Copyright & Trademark Matters Insights and Developments in Copyright and Trademark Law

Tag Archives: Trademark

The New Generic Top-Level Domains and the New Trademark Clearinghouse: Deciding Whether to Register Your Brands

Posted in Anticybersquatting, Domain Name, gTLD Issue, Trademark, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

 By: Susan Neuberger Weller The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide.  It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval… Continue Reading

How Do You or Don’t You State a Case for A Declaratory Judgment in a Trademark Dispute?

Posted in Trademark

By: Susan Neuberger Weller Ever since the US Supreme Court in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 S, Ct, 764, 166 L. Ed.604 (2007)  threw out the “reasonable apprehension” test as defining the grounds for bringing a declaratory judgment action, courts have considered a wide variety of factual circumstances in deciding which… Continue Reading

Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Posted in Google Adwords, Trademark, Trademark Infringement

Written by Geri Haight Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated:  “Rosetta Stone Inc. and Google have agreed to dismiss the… Continue Reading

When Can You Claim A Color As Your Trademark?

Posted in Color, Trademark

Written by Susan Neuberger Weller In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.”  The Court found that the single color red on the… Continue Reading

Avoid a “Heart Attack”: Promptly Register Your Trademarks

Posted in Intent-To-Use Applications, Litigation, Trademark, Trademark Infringement, Trademark Prosecution

Written by Susan Neuberger Weller On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack” in, at least, Las Vegas and Manhattan.  Since 2004, the Second Avenue Deli, a… Continue Reading

The List of gTLD Applicants: A Breakdown

Posted in Domain Name, gTLD Issue, Trademark

Written by Geri Haight The list of gTLD applications and applicants, disclosed by ICANN yesterday, is a fascinating read.  It provides an insight into how the Internet will be transformed (or, depending on your point of view, confused) in the coming years as new domain name extensions are introduced to consumers.  But, at the outset, what… Continue Reading

ICANN’s Trademark Clearinghouse: An Update

Posted in Domain Name, gTLD Issue, Trademark

Written by Geri Haight As part of its plan to dramatically expand the Internet’s infrastructure beyond .com (and other pre-existing generic top level domains (gTLDs)), ICANN, the Internet Corporation for Assigned Names and Numbers, promised brand owners that a variety of additional trademark protection mechanisms would be put in place.  One such mechanism is the Trademark Clearinghouse. 

The Latest From ICANN: New gTLD Application System Shut Down

Posted in Domain Name, gTLD Issue, Trademark

Written by Jamison Arterton ICANN has temporarily taken the TAS application system for new generic top level domains (gTLDs) offline due to a “technical glitch.”  According to ICANN, a technical problem allowed a limited number of users to view other users’ file names and user names.  To protect the applicants’ data, on April 12, 2012,… Continue Reading

WIPO Named Exclusive Arbitrator of “Legal Rights Objections” for New gTLD Program

Posted in Domain Name, gTLD Issue, Trademark, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton ICANN has recently appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” or “LRO” to a pending application under the new gTLD program.  In assessing the validity of an LRO, the WIPO panel will decide whether… Continue Reading

The Latest on the New gTLD Launch: “Reveal Day” Set For May 1st

Posted in Domain Name, gTLD Issue, Trademark

Written by Jamison Arterton Trademark owners, mark your calendars.  ICANN announced that Tuesday, May 1, 2012 will be “reveal day.”   On May 1st, ICANN will publicly post the gTLD character strings that have been applied for in connection with its new gTLD program.   Following publication, interested parties may submit comments related to proposed new gTLDs, which will… Continue Reading

.Anything 101: A Brief Guide to the New gTLD Program

Posted in Domain Name, gTLD Issue, Trademark, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton Last week, ICANN began accepting applications for its new gTLD program. ICANN has posted a series of extremely comprehensive materials outlining the registration and evaluation process.  A copy of those materials can be found here.  The following brief summary of the application process is geared toward trademark holders seeking to protect their trademark rights during this… Continue Reading

International Organizations Join the Opposition to ICANN’s New gTLD Program

Posted in Domain Name, gTLD Issue, Trademark Infringement

ICANN will start accepting applications for new gTLDs on January 12, 2012.  But not before further public opposition to the program builds.  Most recently, the United Nations, International Monetary Fund and a host of other intergovernmental organizations (“IGOs”) have joined the growing list of opponents to ICANN’s new program.  A recent letter sent to ICANN on behalf of… Continue Reading

The Sunrise B Period: Act Now To Prevent Use Of Your Trademark In Connection With New .XXX Adult Entertainment Domain Names

Posted in Domain Name, gTLD Issue, Trademark, Uniform Domain Name Dispute Resolution Policy

Written by Geri L. Haight and Joseph M. DiCioccio Are you concerned that the name of your business or the trademark used in connection with your best-selling product will be used in connection with an adult entertainment website given the soon-to-be launched .XXX domain names? Domain names ending with the generic top level domain (gTLD)… Continue Reading

Remedies for Cybersquatting: Comparison of the UDRP and ACPA

Posted in Anticybersquatting, Domain Name, Litigation, Remedies, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton Last month, the kitchen and bath giant, Kohler Co., filed an anti-cybersquatting suit in federal court in California against several cybersquatters.  In its complaint, Kohler alleges that it previously paid the named defendants $500 to transfer a domain name incorporating the KOHLER trademark in exchange for their agreement that they would not register any… Continue Reading