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, a day of activities literally and figuratively stuffed with marshmallows. In honor of the 10th annual Fluff Festival, which takes place… More
Category Archives: Domain Names
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, and even the occasional breaking and entering. Indeed, it appears that Ms. Rowling and her works pop up in court more than any author since… 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. Did the Senator settle one day too early?
Hershey v. Hershey
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.
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. Unlike those… 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. Also as with .xxx, brand owners have some opportunities to defensively register .adult… 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. It’s a social messaging mobile app that allows users to send photos and videos — “Snaps” — to groups of friends, which can be viewed on… 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, The Dark Knight Rises, Catwoman seeks out an elusive (entirely fictional) hacking software, also called “Clean Slate,” in order to delete her criminal record from every database… 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, in which two teams, chosen by polls and computer algorithms, played for the title). The championship game on… 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, Lord MacNaghten famously quipped: “Thirsty folk want beer, not explanations.” Well, with our guide, you can provide both beer and explanations. … 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, and didn’t get around to registering an internet domain name until after sites such as voiceofamerica.com… 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.
The plaintiff, Choose Energy, Inc., operates an online energy marketplace at chooseenergy.com, through which individuals and businesses in several states can shop for an energy supplier. Shortly before October 10, 2014, Choose Energy discovered that the website chooseenergy.org had been acquired by the American Petroleum Institute (“API”). API began using the… More
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, regardless of income. In… 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. Last month, the Court ruled that American Bullion had indeed stated valid claims for, among other things, false advertising… 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, technical savvy, and a comprehensive plan to safely operate the gTLD registry for at least the length of the initial ten-year contract term.
If an application passes muster, there are… 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), including .canon, .fiat, .youtube, and .pfizer. Each applicant paid several hundred thousand dollars per application (including ICANN’s $185,000 application fee!) and, if awarded the… 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. 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.
These newly-delegated gTLDs include .guru, .clothing, .ventures, .bike, .camera, .equipment, and .gallery, and others are expected to be delegated weekly… 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, the new gTLDs are coming, and maybe as early as this fall. With the first delegations in sight, this is… 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. On the bright side, this means that I, for instance, can finally register such highly desirable domain names as joshjarvisisagreat.lawyer or joshjarvisisreally.cool. Unfortunately, it also means that… 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, he alleges, are using the domain names in bad faith, for commercial gain, by trading on the value of his famous… 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, with a few geographic terms thrown in for good measure. As expected, heavy-hitters like Google, Amazon, Microsoft, Yahoo!, and Apple (but surprisingly not Facebook or Twitter!) are on board with varying… 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.
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 — the date the application window was scheduled to close — that process has been temporarily interrupted. According to ICANN’s TAS… 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. Application/Registration process. Who should be involved in the decision? Trademark challenges in enforcement, infringement and counterfeiting. Registering brands as second level domain names in the new gTLDs? Watch notices…. More
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, at least for the foreseeable future. While ICANN plans a second (and probably a third, and a fourth…) round of gTLD applications, the timing and the details are still very much… 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), and Kurt Pritz, SVP at ICANN. Joining them were Joshua Bourne, President of The Coalition Against Domain Name Abuse (CADNA), Thomas Embrescia, CEO of Employ Media (operator of the .jobs TLD), and Anjali… 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 of Silverberg, Goldman & Bikoff, LLP, and is reprinted with permission.
As you know, yesterday the U.S. Senate Committee on Commerce, Science and Transportation held a hearing to "examine the merits and implications of [the new gTLD] program and… 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, an overview of the New gTLD Program and the application process and timeline, and a review of what companies should be doing to traverse the rocky terrain of potential opportunities and significant risks.
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, which was certainly exciting but which ultimately led to little. Now that the gTLD train is barreling forward, more excitement should be in… 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, according to Wikipedia) are decidedly not aroused amused by ICM Registry and its .xxx starlet. The two companies filed suit last week against… 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, including Coca-Cola, Ford, and GE, is “committed to aggressively fighting ICANN’s proposed program, citing its deeply flawed justification, excessive cost and harm to brand owners, likelihood of predatory cyber harm to consumers and failure to… 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. You might also register domain names in the .biz registry, and in the .info, and .us registries. The Columbian registry (.co) is also making a big push to be an alternate… 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, and provides a bevy of information related to the new gTLD program, including:
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, as follows:
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, and will allow organizations to own their own top-level domain names (e.g., .foleyhoag or .lawyers) and operate their own Internet registries.
New gTLDs will not be introduced right away. First, ICANN… 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, ICM Registry has opened a "pre-reservation period" for interested members of adult entertainment industry, and for trademark owners in other industries.
As with ICANN’s planned introduction of numerous generic top-level domains (gTLDs) starting… 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, has expressed concern over ICANN’s gTLD program, and specifically possible "music themed" gTLDs. In a January 5, 2011 letter… 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). As expected, the DAG4 adds detailed provisions for the trademark clearinghouse — a comprehensive database of trademarks and owners that is intended to aid in rights protection — as well as… 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, .co will be the new .com. Of course, whether the .co domain will catch on remains to be seen, but trademark owners should be aware of some preliminary steps they… 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 — for instance, .lawyers, .film, or .baseball. Presumably, a majority of these new registries will be open to the public for registration… More