As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search  for a new company name and for a new trademark cannot be overstated:

1. Any word in any language can function as a trademark depending on how it is used.

2. Every business has at least one company name, trade name, brand name, logo, or slogan it uses to advertise its goods or services, making it vulnerable to a claim of infringement if the use has not been cleared properly.

3. A Secretary of State’s clearance and registration of a name for a corporation or other business entity is NOT a defense to a claim of trademark infringement.

4. Unlike copyright infringement, trademark infringement can be innocent. Prior knowledge of a preexisting trademark is not required for infringement liability to exist.

5. Domain names alone do not create trademark or similar protected rights, but can violate trademark rights.

6. Marks do not need to be identical or used competitively in order to be infringing.

7. Famous marks and names should never be used even for completely unrelated purposes.

8. Unregistered common law marks are valid and fully enforceable in the United States.

9. There is no such thing as international or worldwide trademark rights. Trademark rights exist on a country-by-country basis. In most countries, the first to file a trademark application and obtain a registration owns the rights in that country. Use without registration is irrelevant. Foreign rights should be searched and/or applied for before any public announcements of expansion plans.

10. Trademarks are a use-it-or-lose-it asset. Unlike patents and copyrights, trademarks can exist forever if they are being used. Intent-to-use applications can be filed for trademarks for which there are plans underway but which may not be placed into actual use for, at least, four years.

A thorough trademark search is one of the best investments a company can make in a new endeavor. No one wants to invest time, money, and effort in a new name or mark only to find out later that all is lost, including  the initial  goodwill and reputation developed under that new name and mark.  So do not simply choose a new name or mark wisely, also search it well.


By Jamison Arterton

It has been a long time since we had any notable updates on the gTLD process to report.  However, after a slow start, the new gTLD program is now in full swing.  On March 22, 2013, ICANN released the first round of Initial Evaluations to the general public. This was the first major milestone of the gTLD program.  As a reminder, there are three possible outcomes of this Initial Evaluation:  1) Pass: the application was found to be consistent with the requirements in the Applicant Guidebook and can advance to the next phase; 2) Eligible for Extended Evaluation: additional information was requested by the Financial, Technical/Operational, Registry Services, or Geographic Names evaluation panels; or 3) Ineligible for Further Review: the application was determined not to meet the relevant criteria in the Applicant Guidebook.  The next round of Initial Evaluations was released on May 24, 2013, bringing the total number of passing applications to 433.  ICANN has also announced that it has ramped up to releasing the results of these Initial Evaluations  in batches of 100 prioritized applications per week.

The most recent results of the Initial Evaluations are available here.

Applicants that passed the Initial Evaluations have now moved onto the contracting phase and pre-delegation testing to determine whether the applicant meets the technical requirements of the program.  However, applicants in string contention will need to wait for the string it is in contention with and resolve that contention before proceeding.

This current progress, however, could potentially be hindered if ICANN choses to implement the recent recommendations from the Governmental Advisory Committee (“GAC”). On April 11th, the GAC released its Beijing Communique, outlining recommendations for new TLDs.  Among the numerous recommendations of the new TLD program, the GAC recommended the following:

  1. The GAC identified several strings that it      recommended should not proceed beyond the Initial Evaluation phase.
  2. The GAC requested a written briefing about the      ability of the applicant to alter the string applied for in order to      address the GAC’s concerns.
  3. The GAC suggested that ICANN reconsider its position      on singular and plural strings, since the inclusion of both could lead to      potential user confusion.
  4. The GAC recommended six new safeguard should apply to      all new gTLDs, including WHOIS verification and checks, mitigation of      abusive activities, procedures for maintaining documentation, procedures      for handling complaints and stringent consequences for violation of the      requirements.
  5. The GAC further advised that ICANN should carefully      consider community feedback on applications from interested groups.
  6. The GAC recommended that ICANN should develop clear      policies for handling applications for strings such as .WTF, .GRIPE,      .SUCKS, .FAIL in order to reduce cyber bullying and misuse.

The full text of the GAC’s recommendations is available here.

For now, however, ICANN appears to be on track to complete Initial Evaluations on all applications by August 2013 and to roll out the first new gTLDs by the end of July.

 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 of applications for new gTLDs will come an unlimited number of new opportunities on the Internet for entrepreneurs of all types, including trademark infringers. Thus, trademark owners must make some decisions on how to address this new threat. One possibility is the new Trademark Clearinghouse.

