Archive for the ‘Intellectual Property’ Category


Marksmen Names Russ Pangborn CEO

Posted May 7th, 2014

Former Head of Trademarks at Microsoft Joins a World Leader in Brand Protection Services

GLENDALE, Calif., May 6, 2014 /PRNewswire-iReach/ — Marksmen, Inc., a worldwide leader in brand protection services, today named Russell Pangborn chief executive officer effective immediately.  He succeeds Ken Taylor, founder of the company who becomes a consultant to the firm.

Pangborn joins Marksmen from Microsoft where he served as Assistant General Counsel in charge of trademarks.  At Marksmen, he will guide the next stage of the firm’s growth using his intimate knowledge of the services and technology solutions trademark owners need for the protection and enforcement of their valuable intellectual property. He will continue to be a strong industry advocate as he has done in the past as Officer and Board Member of the International Trademark Association (INTA), a member of the Implementation Recommendation Team (IRT) for ICANN’s new gTLD Program, an active member of the Intellectual Property Constituency in ICANN, and co-founder of the McCarthy Institute-Microsoft annual symposium on Trademark Law and Its Challenges.

For the full skinny go HERE.

Posted in Cool Ideas, Enforcement, Events, gTLDS, ICANN, INTA, Intellectual Property by  


The .SUCKS New gTLD Stick-Up of Trademark Owners Already Begun

Posted March 13th, 2014

From Today’s General Counsel

The worst fears of those who opposed the massive expansion of available generic top level domain (gTLD) names seem to be summed up in the controversy brewing around one domain name, which hasn’t even been awarded yet: .sucks. Though three companies are currently in competition for the .sucks domain – Donuts Inc., Momentous Corporation, and Top Level Spectrum Inc. – Vox Populi Registry, backed by Momentous, has already begun collecting fees from trademark owners who would rather not see their brand name come before the derogatory domain name. If they win the domain, Vox Populi has already stated they plan to charge companies $25,000 annually to keep the .sucks site off-line.

See the full story HERE.

Posted in gTLDS, ICANN, Intellectual Property by  


New gTLDs Pass 200,000 Registrations

Posted March 6th, 2014


The number of domain names in new gTLDs passed 200,000 last night, according to zone files.

The exact number, according to the DI PRO database, is 201,184.

It’s based on incremental organic growth over the last week since the last batch of new gTLDs went into general availability, rather than any big launch events or surges.

Here are the top 10 zones, all of which belong to Donuts.

.guru 41,161
.photography 25,308
.today 12,157
.tips 11,444
.technology 9,066
.clothing 8,270
.bike 8,232
.directory 8,194
.land 7,569
.gallery 7,383

What the 200,000 count does not reflect is the first day of general availability for Google’s first-to-launch gTLD, .みんな (Japanese for “everyone”), which I’m expecting to start showing numbers tomorrow.

See the full story HERE.

Posted in gTLDS, ICANN, Intellectual Property by  


Cybersquatters Rush To Claim Brands In The New GTLD Territories

Posted March 4th, 2014


On Jan. 29, Donuts Inc. launched the first seven of what will be some 1,000 new generic top-level domains or GTLDs, rivals to the familiar .com, .com and .edu endings that now populate most of the known Internet.

Six days later, at 2:04 a.m., Venura de Zoysa of Kingston in New South Wales, Australia, used to register the domain name Adidas .clothing. The following day Erwin Strobel of nearby Wagga Wagga registered The next day in Texas, a fellow named Farris Nawas, claiming to live in Austin, registered at 5:07 a.m. A few hours later Farris Nawas, now in Houston, registered And about the same time another person with the same name and address as a wallpaper hanger  in the Houston suburb of Pasadena registered

What do these nobodies scattered around the globe have to do with the famous brand names they registered? Not much, probably.

See the full story HERE.


Posted in Cybersquatting, gTLDS, Intellectual Property by  


Trademark Protection in the Wild, Wild World of the Brand New Internet

Posted December 16th, 2013

Blocking and Tackling

If you didn’t already know, registrations for the New generic Top Level Domains (gTLDs) aren’t coming – they’re here.  Right now. As of today, 218 Registry Agreements have been signed with ICANN.

The ongoing list can be viewed HERE.

As with the gTLDs we’ve come to know (.com, .net, .org) there are Registries (the contracted parties that manage TLDs through authority delegated by ICANN) and Registrars (entities interfacing with you and others to register or maintain registrations of domains in a gTLD).

Oh, and some Registries operate their own Registrars. Got it? Good. Moving on.


Sunrise Registrations

As of tomorrow 31 of these New gTLDs will be open for Sunrise Registrations (with approximately 1370 more coming). Go HERE for the ongoing list.

As you might recall from previous gTLD launches, Sunrise Registrations allow you (trademark rights owner) a minimum 30-day head start to register your domain name in a New gTLD before registrations are available to the general public.

