responsible for managing the new playoff system, in which a committee selects four teams for a two-round playoff (in contrast to the previous system,… More
If you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case,… More
Federal Government Wins Trademark Battle to Shut Down “Voice of America” Website with “Undeniable Governmental Aesthetic”
Since its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005,… More
On October 28, 2014, Judge Paul Grewal of the Northern District of California ruled that a political advocacy website’s confusing use of the mark CHOOSE ENERGY could stay up . . . but perhaps only until election day.
October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is open to all persons,… More
How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss
Despite celebrity endorsements from the likes of Dennis Miller and Alan Thicke, all that glitters isn’t gold when it comes to the marketing of precious metal investments. In March 2014, American Bullion, Inc., which is in the business of encouraging individuals to convert their retirement savings to gold and silver, brought suit against its competitor, Regal Assets, LLC, in the Central District of California, alleging a host of unsavory internet marketing practices. … More
Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart. Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that’s only the first stage in the process. Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal,… More
Most of our readers are now familiar with ICANN’s new generic top-level domain (gTLD) program, which saw over 1,900 applications from various entities seeking to operate new top-level domain name registries. Most of these applications were for true gTLDs such as .web, .law, .book, and .family. But about a third of the applications, referred to as “.Brand TLDs,” consisted of trademarks (many famous and well-known marks),… More
ICANN’s new generic top-level domain name (gTLD) program has introduced opportunities and risks for companies, and probably not in equal measure. Several weeks ago, we posted some guidance regarding steps all brand owners should be taking to secure their valuable trademarks in connection with the launches of the new top-level domain names. Joshua Jarvis, a member of Foley Hoag’s Trademark,… More
The time is upon us. After years of anticipation, lobbying for delays and more robust trademark protections, and otherwise steeling themselves against the oncoming tide of new, generic top-level domain names (gTLDs), brand owners are faced with the reality of ICANN’s far-reaching program: the first new gTLDs have been “delegated” — received final approval from ICANN for use and availability in the domain name system.… More
New generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner. ICANN recently published a “hypothetical” timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013. Whether this date is ICANN’s wishful thinking or not,… More
As we have discussed at length, over the next couple of years several hundred new generic top-level domain names (gTLDs) such as .family, .home, and .toys are expected to be introduced into the domain name system. The majority of these domains will be “open” in nature, meaning they will be open to the public for registration of second-level domains. … More
Former U.S. Congressman and presidential candidate Ron Paul, polarizing political figure and active member of the Libertarian Party, is no stranger to conflict, or taking full advantage of intellectual property rights to solve his problems. So it comes as no surprise that he has turned to the Uniform Domain Name Dispute Resolution Policy (UDRP) to wrest the domain names ronpaul.com and ronpaul.org from those who,… More
As we discussed last week, today is ICANN’s “Reveal Day,” and all of the new top-level domains and their applicants are available for the public to review. All businesses should review this list to determine whether any of the proposed strings presents risks or opportunities.
The applied-for strings appear to be a pretty even mix between .brands and .generics,… More
After years of preparation and a decidedly rocky start to ICANN’s New gTLD Program due to a glitch in the gTLD application system, the applications are in, and ICANN will soon begin evaluating the TLD candidates. First, though, comes the fun part: June 13, 2012 is the new “Reveal Day,” when all of the gTLD applications and applicants will be posted by ICANN for the world to see.… More
As part our continuing coverage of ICANN’s New gTLD Program, we had planned a post regarding the close of the gTLD application window and the imminent unveiling of the new top-level domain applicants and their respective applications on April 30 — colloquially known as “Reveal Day.” However, due to an unfortunate glitch in ICANN’s TLD Application System that reared its ugly head on April 12 —… More
We have covered ICANN’s New gTLD Program at great length on this blog. If you’d like to discuss the new gTLDs and the myriad issues presented by their introduction face-to-face, Foley Hoag is hosting a roundtable luncheon, presented by the International Trademark Association (INTA), on April 4, 2012 from 12:00PM to 2:00PM at our Boston office.
