Category Archives: Domain Names

Watch: Trademarks for the Generalist In-House Counsel

On July 26, Julia Huston, Josh Jarvis and Nicole Kinsley presented a webinar covering the essentials of what every generalist in‑house legal practitioner should know about trademarks.

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

Sue-per Bowl Shuffle II: The Year in NFL-Related Intellectual Property Litigation

SBS

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

The Twelve Res of Christmas: Yule-Themed IP Matters in 2015

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

A Trademark Year in Wine and Beer 2015: Our Holiday Buyer’s Guide to Disputed Beverages

Intro RedJust 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

Domain Name Strategies for Start-Up Companies

CaptureJust 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

Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff

FluffJust 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

Harry Potter Lawsuits And Where To Find Them

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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

Political Speech, Trademarks And The Definition of “Goods or Services”

3Last 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

INTA.sucks: Brand Prophylaxis or Trademark “Protection” Racket?

CaptureI’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

The Next New gTLD Just .Sucks for Brand Owners

.sucks

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

.PORN and .ADULT Join .XXX to Form Unsexy Threesome for Brand Owners

Porn

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

Holy Overreach, Batman! Fictional Software Trademark Row Rejected by Supreme Court

BatmanWhen Fortres Grand Corporation saw sales of its software program drop, it blamed – wait for it – Batman.

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

asdfThis 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

A Trademark Year in Wine and Beer: Our 2014 Holiday Buyer’s Guide to Disputed Beverages

DrinkersIf 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”

CaptureSince 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

Political Ad’s Use of Trademark until Election Day Not Infringement

CaptureOn 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.… More

Opportunities for Trademark and Copyright Lawyers To Volunteer During Pro Bono Month

CaptureOctober 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

1Despite 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

Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

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

Is .XYZ The Next .COM? You Might Be Surprised.

ICANNMost 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

Protect Your Brands in the New Domain Name Regime: The Trademark Clearinghouse Is Open for Business

ICANN

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

Ron Paul Seeks To Liberate RonPaul.com….From the Hands of Ron Paul Supporters?

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

Foley Hoag to Host Upcoming INTA Roundtable: gTLDs: Status, Process and How is It Working?

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.…
  • More

New gTLD Hearing, Round 2: A Critical House, But to What End?

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

The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program

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

Upcoming Events: Senate Hearing on the gTLD Expansion

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

From the .XXX Files: Porn Industry Giants Sue Over New Domain Name Registry

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

MAFIAA Fire Potentially Meets Its Match

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.

Can You Ever Have Too Many 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

Update: .XXXempt Your Valuable Brands Starting September 7

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

The Real Web 2.0? ICANN Approves New gTLD Rollout

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

Trademark Owners: Consider Pre-Reserving Your .XXX Domains Now!

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

RIAA Not Keen On Hearing The .MUSIC

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

gTLD Update: New Draft Applicant Guidebook Released and Open for Public Comment

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

.CO Domain Names Are Coming — Should You Care?

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

New gTLDs Still On Track Despite Trademark Concerns

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