Pattishall IP Blog

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…)

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…)

April 13, 2010

Pattishall Attorneys Win Summary Judgment for The John W. Carson Foundation, Defeating Application for HERE’S JOHNNY as Trademark for Portable Toilets

Filed under: Pattishall, Right of Publicity — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:16 pm

by David Beeman, Attorney

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) awarded summary judgment to Johnny Carson’s The John W. Carson Foundation in its opposition to Toilets.com’s application to register HERE’S JOHNNY as a trademark for portable toilets in the Patent and Trademark Office (“PTO”).  The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (T.T.A.B. Mar. 25, 2009).[1] Pattishall attorneys Robert Newbury, Jonathan S. Jennings, Phillip Barengolts and David Beeman represented The John W. Carson Foundation in the action. (more…)

March 26, 2010

Gripe Site Survives ACPA and Trademark Infringement Claims

Filed under: Cybersquatting, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:00 pm

By David Beeman, Attorney

Gripe sites, websites that criticize a company or its products or services, present tricky problems for trademark owners due to the protections of the First Amendment.  Career Agents Network, Inc. v. White, 09-CV-12269-DT, slip op. (E.D. Mich. Feb. 26, 2010), illustrates the pitfalls of taking legal action to stop these sites.  Career Agents Network (“Career Agents”) sued White for using the domain names <careeragentsnetwork.biz> and <careeragentnetwork.biz> in connection with a website to criticize Career Agents’ business practices.  The gripe site displayed a single page of text: (more…)

October 21, 2009

Does the Commercial General Liability Policy Cover Trademark Infringement?

Filed under: Litigation — Tags: — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:23 pm

By David Beeman, Attorney

The Commercial General Liability (CGL) Policy is a standard, widely-used insurance policy for businesses that provides general liability coverage, including coverage for bodily injury, property damage and advertising injury.  However, for policyholders facing lawsuits over trademark infringement, ambiguity in the CGL’s definition of “advertising injury” may create tensions between the insurer and the insured.  If the “advertising injury” definition encompasses trademark infringement, the insurer will likely have a duty to defend the insured against the claims and pay damages up to the policy limit on behalf of the insured.  Alternatively, if the definition excludes trademark infringement, the insurer has no obligation to defend or pay a policyholder’s damages.

Insurance companies and their insureds often turn to the courts for clarification on this issue.  In General Casualty Co. of Wisconsin v. Wozniak Travel Inc., 762 N.W.2d 572 (Minn. Mar. 19, 2009), the Minnesota Supreme Court held that, under Minnesota law, trademark infringement was within the scope of the insurer’s CGL policy, triggering the insurer’s duty to defend the insured. (more…)

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