Tag: Trademark

The “Dot-Brand” Explosion: What You Need To Do Now

Dickinson Wright LogoEarlier this year the company that manages the global internet address system (the Internet Corporation for Assigned Names and Numbers, or ICANN) accepted the first round of applications for new “generic top level domains,” or gTLDs – the part of an address that goes to the right of the dot. Most businesses register domain names that use the familiar “.com” suffix or one of a handful of other available options such as “.org” or “.biz.” The new program makes it possible to register a business name, a trademark – indeed, virtually any word in any language – as a TLD in its own right. Depending on whose crystal ball you consult, this Dot-Brand initiative could revolutionize the way the internet works, or hopelessly complicate it, or both.

The initial application window recently closed. The list of applications offered a few surprises, a number of omens for the future – and some important action items for brand owners who did not apply for a gTLD this time around.

  • One surprise was the sheer number of applications. Originally, ICANN was anticipating 500 or so. In the end there were almost 2,000 (at $185,000 apiece!) The unexpected volume slowed down the application process, and will surely slow the review and approval process even more.
  • Many of the applications were for famous brand names (.chevy, .nikon, .walmart) and several were for geographic locations (.paris, .nyc, .amersterdam). The most interesting ones were for generic terms like .art, .tech, and .store, which will be of interest to a great many people. Lots of brand owners in the auto industry, forexample, may want to be part of the “.cars” domain.
  • Not surprisingly, many of these generic domains are the subject of multiple applications: thirteen for .app; seven each for .mail and .news; nine for .shop. There will be a lengthy dispute-resolution process, probably culminating in an old-fashioned auction to the highest bidder, to see who ultimately gains control of these domains.

A recent survey of attorneys responsible for protecting trademarks found that while 91 percent were aware of the new gTLD program, only 36 percent had read the Applicant Guidebook, which explains how the process work. That Guidebook, and the initial application list, suggests some important steps you should take now to protect your brand:

1. Make sure no one has applied for a domain that incorporates one of your trademarks. A formal objection period for addressing such issues is now open and will run until January 2013.

2. Identify “generic” domains of interest, and investigate the applicants and their business plans. If you’re in the financial services sector, for example, you’ll want to know who’s behind the applications for .bank, .broker, .finance, .fund, .insurance, .investsments, .lifeinsurance, .loans, .money, .mutualfunds, and others. A 60-day comment period, open to anyone, runs through August 12; if there is something ICANN ought to know about one or more of the applicants or proposed domains, now is the time to tell them.

3. Start planning for defensive domain-name registrations in appropriate generic and geographic domains. Depending on the business you’re in, you may want to make sure you are the first to register your company name and key trademarks within appropriate domain names – before someone else does. The “someone else” could be a competitor, or just an old-fashioned cyber-squatter of the sort brand owners have been dealing with in the .com sphere for years. And don’t forget about domains like “.sucks,” where having someone else register your brand could be embarrassing.

The best defense is a good offense. Starting in October 2012, for a small fee you will be able to list your brand names in ICANN’s Trademark Clearinghouse; anyone that tries to register your brand as a domain name will be advised of your rights.

Has Someone Applied to Register Your .BRAND? Top Five Things You Need to Know

The National Law Review recently published an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The Registration of Brands:

You’ve heard about the planned expansion of the domain name system, but what does it really mean for trademark owners?

Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs are Internet extensions such as .com, .org and .net found at the end of a domain name. Under the new system, a business could apply to own its .BRAND. An automobile company could apply to own .CARS. A city government could apply to own .CITY. The possibilities, seemingly, are endless.

ICANN received 1900 applications for new gTLDs during the first application period, which is now closed. Google announced last week that it had applied for the gTLDs .GOOGLE, .YOUTUBE and .LOL among others. Canon Inc. announced that it has applied for the gTLD .CANON in order to “increase the convenience and effectiveness of its online communications.” The domain name registry Donuts Inc. announced that it has applied for 307 new gTLDs. The timeframe and process for reviewing the applications are somewhat fluid but the first new batch of gTLDs is slated to become active in early 2013. The remaining batch of applied-for gTLDs will not go live until 2014 or later. So what should trademark owners do now to prepare for the new regime?

1. Review and Analyze the List of Applied-For gTLDs

In what ICANN calls “Reveal Day,” on Wednesday, June 13, 2012, ICANN will publicly post a listing of all applied-for gTLD character strings. This will be the first public glimpse into which entities have applied to own which new gTLDs. Although some companies have announced publicly that they have submitted applications to participate in the new gTLD program, most have remained silent throughout the initial application phase. But all will be revealed on Reveal Day. Trademark owners should carefully review the list of applied-for gTLDs in order to determine if any conflict with pre-existing trademark rights. But remember, the list of applied-for gTLDs have not been approved by ICANN yet. There is time to take action if necessary to protect your trademark rights.

