Pattishall IP Blog

October 1, 2012

ICANN Seeks Comments On The Procedures To Be Used by the Trademark Clearinghouse In Connection With The Implementation of New gTLDs

Filed under: International, Internet — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:31 pm

by Phillip Barengolts, Partner

On September 24, 2012, ICANN requested comments on two important procedures in the implementation of the Trademark Clearinghouse[1] – proof of trademark use and determination of a match. http://www.icann.org/en/news/announcements/announcement-7-24sep12-en.htm.  The Trademark Clearinghouse will serve as a repository used by trademark owners to protect against the use of their marks for domain names in any of the new gTLDs during the sunrise period of a new gTLD and for trademark claims generally.[2]  See prior coverage here: https://blog.pattishall.com/2011/11/08/trademark-protection-in-icann%E2%80%99s-new-generic-top-level-domain-%E2%80%9Cgtld%E2%80%9D-space-will-require-diligence-by-trademark-owners/.  The deadline to submit comments is November 7, 2012.

The specific procedures for which ICANN seeks comment now are: 1) the procedures that the Trademark Clearinghouse will use to verify that a claimed trademark is in use; and 2) the process by which the Trademark Clearinghouse will determine a match between a trademark recorded with the Trademark Clearinghouse and an applied-for domain name.  Highlights of these memoranda are below.

Proof of Use

ICANN has decided that only marks that are in use will be provided protection through the Trademark Clearinghouse during the sunrise period of a new gTLD.[3]  Most jurisdictions throughout the world do not require proof of use to obtain a trademark registration, but the U.S. does have such a requirement (with notable exceptions for foreign trademark registration holders).

To prove use, a trademark owner must submit a signed declaration of use and a single sample of current use.  The specific proposed declaration is below:

The [Trademark Holder/Licensee/Agent] hereby certifies that the information submitted to the Clearinghouse, is, to the best of [Trademark Holder/Licensee/Agent’s] knowledge complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made to the Trademark Clearinghouse; that this information is not being presented for any improper purpose; and that if, at any time, the information contained in this submission is no longer accurate, the [Trademark Holder/Licensee/Agent] will notify the Clearinghouse within a reasonable time of that information which is no longer accurate, and to the extent necessary, provide that additional information necessary for the submission to be accurate. Furthermore, if any Clearinghouse-verified mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned.

The sample of use must be “an item that evidences an effort on behalf of the trademark holder to communicate to a consumer so that the consumer can distinguish the products or services of one from those of another.”  Examples include:

  • Labels, tags, or containers from a product; and
  • Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials). (more…)

November 8, 2011

Trademark Protection in ICANN’s New Generic Top-Level Domain (“gTLD”) Space Will Require Diligence by Trademark Owners

Filed under: Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:21 pm

Categories: Internet
Tags: ICANN, Internet, Phillip Barengolts, David Beeman

By Phillip Barengolts and David Beeman, Trademark Attorneys[1]

ICANN is launching its new top-level domain (“TLD”) program this winter.  It will begin to accept applications from potential registries on January 12, 2012.  The new TLD program will allow qualified applicants – those able to pay $185,000 (not including infrastructure and other investments to actually run a registry)[2] and meet technical requirements – to establish top-level domain names under any letter and number combination.[3]  While it remains to be seen how many <.company> TLDs will appear given the cost, trademark owners potentially will now face a myriad examples of <infringing_domain_name.whatever> and even some examples of <whatever.infringing_TLD>.  Acknowledging this problem, ICANN announced mechanisms that trademark owners will be able to use to  protect their trademark rights in these new TLDs.  The mechanisms have not been finalized as of this writing, but this post provides a summary of these mechanisms as currently contemplated by ICANN, including a procedure for objecting to the proposed TLDs and protecting owners’ rights in second-level domain names.

Procedure for Objecting to Proposed Top-Level Domain Names

Trademark owners, and others, will be able to object to new TLD applications after ICANN publishes them for public review shortly after the application period closes on April 12, 2012.  ICANN will not be responsible for reviewing the TLD applications for objectionable letter and number combinations.

Four types of objections to new TLDs will be permitted:[4]  1) “existing legal rights,” e.g., ownership of a registered or unregistered trademark; 2)  string confusion (i.e., confusion between two applied-for TLDs); 3) limited public interest objection; and 4) community objection.  We are only discussing the existing legal rights objection.  For information on the other types of objections, see ICANN’s Guidebook.