Topics to be discussed include:
- Current gTLDs and anticipated changes.…
A subject of regular discussion here at the Trademark and Copyright Law Blog, the application window for ICANN’s New gTLD Program opens today, over continued vigorous opposition from brand owners and the U.S. Congress. The application window, which runs from today through April 12, 2012, is the only time in which interested parties can apply to operate a new .brand or .generic top-level domain registry,… More
After the Senate Committee on Commerce, Science and Transportation hearing on ICANN’s new gTLD Program on December 8, the House Energy and Commerce Committee’s Subcommittee on Communications and Technology held a similar hearing this morning. Returning witnesses were Dan Jaffe, Executive Vice President of the Association of National Advertisers (ANA), Fiona Alexander, Associate Administrator of the U.S. National Telecommunications and Information Administration (NTIA),… More
As we discussed, last week the Senate Committee on Commerce, Science, and Transportation held a full committee hearing on ICANN’s domain name expansion, perhaps in part to address CRIDO’s recent actions to stall the gTLD program. The following summary of the hearing was prepared for the American Bar Association by James L. Bikoff, David Heasley, and Philip Marano … More
On Monday, December 12 at 12:30 p.m. EST, the Northeast Chapter of the Association of Corporate Counsel presents The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program. J. Scott Evans, Senior Legal Director, Global Brand & Trademarks, YAHOO! Inc. will join me to explore ICANN’s upcoming introduction of new top-level domain names, including a discussion of domain name basics,… More
For those of you following, breath bated, developments regarding ICANN’s New gTLD Program, the U.S. Senate Committee on Commerce, Science, and Transportation is holding a full committee hearing on the domain name expansion on December 8 at 10:00 AM ET in 253 Russell Senate Office Building, and also via webcast. Witnesses have not yet been announced. A similar hearing was conducted earlier this year by the House Committee on the Judiciary,… More
The .xxx domain name registry was approved by ICANN and is now taking applications via your friendly neighborhood domain name registrar, so you would be forgiven for thinking that opponents of the .xxx domain are ready to move on and deal with the new regime.
To the contrary, pornography giants Manwin Licensing International (operator of YouPorn, Pornhub, xTube, and the various Playboy websites) and Digital Playground (one of the five biggest pornography studios,… More
With the ICANN New gTLD Program train out of the station and running full speed ahead, there has been little hope among trademark owners of a further delay. The newly minted Coalition for Responsible Internet Domain Oversight (CRIDO) aims to change that. CRIDO, comprised of the Association of National Advertisers (ANA) and 87 major national and international business associations and companies,… More
Back in May, we wrote about MAFIAA Fire, a browser plug-in created by anonymous coders to counteract the government’s efforts to shut down copyright-infringing web sites by seizing the domain names.
My partner Dave Broadwin, a business attorney and the head of my firm’s Emerging Enterprise Center, recently blogged about registering variations of one’s domain name as a strategy to prevent cybersquatting and trademark conflicts on the internet. He recommended that companies consider taking the following steps:
1. Register with the most popular top-level domains. Obviously, .com domains are the most popular by far, followed by .net and .org.… More
Now that ICANN’s new gTLD program is moving full steam ahead, ICANN has launched a new informational website as part of its global awareness campaign to promote the potential benefits of new gTLDs (the potential harm caused by the gTLDs is left to us commentators). The new website is intended to serve as a one-stop shop for potential and eventual gTLD applicants and other interested parties,… More
In May, we reported that brand owners would have the opportunity to "block" domain names in the .xxx top-level domain registry that correspond to valuable brands. This opt-out opportunity will be available beginning September 7, 2011 during the "Sunrise B" phase of the .xxx rollout, and trademark owners concerned about their marks used in connection with .xxx domain names should consider participating.
The .XXX Launch
The .xxx launch consists of several phases,… More
After many years and despite ongoing criticism and concerns from governments and intellectual property interests, the ICANN Board voted yesterday to approve the launch of the new gTLD program, discussed earlier on this blog here and here. The vote paves the way for a dramatic increase in the number of top-level domain names, by hundreds in the near term and likely thousands over the next decade,… More
After a lengthy and contentious approval process, the Internet Corporation for Assigned Names and Numbers (ICANN) recently entered into an agreement with ICM Registry to delegate the new .xxx top-level domain (TLD). The .xxx domain, intended to serve as an Internet "red light district" (despite being strongly opposed by many in the adult entertainment community itself), will likely go live later this year. In the meantime,… More
While brand owners have taken issue with the vast trademark implications of ICANN’s proposed (and at this point, likely) expansion of the domain name space to add countless new generic top-level domains (gTLDs) to the Internet, one organization has raised the specter of increased copyright infringement pursuant to domain name expansion.
The Recording Industry Association of America (RIAA), the trade organization representing the music labels and artists well known for its aggressive tactics designed to counter music piracy,… More
The new generic top-level domain names (gTLDs) are closer than ever. As previously discussed, ICANN’s Draft Applicant Guidebook Version 4 (DAG4) has been released. The guidebook, a comprehensive manual for potential gTLD applicants, explains the gTLD application process from filing to delegation (activation of the new domain), and outlines the various rights-protection mechanisms (RPMs) required to be implemented by registries for brand owners (initially discussed here).… More
Colombia is known for its chief exports of coffee, petroleum and coal. It may also soon be known for its country code top-level domain name (ccTLD), .co. In many people’s minds, the abbreviation "co." stands for "company," "corporation," or "commercial," and the .co registry, .CO Internet SAS, is heavily marketing this domain as a legitimate alternative to .com domains for businesses and individuals. If .CO Internet has its way,… More
For some time now, the Internet Corporation for Assigned Names and Numbers (ICANN) — the governing body of many of the inner workings of the Internet — has planned to expand the domain name space. Currently, domain names are limited to 27 generic top-level domains (gTLDs) — including the popular .com, .net., and .org — and a number of country code top-level domains (ccTLDs). ICANN’s proposed expansion would allow for the introduction of unlimited new gTLD registries —… More