2. Submit a Comment to ICANN

What can you do if you learn on Reveal Day that someone has applied to register your .BRAND? Following publication on Reveal Day, interested parties may submit comments related to proposed new gTLDs to ICANN for consideration by the independent evaluators assessing each application. During the comment period, trademark owners can submit comments regarding potential trademark infringement, dilution, and related concerns raised by particular applications for gTLDs. Application comments received within 60 days of Reveal Day, i.e., by August 12th, will be available to the evaluation panel performing the initial evaluation reviews of all pending applications. Initial evaluation of the applications is expected to begin in early July.

3. Use Dispute Resolution Procedures to Object to Infringing gTLDs and/or Domain Names

Separate from the comment procedure, and prior to the approval of an applied-for gTLD, a formal objection process will be available to trademark owners. ICANN has 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” (LRO) to a pending application. A Legal Rights Objection can be filed where the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. The LRO process offers a good option for trademark owners who believe that their trademark rights may be encroached upon by a particular applied-for gTLD. But the process comes with a price tag of $10,000 fee for arbitration of a LRO by a single-member panel. The applicant of the challenged gTLD similarly is required to pay a $10,000 fee. If the applicant fails to do so, the objection will be deemed successful. The sole remedies available for a LRO are the success or dismissal of the objection. Monetary damages are not available through this process.

Many anticipate that the problem of “cybersquatting” will dramatically increase with the expansion of the gTLD system. Cybersquatting refers to the bad faith registration of a domain name that contains another’s brand or trademark. If an applied-for gTLD is approved by ICANN and domain names registered using the new gTLD infringe upon your trademark rights, the Uniform Domain Name Dispute Resolution Policy (UDRP) remains available to resolve domain name disputes. Under the UDRP, domain name disputes are typically resolved in approximately 45-60 days and the associated filing fees are relatively low (approximately $1500 to resolve a dispute involving up to 5 domain names). WIPO has stated that the UDRP is “the only proven mechanism in place to absorb the impact of gTLD expansion.”

Another alternative currently contemplated by ICANN is the Uniform Rapid Suspension System (URS). The URS is intended to be a faster, more cost-efficient complement to the UDRP. It is intended for cases of trademark abuse. Unlike the UDRP, which allows a trademark owner to obtain the transfer of a domain name that impairs its trademark rights, the sole remedy available under the URS is the temporary suspension of a domain name for the duration of the registration period (which may be extended for one year). While the URS substantive criteria mirror that of the UDRP, there is a higher burden of proof for complainants. ICANN has not yet selected a vendor for the URS System.

4. Register Your Trademark With ICANN’s Trademark Clearinghouse

In connection with the launch of new gTLDs, ICANN plans to form a Trademark Clearinghouse. The Trademark Clearinghouse is intended to serve as a single database of authenticated, registered trademarks and will eliminate the need for trademark holders to register their marks in many different databases as new gTLDs are introduced. ICANN will require every new gTLD operator to utilize the Clearinghouse, which will be available globally and have the capabilities for validating trademark data from multiple global regions. As a result of these functions, the Trademark Clearinghouse is expected to play an important role in ensuring ongoing protection of trademark rights under the new scheme. If you are a trademark owner and have not applied to register a gTLD, registering your trademark with the Trademark Clearinghouse is an important step in protecting your trademark rights in the new gTLD world. The fee for initial trademark authentication and validation services is expected to be less than $150 US per submission/trademark.

Trademark owners who lodge their marks with the Clearinghouse will obtain certain advantages and notifications during “sunrise” periods that will apply to registrations of second-level (to the left of the “dot,” such as “secondlevel” in secondlevel.BRAND) domain names within newly launched gTLDs. In addition, registrants of second-level domain names will receive (at least for some period of time) notifications of trademarks that are an identical match to their newly registered domain names. Second-level domain name registrants, though, are not prevented from registering the sought-after domain name based on registration of a trademark with the Clearinghouse. They are simply put on notice that the domain name may conflict with another’s trademark rights. Importantly, notice to domain name registrants will not be provided except where the match with a trademark is identical. So, if the second-level domain name contains a misspelling of a trademark, no notification will be given to the registrant.