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

Written by: Ben Wagner

Five steps to protect a marks’ value

Trademark owners have a duty to police their mark.  This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell.  The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights.  As a practical business reality, the value of marks that are not policed and their associated goodwill are always in danger.

This duty includes policing (1) for unauthorized uses of a mark, (2) for uses of confusingly similar marks, and (3) uses by approved trademark licensees.  This blog post covers the first two types.

Continue Reading A Primer on Policing Your Trademark

Written by Geri Haight

As we reported in December, two adult entertainment companies filed suit in federal district court in Los Angeles against the Internet Corporation for Assigned Names and Numbers (ICANN) and ICM Registry, the sole operator of the .XXX domain name registry. The complaint, filed by adult filmmaker Digital Playground Inc. and Manwin Licensing International SARL, alleged that ICANN and ICM Registry engaged in monopolistic conduct, price gouging, and anticompetitive and unfair practices relating to ICANN’s grant of the .XXX gTLD to ICM Registry.  The complaint contained some very interesting allegations, particularly given ICANN’s pending launch of a number of new gTLDs.  In essence, the complaint asserts that ICANN and ICM Registry conspired to establish the .xxx gTLD with the understanding that the operators of adult websites like Digital Playground and Manwin would be forced to pay fees in order to register new .xxx domain names in the .XXX TLD, a registry that ICM Registry now monopolizes.  Continue Reading Legal Challenge To ICM Registry’s and ICANN’s .XXX gTLD Continues – What Are The Implications For Other gTLD Applicants?

Written by Geri Haight

ICANN has announced that it has extended the public comment period for new generic top-level domain (gTLD) applications for an additional 45 days. The public comment period was scheduled to close on August 12th.  The new end date is now September 26, 2012.  ICANN stated that this extension will not impact other looming deadlines in the gTLD application review process. ICANN’s announcement regarding the extension comes after the Association for National Advertisers and others requested that ICANN extend the public comment period.

As discussed previously on this blog, a public comment does not amount to a formal objection.  Anyone can submit a comment and there is no fee for doing so.  Such comments are designed to bring relevant information and issues to the attention of those charged with processing new gTLD applications.  To submit a comment, users must create an account on the new gTLD Public Comment Forum.  Those seeking to post a comment must associate the comment with a specific application and the relevant review panel.  Application comments received by September 26th will be available to the evaluation panels performing the Initial Evaluation reviews.

According to the Applicant Guidebook, evaluators will perform due diligence on the application comments (i.e., determine their relevance to the evaluation, verify the accuracy of claims, analyze meaningfulness of references cited) and take the information provided in these comments into consideration. In cases where consideration of the comments has impacted the scoring of the application, the evaluators will seek clarification from the applicant. Statements concerning consideration of application comments that have impacted the evaluation decision will be reflected in the evaluators’ summary reports, which will be published at the end of the extended evaluation period. Where a comment relates to the subject matter of a formal objection, such comments will not be considered by panels during Initial Evaluation of gTLD applications. These comments will be available to and may be subsequently considered by an expert panel during a dispute resolution proceeding.

ICANN has appointed an Independent Objector (IO) to file formal objections (not comments) “solely in the best interests of the public who use the global Internet.”  The IO may file objections against “highly questionable” gTLD applications that may qualify as a Community or Public Interest Objection.  But in order for the IO to file a formal objection, there must be some public comment in opposition to an application.

Essentially, the comment period is the time for members of the public to bring relevant information and issues to the attention of those charged with handling new gTLD applications.  So you now have an extra 45 days to submit a comment on one or more of the 1930 pending gTLD applications.


Written by Geri Haight

What if someone applied for a new generic Top Level Domain (gTLD) that is confusingly similar to the gTLD applied for by your company?  Who has standing to file an objection or to submit a public comment in response to an applied-for gTLD?  These are the questions that many participants and observers of the Internet Corporation for Assigned Names and Numbers’ (ICANN) new gTLD program are asking.  Continue Reading ICANN’s New gTLDs Program: Disputes, Comments and Objections

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 is really interesting is the breakdown of applications. Continue Reading The List of gTLD Applicants: A Breakdown

Written by Geri Haight

ICANN published the list of applied-for gTLD character strings today.  Here is the list.  Take a look to see who has applied.  There are many applications for .BRANDS, like .AMERICANEXPRESS, .MACYS, and .LEGO.  The majority of applications seem to be for .GENERICS, such as .APP, .BASKETBALL, .BLOG, .BOOK, .GAME, .INSURANCE and .NEWS.  Continue Reading Happy Reveal Day! The List of New gTLD Applications Is Now Available