Archive for the ‘Intellectual Property’ Category


Application Status and New Timeline For ICANN’s Top Level Domain Roll-Out

Posted March 13th, 2012

From Michael Graham and our friends at Marshall, Gerstein & Borun LLP

Since January 12, 2012, ICANN, the Internet Corporation for Assigned Names and Numbers has been accepting applications to establish new top level domain name registries (the word to the right of the dot). As of the 10th of March, 254 applicants have registered their intent to apply for new generic top level domains (“NgTLDs”) with ICANN through the TLD Application System (TAS). No count of the number of completed applications will be available until after the process closes on April 12, 2012, and up to 50 new gTLD’s may be applied for by each registered applicant. So, the actual number of new gTLDs for which application will be made is still unknown.

Based on these numbers, and the fact that few companies have announced plans to register .BRAND gTLDs, it appears that most companies have decided not to participate in this first round of applications. Many have expressly stated that the cost and complexity of the application process, the need to form long-term service provider relationships, and the uncertain benefits from registration have led them to delay registration.

However, all trademark owners doing business or engaging in marketing or communications over the internet should be aware of some important dates in the process:

*   March 29, 2012 – The final day on which applicants can register using the TAS to apply for a new gTLD.

*   April 12, 2012 – The final day on which completed applications can be filed with ICANN. After this date, ICANN will begin the application review process.

*   May 1, 2012 – REVEAL DAY – ICANN will publish a list of all the TLD strings for which applications have been filed. This date will also trigger two processes:
*   Application Comment Process – Between May 1 and June 30, any interested party may submit comments regarding any of the proposed gTLD’s for consideration by the application evaluation panels.
*   Objection Period – Beginning May 1, and for approximately 7 months, formal objections to any of the new gTLD applications based on string confusion, legal objections, community concerns, or limited public interest bases may be filed.
*   June 12, 2012 – Initial evaluation of gTLD applications will commence, focusing on possible string confusion, similarity with reserved strings, geographic name ineligibility, or potential instability the gTLD or applicant’s use could cause to the domain name system, as well as applicants’ demonstration of acceptable technical, operational and financial capabilities to run a registry.

*   October 2012 – ICANN expects to announce the organization(s) operating the Trademark Clearinghouse and publish their procedures, rules and regulations.

*   November 12, 2012 – Initial evaluation period ends and results posted.

*   November 29, 2012 – Last day for applicants or evaluators to request extended evaluation to consider additional information regarding application, string, and applicant.

*   January 2013 – ICANN expects (1) the first NgTLDs to begin operation, and (2) trademark owners to begin recording trademarks with the Trademark Clearinghouse.

During the application process, all trademark owners, whether or not seeking a gTLD, should re-evaluate and update their policies and plans for utilizing and protecting their trademarks, trade names, service marks, proprietary information and content on the internet. The ICANN program for new gTLD’s sets in motion a number of opportunities and challenges for all brand owners, and companies should prepare now by developing policies and mechanisms for monitoring and enforcement action in readiness for May 1, when the comment and objection period begins. The potential cost of not preparing for the “New Internet” could be far greater than the cost of an application – because brand equity may be at stake.


Posted in gTLDS, ICANN, Intellectual Property by  


Apple tactics in China iPad deal unusual: experts

Posted February 27th, 2012

From Reuters

Proview Electronics, the firm trying to stop Apple Inc from using the iPad name in China, has a plausible claim over the unusual methods Apple used to conceal its identity when attempting to acquire Proview’s trademarks, according to several legal experts.

But Apple also has some strong defenses against a lawsuit Proview filed last week in California – including the argument that Proview cannot sue Apple, but can only sue the corporation that actually bought the trademarks, the experts said.

For the full skinny go HERE.

Posted in Intellectual Property, Tech News, trademark issues by  


Federal Court Holds In Favor Of Godaddy in Alleged Cybersquatting Case

Posted January 11th, 2012

In a case brought under the Lanham Act, alleging cybersquatting, contributory cybersquatting, as well as claims of unfair competition, Plaintiff Petroliam Nasional Behad (“Petronas”) asserted that and (registered by Go Daddy) were used by one or more non-parties to violate its trademark rights by cybersquatting.

See the full story HERE, HERE & HERE.

Posted in Cybersquatting, Enforcement, Intellectual Property, trademark issues by  


Universities buy .xxx domains

Posted January 4th, 2012


In a preemptive strike against a potential disaster, universities across the country are buying .xxx domains that might hurt their reputation.

University of Kansas is securing and before the porn industry can buy the site and cash in on the college’s name. Those aren’t the only URLs that were purchased. Spending a total of $3,000, the university also snatched up, and, among others.