The caveat this round is that the term for which you’re applying (your trademark) needs to be in the Trademark Clearinghouse (TMCH), a rights protection mechanism mandated for the New gTLD launches, before you can register in the Sunrise. Haven’t done that yet? Here’s how:


Using the TMCH

The TMCH vets IP rights info and supports trademark Sunrise Registrations (required of all New gTLDs.) So once your trademark has been authenticated by the TMCH, it’s qualified to register in EVERY New gTLD Sunrise. Registration options are available for periods of 1 to 10 years.


Trademark Claims Service

Another benefit of placing your trademark in the TMCH includes the Trademark Claims service that follows the Sunrise. It is a notification service (also mandated by ICANN for all New gTLDs) to warn both domain name registrants as well as trademark holders of possible infringements.

The service theoretically works thusly:

  1. A potential domain name registrant should get a warning notice when trying to register a domain name that matches your trademark term in the TMCH.
  2. If the domain name registrant continues to register the domain name, you should receive a notification of the registration & can then take any appropriate action.

Be aware that the TMCH doesn’t prevent someone from registering your trademark as a domain name, but if your trademark is in the TMCH, it puts everyone on notice and hopefully deters registration.

The SLD Name Collision Wrinkle

SLD is the acronym for Second Level Domains or where your trademark lives now: (the left of the dot).

Last month ICANN announced publication of something called the Alternate Path to Delegation Reports and lists of SLDs to block (almost 10 million) for all eligible proposed New gTLDs.

Translation? If a Registry wants to go forward it has to mitigate occurrence of name collision and Second Level Domain Blocking is the mandated process. There are loads of private domains out there and the SLD Block is to keep you from landing someplace different than you intended.

This blocking also has an impact on any domain pre-registration that might be offered by registrars for the New gTLDs.


Don’t Hate the Player, Hate the Game

There are over 1800 applicants for the New gTLDs. Here’s some skinny on 3 of the major players and the nuances they are adding to registrations and protections for Trademark owners.


Donuts Inc. has applied for the most names (over 300 registries) for the New gTLDs and has announced some serious acronymic whip-out: DPML. This of course stands for Domains Protected Marks List and is a domain registration blocking option for trademark owners.

If you don’t want to register a domain name in any of the New gTLD registries Donuts owns (which may ultimately be 200 or more) and you don’t want anyone else to either, you can pay just shy of $3K to block the name and not deal with Sunrise Registrations and Trademark Claims Services.

Unfortunately, DPML is not a retroactive choice. By tomorrow, Donuts will have 25 New gTLD registries open for Sunrise Registrations and the earlier you pull the trigger, the better.

The DPML Fact Sheet (and other strategic insight) is available from our partners at Com Laude HERE.


Minds + Machines, the registry operator which is set to run more than twenty new gTLDs (including: .beer, .luxe, .surf, .vodka, .work and .london) has set up what they’re calling a Priority Reservation Program.

Domains are being offered on a first-come, first-served basis, with successful Priority Reservations resulting in an automatic registration once the gTLD goes live and domains are available for General Availability.

New gTLDs that can already be reserved under the Priority Reservation Program are: .best, .case, .ceo, .cooking and .horse.

The catch here is that this program will not allow you to register the domain you reserved if the domain is already registered or blocked by a trademark owner with an exact match during the Sunrise period, or if the domain is blocked or reserved by either the registry or by ICANN.

There is a reservation fee and once a domain has been reserved, it will become unavailable for registration by anyone else, through any registrar.

The Priority Reservation period for such participating TLDs will end one week before their corresponding Sunrise period.


Uniregistry, which has applied for a number of new gTLDs, including .guitars, .christmas and .blackfriday, has recently launched its .sexy TLD (cue wolf whistle).

Uniregistry offers a 60-day Sunrise, during which domains may be reserved or registered on the basis of trademarks (and certain typos of these trademarks) registered with the TMCH.

Uniregistry will also offer the possibility to block trademarks in each TLD on a cost-recovery basis, with a “once and for all” combined multi-TLD Sunrise Registration application process. Basically, a single Sunrise application can be designated to cover all future TLDs which are managed by Uniregistry.


What to Do?

Right Now

It’s probably a good time to decide whether or not you’re going to take advantage of the TMCH. If yes, you’ll need to determine the Sunrise Registrations in which you’d like to participate. You can sidestep some of this process by researching the major players in the space (or have US do that for you) to see what short cuts and cost saving measures are available for the new names under their control.

Our partner, Com Laude is an ICANN Approved Registrar and TMCH Agent. They can assist with New gTLD registrations (the right side of the dot), Sunrise Registration and the TMCH. Tell them we sent you.

Down the Road

Marksmen is standing by as always to assist with issues at the second level — the left side of the dot–, either by investigating registrants who have registered your trademark outside of protections you may set up or negotiating to recover them.