5. Apply to Register Your Trademarks and Service Marks

Having federally-registered trademark rights will offer valuable protection as the new domain name system becomes a reality. To the extent that you are using or plan to use a trademark or service mark in connection with the offering of goods or services and have not yet applied for federal trademark protection, you should consider doing so now. A federal trademark registration provides many valuable benefits. To start, it provides the owner with rights on a national (as opposed to a regional) level. A federal registration also provides you with the exclusive right to use the mark on or in connection with the goods or services listed in your registration. In connection with the new gTLD system, a federal trademark registration will help to strengthen and reinforce your trademark rights. It will also establish ownership of a particular trademark and, therefore, standing, to submit a legal right objection or other challenge to an applied-for gTLD or second-level domain name.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

USPTO Preliminary Guidelines Spread Mayo on Patent-Eligibility

The National Law Review recently published an article by Christopher L. Drymalla, Jeffrey B. Swartz, Jeffrey S. Whittle and Michael R. Samardzija, Ph.D. of Bracewell & Giuliani LLP regarding Patent-Eligibilty:

A day after the United States Supreme Court delivered its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,1 the United States Patent and Trademark Office issued preliminary guidance2 instructing examiners to reject process claims that invoke laws of nature and only add steps which constitute “well-understood, routine, conventional activity” that is described in the most general of terms regardless of whether there is a transformation involved.

According to the Patent Office, although the “machine or transformation test” remains an “important and useful clue,” it is not to be considered “the sole or a determinative test” for eligibility as it does not “trump the ‘law of nature’ exclusion.” Moreover, the Mayo decision reinforces the need for a patent applicant whose claims include a law of nature, a natural phenomenon, or an abstract idea to ensure the “claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.” (emphasis in original). Although the guidelines put special importance on process claims as were at stake in Mayo, the guidelines appear to indicate this analysis may apply to all claims related to laws of nature, natural phenomena, or abstract ideas.

Neither the guidelines nor Mayo provide specific guidance for what would make a product or process significantly more than a law of nature, a natural phenomenon, or an abstract idea. Nevertheless, the Patent Office sees the claim at issue inMayo as a prime example of one which merely includes a highly general and conventional step of which patent examiners are expected to be more cautious.  As explained in the guidelines, the claims in Mayo emphasize the “law of nature” correlation between the concentration of the drug and its threshold limits for therapeutic effects and harmful side effects.

Simply adding the well-understood, routine, conventional actions of administering the drug and checking its blood concentration in the most general of terms, however, does not confer patent eligibility as the claims themselves are “effectively directed to the [law of nature] exception itself.” Based on the new guidelines, an examiner confronting a similar claim set is directed to reject the claim as non-statutory subject matter under 35 U.S.C. § 101 (utility or patent-eligibility requirement section). The guidelines do specifically note that the applicant in such a case will then have the opportunity to defend the claim and show why it is not drawn to the patentability exception itself. The applicant will have to rely on other claim limitations to support the argument.

The Patent Office’s guidelines suggest that the Mayo decision should be viewed as a cautionary tale for applicants who intend to direct claims to inventions which arguably incorporate the use of laws of nature, natural phenomena, or abstract ideas.

Should you have any questions, please contact your Bracewell & Giuliani LLP patent attorneys. We will, of course, keep you advised as to any new developments in this area.

_______________________________________

1No. 10-1150, 566 U.S. ___, 2012 WL 912952 (S. Ct. Mar. 20, 2012) (for a more thorough discussion of Mayo and the particular facts and determinations involved,see Update: Can’t Touch This – Supreme Court Finds Personalized Medicine Patent Claims Invalid, Bracewell & Giuliani LLP (Mar. 20, 2012).

2See Memorandum: Supreme Court Decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mar. 21, 2012).

© 2012 Bracewell & Giuliani LLP

BLUE IVY CARTER: What to Get a Child Who Has Everything? A Trademark Registration.

An article about Trademark Registration and Blue Ivy Carter by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. was recently published in The National Law Review:

Since the birth last month of their first child, Blue Ivy Carter, Beyoncé and Jay-Z are no doubt experiencing the typical joys of first-time parenthood.  Those first looks, smiles and coos.  But they are struggling with at least one parenting issue that most of us don’t have to worry about:  trademark protection for their baby’s name.  Beyoncé’s company, BGK Trademark Holdings, LLC, recently filed an intent-to-use trademark application for the mark BLUE IVY CARTER for use on a wide range of goods and services, including fragrances, key chains, baby strollers, jewelry, mugs, hair accessories, balls, product merchandising services and entertainment services, to name a few.  But Beyoncé was not the first applicant for the BLUE IVY CARTER trademark.  Two other entities beat her to the Trademark Office.