An existing legal rights objection will have to be filed with the Arbitration and Mediation Center of the World Intellectual Property Organization (“WIPO”).  The rules for this type of objection recently approved by ICANN are available at http://www.icann.org/en/topics/new-gtlds/wipo-rules-clean-19sep11-en.pdf.[5]  The filing fee for a single objection to a single TLD application will be $2,000, and the additional fee for having one panelist hear the objection is $8,000.  For a panel of three, the filing fee will be $3,000, and the panel fee will be $20,000. (more…)

October 26, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Deadline for Sunrise Period for Blocking Registrations is October 28, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:56 am

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

[***Update – . XXX Domain Registry Has Received Over 42,000 Registrations – Deadline
for Sunrise Period for Blocking Registrations is October 28, 2011

ICM Registry, the registry handling .XXX top-level domain (“TLD”) registrations reported this week that it has received over 42,000 applications for .XXX domain names since the September 7, 2011 launch of the Sunrise Period “with thousands more pouring in each day.”  “We are very pleased, but not surprised, by this overwhelming response to the availability of .XXX domains,” said Stuart Lawley, CEO of ICM Registry.  The .XXX domain is intended solely for use by the “adult entertainment” industry.

ICM reported that the number of applications already received is over five times what ICM had anticipated.  ICM also reported that the applications have been “well balanced” between brand owners inside the adult industry and those non-adult brands that want to protect their trademarks.

Trademark owners outside the adult entertainment industry with registered trademarks have only until October 28, 2011 to take advantage of the sunrise period to file for a blocking registration that will prevent use of their trademarks in connection with pornographic uses.  If a trademark owner does not have a registered mark, or misses the deadline, it must wait until December 6, 2011 to file registrations to block others from using their marks in the .XXX domain.  See our August 18, 2011 blog post, below for details on the process.***] (more…)

August 26, 2011

Trademark Protection in the New Generic Top-Level Domain (“gTLD”) Space ICANN Will Unveil on January 12, 2012, Will Require Diligence by Trademark Owners

Filed under: Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:49 pm

Categories: Internet
Tags: ICANN, Internet, Phillip Barengolts, David Beeman

By Phillip Barengolts and David Beeman, Trademark Attorneys

ICANN is launching its new top-level domain (“TLD”) program this winter.  The new TLD program will allow qualified applicants – those able to pay $185,000 (not including infrastructure and other investments to actually run a registry) and meet technical requirements – to establish top-level domain names under any letter and number combination.  While it remains to be seen how many <.company> TLDs will appear given the cost, trademark owners potentially will now face a myriad examples of <infringing_domain_name.whatever> and even some examples of <whatever.infringing_TLD>.  Acknowledging this problem, ICANN announced mechanisms that trademark owners will be able to use to  protect their trademark rights in these new TLDs.  The mechanisms have not been finalized as of this writing, but this post provides a summary of these mechanisms as currently contemplated by ICANN, including a procedure for objecting to the proposed TLDs and protecting owners’ rights in second-level domain names.

Procedure for Objecting to Proposed Top-Level Domain Names

Trademark owners, and others, will be able to object to new TLD applications after ICANN publishes them for public review shortly after the application period closes on April 12, 2012.  ICANN will not be responsible for reviewing the TLD applications for objectionable letter and number combinations. (more…)

August 18, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Sunrise Registration Period for Trademark Owners Begins September 7, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:15 pm

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

Protecting your brand and trademarks from infringement and tarnishment by uses on pornographic and other unsavory websites just got more difficult.  As we reported in April, the Internet Corporation for Assigned Names and Numbers (ICANN) board approved the .XXX sponsored top-level domain (“sTLD”) name in March.  http://bit.ly/q0Cikk  The .XXX domain is intended solely for use by the “adult entertainment” industry, and officially launches on December 6, 2011.  The goal of the domain was to identify the websites as containing sexually explicit content – thus readily allowing adults to discover or avoid such sites, and to control access by children.

The new .XXX domain, however, only leads to greater enforcement problems.  As the existence of the new domain is likely to increase the volume of sites associated with adult content, brand owners must now be concerned that others could use their trademarks to attract audiences to unrelated pornographic sites.  Therefore, to protect the vast majority of brand owners which are not in the adult entertainment industry, but which face the risk of use of their marks in new .XXX domains, ICANN has developed rules allowing such trademark holders to “block” registered marks from the .XXX domain. (more…)

April 21, 2011

.xxx Domain Names Going Live Soon, Brand Owners Prepare to Protect Their Trademarks in a New Online Space

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:21 pm

Categories: Internet
Tags: Domain Names, ICANN, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

For anyone who has ever wanted his or her pornography to reside in one place on the Internet, ICANN has finally accommodated you.  After numerous false starts, the ICANN board approved the .xxx top-level domain (“tld”) name on March 18, 2011, and the tld went live on April 15, 2011.  For a work-safe preview (for now, if you’re reading this after the posting date, click at your own risk), go to http://sex.xxx/.