We can also negotiate to buy other domain names for which you may not have trademark registrations. Of course, investigations are always done discreetly and all negotiations are executed without disclosing who you are to get you fair market value.  You can reach us HERE.

Posted in Domain Names, gTLDS, ICANN, Intellectual Property, Registrars, Registries by  


News from ICANN’s Trademark Clearing House Meetings

Posted November 27th, 2012

From ICANN Blog

To wrap up the series of meetings ICANN convened with stakeholders to find common ground on Trademark Clearinghouse implementation, we conducted a follow-up briefing today for the group who worked on these issues during our meetings in Brussels and Los Angeles.

We discussed two items:

  1. An update on the Trademark Clearinghouse contract, and
  2. A way forward on the strawman solution developed during the meeting in Los Angeles.


ICANN has continued to negotiate the agreements for database services with IBM and for validation services with Deloitte to include additional terms that will provide ICANN with maximum operational flexibility and guaranteed stewardship of the trademark database.

Here is an overview:

  1. ICANN retains all intellectual property rights in the Trademark Clearinghouse data.
  2. Deloitte’s validation services are to be non-exclusive. ICANN may add additional validators after a threshold of minimum stability is met.
  3. Trademark submission fees are capped at USD 150 per record. Discounts are available for bulk & multi-year submissions.
  4. IBM will charge Deloitte for database access via an application processing interface (API), and will charge registries and registrars for real-time access to the database during the sunrise and claims periods.
  5. ICANN may audit Deloitte’s performance (and revenues/costs) to confirm that the costs and fees for validation services are reasonable.


We are moving to sign agreements as soon as possible and the agreements will be posted once signed.

For the full skinny go HERE.

Posted in gTLDS, ICANN, Intellectual Property, Trademark Clearing House by  


Report: No Deal After Samsung, Apple Patent Talks

Posted May 24th, 2012

From PC Mag


Not surprisingly, settlement talks between Apple and Samsung over their patent dispute have reportedly not resulted in any agreement.

Instead, both sides are back in court arguing over proposed sanctions.

According to a report from The Korea Times, Apple’s Tim Cook and Samsung’s Choi Gee-Sung failed to agree on a settlement that would have ended the companies’ year-long patent fight.

According to court documents, the executives and their legal teams met in a San Francisco courtroom for nine hours on Monday and seven hours on Tuesday. Samsung and Apple have not yet filed documents about what was discussed.

See the full skinny HERE.

Posted in Intellectual Property by  


The Pirate Bay Must Be Blocked by UK ISPs, Court Rules

Posted May 1st, 2012

From BBC News

File-sharing site The Pirate Bay must be blocked by UK internet service providers, the High Court has ruled.

The Swedish website hosts links to download mostly pirated free music and video. Sky, Everything Everywhere, TalkTalk, O2 and Virgin Media must all prevent their users from accessing the site.

“Sites like The Pirate Bay destroy jobs in the UK and undermine investment in new British artists,” the British Phonographic Industry (BPI) said.

A sixth ISP, BT, requested “a few more weeks” to consider their position on blocking the site.

BPI’s chief executive Geoff Taylor said: “The High Court has confirmed that The Pirate Bay infringes copyright on a massive scale.

“Its operators line their pockets by commercially exploiting music and other creative works without paying a penny to the people who created them.

“This is wrong – musicians, sound engineers and video editors deserve to be paid for their work just like everyone else.”

See the full skinny HERE.

Posted in Compliance, cybercrime, Enforcement, Intellectual Property by  


US judge sends Apple, Samsung to settlement talks

Posted April 18th, 2012


(Reuters) – Apple Inc and Samsung Electronics Co Ltd agreed that their chief executives would participate in settlement talks to try to resolve a patent lawsuit over smartphone and tablet technology, according to a court filing.

Apple sued Samsung in the United States last year, saying the South Korean company’s Galaxy line of mobile phones and tablets “slavishly” copies the iPhone and iPad. Samsung then countersued Apple.

In a court filing late on Monday, both companies agreed to the settlement conference. U.S. District Judge Lucy Koh on Tuesday then referred the companies to a San Francisco-based magistrate judge who will lead the talks.

Representatives for Apple and Samsung could not immediately be reached on Tuesday.

For the full skinny go HERE.

Posted in Gadgets, Intellectual Property by  


Patents, Copyrights Boost Economy With Jobs, Report Finds

Posted April 13th, 2012

From Bloomberg

More than a quarter of all jobs in the U.S. are with companies that rely on patents, copyrights and trademarks to protect products from competition and promote investment, the Commerce Department said.

About 27.1 million jobs in 2010 were in industries that rely heavily on intellectual property protections, and another 12.9 million positions were indirectly affected. The 75 industries deemed “IP-intensive” accounted for $5.06 trillion, or about 35 percent of the gross domestic product in 2010, according to a study released today by the Economics and Statistics Administration and U.S. Patent and Trademark Office.

For the full skinny go HERE.

Posted in Intellectual Property by