“Down the road there’s no way we can predict what some unscrupulous entrepreneur might come up with,” said Paul Vander Tuig, trademark licensing director at the Lawrence, Kan., school.

Indiana University coughed up $2,200 to buy sites like University of Missouri, Washington University, Purdue University and Ball State University have also purchased domains.

Corporations had a chance to grab web addresses months ago. Brands like Target, Nike and Pepsi have all paid to protect their brands.

For the full story go HERE.

Posted in Domain Names, gTLDS, Intellectual Property by  


“Feds to Blacklist Piracy Sites Under House Proposal”

Posted October 27th, 2011

As posted to “A bipartisan group of House members introduced legislation Wednesday that would boost the government’s authority to disrupt and shutter websites that hawk or host trademark- and copyright-infringing products, including allowing the government to order sites removed from search engines.

Much of the package is similar to a stalled Senate measure known as the Protect IP Act. Both proposals amount to the holy grail of intellectual-property enforcement that the recording industry, movie studios and their union and guild workforces have been clamoring for since the George W. Bush administration.”

Click HERE to read the full article.

Posted in Intellectual Property by  


“Trademarks Are Most Sought After Form of Intellectual Property”

Posted September 27th, 2011

As published to “Trademark protection is the most requested form of intellectual property globally, with more than 3 million applications filed annually since 2005, according to a report by the World Intellectual Property Organization (WIPO).”

Click HERE to read more.

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Posted in Intellectual Property by  


Masks Worn by Anonymous Protestors Are The Intellectual Property of Time Warner

Posted August 31st, 2011

This week in irony, reports: “Anonymous, the hacker group, has jostled with the Iranian government and the Church of Scientology and has briefly shut down the Web sites of Visa, MasterCard and other global corporations.

When members appear in public to protest censorship and what they view as corruption, they don a plastic mask of Guy Fawkes, the 17th-century Englishman who tried to blow up the Houses of Parliament.

Stark white, with blushed pink cheeks, a wide grin and a thin black mustache and goatee, the mask resonates with the hackers because it was worn by a rogue anarchist challenging an authoritarian government in “V for Vendetta,” the movie produced in 2006 by Warner Brothers.

What few people seem to know, though, is that Time Warner, one of the largest media companies in the world and parent of Warner Brothers, owns the rights to the image and is paid a licensing fee with the sale of each mask.”

Click HERE to read the full story.

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Posted in cybercrime, Intellectual Property by Dispute Is Not So Funny

Posted July 18th, 2011

As reported by “A company claiming to own the intellectual property rights to the late comedian Chris Farley’s likeness has bombed in an effort to get the domain name

Make Him Smile, Inc., claims that Chris Farley’s family granted it intellectual property rights to Chris Farley’s name upon his death. It filed a complaint with Nation Arbitration Forum to get the corresponding domain name.”

Click HERE to read the full article.

Posted in Intellectual Property by  


It’s Really Not So Bad – Advice For Brand Owners In light of The Approval of New gTLDs

Posted July 12th, 2011

Following years of frustrated efforts on all sides, the new gTLD program has finally been approved with an application period scheduled to open January 12, 2012. During this time, anyone who meets the financial and technical criteria with the desire to apply for a new top-level domain may do so.

Many brand owners and trademark holders who are interested in and who were already aware that new gTLDs are coming have begun preparations to either apply for one or to defend their brand/ mark in this new domain eco-system. Those already involved have begun to build their teams to staff this new venture springing ahead on years of momentum.

While the process has been fraught with disagreements, in fighting, distrust, disappointment and a serious testing of patience, ultimately the reward will be significant.

You’ve been hearing for years all the ways in which New gTLDs will be bad for you, your business and the Internet, the following are the ways in which they will be a positive step forward as well as some tips on how to navigate the new climate.


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Posted in gTLDS, Intellectual Property by  


“Olympics Committee Issues Social Media Guidelines For London 2012, Including Domains”

Posted June 28th, 2011

As reported by David Goldstein: “There are not many organisations in the world that are as vociferous in their control of their trademarks as the International Olympic Committee. With the London Olympics scheduled for 2012, the IOC has issued social media guidelines for participants and other accredited persons.

The guidelines also refer to domain names that include “the word ‘Olympic’ or ‘Olympics’ or any similar words related thereto (or any foreign language equivalents thereof) are not allowed unless approved by the IOC beforehand.”

The IOC gives the example of[myname] which would not be permitted while [myname].com/olympic would be allowed, but only during the period of the Olympic Games during which these Guidelines are applicable. The guidelines also note that “participants and other accredited persons may not create stand-alone Olympic-themed websites, application or any other feature to host coverage of the Olympic Games.”

Click HERE to read more.

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Posted in Enforcement, Events, Intellectual Property by