Archive for the ‘trademark issues’ Category


Lawmakers Raise New Concerns About New Domain Name Program

Posted August 9th, 2012

From National Journal

Nearly six months after the program was launched, key members of Congress are still raising concerns about a plan to introduce hundreds of new Internet addresses into the domain name systems, saying they want fresh assurances that the new strings will not harm trademark holders and that the public has adequate opportunity to comment.

The latest salvo came on Tuesday from the top leaders of the House and Senate Judiciary committees, who wrote the Internet Corporation for Assigned Names and Numbers about its program to allow for the introduction of new generic top-level domain names to compete with the 22 existing addresses including .com and .net. ICANN, a California-based nonprofit that manages the Internet’s domain name system, is currently in the process of examining more than 1,900 applications for new names, such as .app, .book, and .music, that it received by its May deadline.

The program was criticized even before it was formally launched in January by trademark holders and others who worried about the costs companies and organizations will incur in trying to defend their brands with the influx of so many new names and that it could spur consumer confusion and fraud.

“We are in a critical phase as ICANN determines which [generic top-level domains] to authorize and what policies to implement in the new registries,” according to the letter the Judiciary leaders sent to ICANN interim CEO and President Akram Atallah. “We therefore ask that you provide us with further details about the steps ICANN is taking to fulfill its commitment to ensure that the New gTLD process will provide ‘a secure, stable marketplace’ with input from ‘the community as a whole.’ ”

The letter was signed by Senate Judiciary Chairman Patrick Leahy, D-Vt., Senate Judiciary ranking member Chuck Grassley, R-Iowa, House Judiciary Chairman Lamar Smith, R-Texas, and House Judiciary ranking member John Conyers, D-Mich., who sent a similar letter in December.

In their latest missive, the lawmakers sought details on several issues including what ICANN has done to inform and seek input from those outside of the ICANN community about the new domain name program. They also sought information on what additional steps ICANN has taken to address lingering concerns from trademark holders.

Posted in gTLDS, ICANN, trademark issues by  


New gTLD Program: Technical Resources for Trademark Clearinghouse Available to Prospective New gTLD Registry Operators

Posted July 11th, 2012


In response to community request, ICANN is establishing an open mailing list to further refine and complete the technical specification of the interface between the new gTLD Registries and the Trademark Clearinghouse.

One way to protect property rights, and the interests of registrants, in the New gTLD Program is the establishment of a Trademark Clearinghouse. The Trademark Clearinghouse is being designed to increase protections and reduce costs for trademark holders and start-up registries alike. Given that new gTLD registry operators will need to establish systems to support the required Sunrise and Trademark Claims services, ICANN is inviting participation on a technically-focused mailing list.

For the full skinny go HERE.

Posted in Domain Names, gTLDS, ICANN, trademark issues 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.

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“Federal Judge Orders Google, Facebook to Disappear Hundreds of Sites”

Posted November 29th, 2011

As reported by Nate Anderson for “After a series of one-sided hearings, luxury goods maker Chanel has won recent court orders against hundreds of websites trafficking in counterfeit luxury goods. A federal judge in Nevada has agreed that Chanel can seize the domain names in question and transfer them all to US-based registrar GoDaddy. The judge also ordered “all Internet search engines” and “all social media websites”—explicitly naming Facebook, Twitter, Google+, Bing, Yahoo, and Google—to “de-index” the domain names and to remove them from any search results.

The case has been a remarkable one. Concerned about counterfeiting, Chanel has filed a joint suit in Nevada against nearly 700 domain names that appear to have nothing in common. When Chanel finds more names, it simply uses the same case and files new requests for more seizures. (A recent November 14 order went after an additional 228 sites; none had a chance to contest the request until after it was approved and the names had been seized.)”

Click HERE to read the full article.

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Trademarking Occupy Wall Street

Posted November 2nd, 2011

As reported by Drew Hasselback of the “The group behind the Occupy Wall Street protest has applied for a U.S. trademark on the phrase “Occupy Wall Street” so it can use those words in a variety of items, including:

Periodicals and newsletters … bags, including but not limited to backpacks, gym bags, tote bags, luggage and overnight bags … clothing, namely t-shirts, sweatshirts, headwear, and jackets for men, women and children … [and] … Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring educational and entertaining materials relating to Occupy Wall Street and the Occupy Movement Generally.

The application was filed Oct. 24 with the United States Patent and Trademark Office,according to CNN Money.”

Click HERE to read more.

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Twitter Wins Battle For Tweet Trademark

Posted October 11th, 2011

As reported by “Twitter is closer to having dominion over the word “tweet.” On Monday, James Eliason, CEO of Twittad, said in an interview that Twitter would drop a lawsuit it filed against his company last month that sought to nix Twittad’s registered trademark of the word “tweet.” In return, Des Moines-based Twittad would transfer its registered trademark of “tweet” to Twitter, he said.

(People “tweet” by posting a message of up to 140 characters on Twitter, an online messaging service.)

Eliason declined to say whether Twitter paid Twittad, citing a confidentiality agreement between the companies.”

Click HERE to read more.

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ICANN Seeks Service Providers For Trademark Clearinghouse Operation

Posted October 7th, 2011

As posted to “ICANN is issuing today a Request for Information (RFI) [PDF, 243 KB] to identify potential Trademark Clearinghouse (TMCH) Service Providers. The Trademark Clearinghouse will provide a set of rights protection mechanisms that are part of ICANN’s program to make new top-level domains widely available.

The primary purpose of the TMCH is to function as an information repository, offering authentication and validation services for trademark data. Trademark holders and gTLD registry operators will rely on the TMCH to support rights protection mechanisms for the new gTLD space. The TMCH is designed to be available globally, with capabilities for validating trademark data in multiple scripts and responding to inquiries in multiple languages.”

Click HERE to read more.

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“Speedo Fights Bisexual Blogger Over Domains in Australia”

Posted September 22nd, 2011

As reported on by David Goldstein: “An Australian man has found himself unsurprisingly at odds with global swimwear giant Speedo after he registered domain names relating to the Speedo brand and creating sites that are described as “salacious swimwear websites” by The Age newspaper.

The case has made the Federal Court in Australia where lawyers acting for the Netherlands and British registered SPEEDO Holdings BV and SPEEDO International Ltd described how they “had taken to serve legal demands on ‘aussiespeedoguy’ Dave Evans, who describes himself as a ‘bisexual blogger’ according to the news report.”

Click HERE to read more.

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What Are The Odds-TiVo Looses Trademark Case to TiVo

Posted August 31st, 2011

As reported by : “DVR company TiVo certainly has a trademark to the term “TiVo”, but it may have found its match: a band member who goes by the nickname “Tivo”.

Rocker Majan Fernandez Primitivo goes by the stage name “Tivo” for his acts, taking the last four letters of his last name. He registered to promote himself.

That didn’t sit well with the DVR maker, who filed a complaint with the World Intellectual Property Organization to get the domain name.”

Click HERE to read more.

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