ICM Registry LLC (“ICM”) will operate the .xxx tld.  Registrations will “wholesale around $60 per domain” with individual registrars setting their own registrant pricing.  See http://www.icmregistry.com/about/faq.php.  Registrations will be limited to entities that “provide online, sexually-oriented adult entertainment intended for consenting adults or for other community members,” representatives of such entities, or entities that provide products or services to such entities.  ICM claims to have received requests reserving about 600,000 domain names already.

Trademark owners, including those that do not fall within the online, sexually-oriented adult entertainment community noted above, will have a chance to register relevant domain names defensively during a Sunrise period.  See http://www.icmregistry.com/about/sunrise.php.  ICM has not detailed the process for this Sunrise period, but here is what we know so far:

Rights owners from outside the sponsored community [will be able to] reserve and therefore block names at the .xxx registry so that they cannot be used as conventional web addresses. ICM will work in close partnership with specialist consultancy, Valideus on the execution of the .xxx rights protection program.

A onetime fee will apply which will cover the submission and processing of the relevant right . . . [and] the standard registry fee will apply for the period or periods of registration applied for.

ICM has requested “early feedback from members of the intellectual property community” to help it organize the Sunrise process.

*          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He also teaches trademark litigation at John Marshall Law School.

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July 20, 2010

New .co Domain Names Now Available

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:56 pm

By Alexis Payne, Esq.

Beginning July 20, 2010, the registry operator of the .co top-level domain, .CO Internet S.A.S., is making .co domains available to the general public through registers such as GoDaddy.com, Network Solutions, and Register.com.  The move opens the .co top-level domain, which was once the country code top-level domain (“ccTLD”) for Colombia, to the general public.

Research carried out on behalf of .CO Internet S.A.S revealed that 75 percent of web users said they associated .co with “company,” “corporation,” or other commercial endeavors.  More than twenty countries, including the United Kingdom (.co.uk) and Japan (.co.jp), already use .co domains for their ccTLD’s.  Further, nearly 70 percent of the brands listed in the Brand Finance Top 500 have already been pre-registered as .co domain names, including Amazon, American Express, Apple, BMW, Cartier, Canon, CNN, Coca-Cola, Disney, eBay, Exxon, Ford, Google, Hilton, Honda, IBM, IKEA, Kodak, McDonalds, Microsoft, MTV, Nestle, Nike, Nokia, Panasonic, Pfizer, Samsung, Sony, Toshiba, Toyota, Unilever, Visa, Yahoo, and others. (more…)

October 9, 2009

ICANN Outlines Proposed Trademark Protection Measures in Preparation for the Introduction of New gTLDs in Early 2010

Filed under: International, Internet — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:15 pm

By Mark V.B. Partridge, Trademark Attorney

The Internet Corporation for Assigned Names and Numbers (ICANN) is introducing new generic top-level domains (gTLDs) in early 2010.  This past weekend ICANN issued its third Draft Applicant Guidebook, which addresses some of the trademark issues that have been raised.

Implementation Recommendations

While specific trademark protection mechanisms are still to be decided, ICANN has drafted a set of implementation recommendations to protect intellectual property in the new gTLD space based upon recommendations from the Implementation Recommendation Team and others.  ICANN also considered the comments of the broader Internet community. (more…)

June 17, 2009

.yournamehere: ICANN’s Expansion of the Domain Name Space

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:27 pm

By Sanjiv Sarwate and Daniel Hwang, Trademark Attorneys

ICANN plans to significantly expand the domain name universe by allowing virtually any character string to serve as a top-level domain name. In this article, Sanjiv Sarwate and Daniel Hwang summarize how the new process will work and the steps being taken to address the protection of brand rights…

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January 28, 2009

Pattishall Lawyers win Victory for American College of Trial Lawyers

Filed under: Cybersquatting, Pattishall, UDRP — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:14 pm

David Hilliard and Ashly Iacullo prevailed in a proceeding, winning the domain names and on behalf of the American College of Trial Lawyers. The WIPO panelist found that the domain names were confusingly similar to the College’s federally registered marks AMERICAN COLLEGE OF TRIAL LAWYERS and that the respondent failed to show any legitimate rights in the names.

After the ICANN Complaint was filed with WIPO in November, the respondent filed a declaratory judgment action in the state court of Alabama and also registered the domain name . The College successfully removed the action from state court to the United States District Court for the Middle District of Alabama and counterclaimed under the Anti-Cybersquatting Act, adding the recently registered domain name and seeking statutory damages. This is just one of many trademark disputes between the American College of Trial Lawyers and the respondent and his related-organization. Cases are pending before the United States District Court for the Middle District of Alabama and the United States Trademark Trial and Appeal Board.

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