First, just days after Blue Ivy’s birth, Joseph Mbeh, a clothing designer, applied to register the mark BLUE IVY CARTER NYC in connection with infant, toddler and junior clothing.  The Trademark Office acted with unusual promptness in issuing an office action refusing registration of the proposed mark.  Though it typically takes the Trademark Office approximately 3-4 months to act on a newly filed application, it took only 14 days for it to refuse registration of the applied-for mark.  The examiner refused registration based on Section 2(d), citing a likelihood of confusion between the mark BLUE IVY CARTER NYC and a prior registration for the mark BLUE IVY for retail store services (a registration issued to Blue Ivy, LLC, a Wisconsin-based company, in August 2011, several months before the birth of Blue Ivy).  In so doing, the examiner concluded that the BLUE IVY and BLUE IVY CARTER NYC marks are similar because they both contain the words BLUE IVY and further noted that the applicant’s proporsed goods (clothing) are “closely related” to the registrant’s retail services.  The examiner also refused registration based on Section 2(a) on the grounds that the proposed mark falsely suggested a connection with Blue Ivy Carter, who the examiner described as a “famous infant” (who, at the time of the office action was a few weeks old).  The examiner proceeded to refuse registration based on Section 2(c), given that the proposed mark includes the name of a particular individual, Blue Ivy Carter, who the examiner characterized as a “famous individual, who is so well known that the public would reasonably assume a connection” between the baby and the trademark applicant.  Because Blue Ivy Carter is a minor, the applicant would need the consent of her parent(s) in order to overcome the refusal.  In response to the office action, and apparently recognizing that he may be unable to obtain the necessary consent from Blue Ivy Carter’s parent, Mbeh expressly abandoned his trademark application.

On January 20, 2012, another applicant, CBH By Benton Clothier LLC d/b/a Creative Business House LLC, applied to register the trademark BLUE IVY CARTER GLORY IV for use in connection with a wide range of fragrances and skin care products.  According to Creative Business House’s website, the company can “register[] your business, trademark[] your brand, create[] your samples & patterns and market your line to buyers”.   Interestingly, Creative Business House’s application asserts that the applied-for mark is already in use and claims that it first started using the mark in connection with the applied-for goods on February 14, 2011, approximately 11 months before the birth of Blue Ivy Carter.  Nonetheless, the trademark examiner (again acting with extraordinary promptness) issued an office action on February 2, 2012 refusing registration of the mark based on Sections 2(a) and 2(c) grounds (for the same reasons given in connection with the BLUE IVY CARTER NYC application).  The office action does not address the issue of the applicant’s alleged date of first use of the mark and, notably, does not include a likelihood of confusion refusal based on the prior registration of the BLUE IVY mark for retail services.

In light of these applications, what was Beyoncé to do but file her own trademark application in order to protect her baby’s name from third-party use?  It will be interesting to see if the previously registered BLUE IVY mark is cited as a bar to registration under Section 2(d) of the proposed BLUE IVY CARTER mark, as it was in connection with Mbeh’s application to register BLUE IVY CARTER NYC.  After all, using the examiner’s reasoning in refusing the register Mbeh’s mark, both BLUE IVY and BLUE IVY CARTER include the words BLUE IVY and are used/proposed to be used for closely related services/goods (Maybe Beyoncé should have conducted a trademark search before selecting her baby’s name so as to avoid this potential obstacle to registration!).  It will also be interesting to see whether the applicant for the BLUE IVY CARTER GLORY IV mark will be able to establish rights to the mark dating back to February 14, 2011 (as alleged), if challenged to do so. We hope that Beyoncé and Jay-Z were able to secure the <blueivycarter.com> domain name, which was registered using a privacy service on January 8, 2012, the day after Blue Ivy was born.  Notably, <blueivycartergloryiv.com> was registered on January 30, 2012 to an LCREALTY of Chicago and <blueivycarternyc.com> was registered on January 10, 2012 through a privacy service.

Ah, there is so much for new parents to think about these days….

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Peeled, Inc. Seeks Injunction, Damages in Trademark Infringement Suit Against Peeled Fruit LLC

This week’s featured blogger at the National Law Review is Jonathan C. Stagg of Stoel Rives LLP who writes an interesting tale about a fruity trademark infringement case. Read On: 

Peeled, Inc. (“Peeled”) www.peeledsnacks.com, a company specializing in healthy, natural snack foods including dried fruits and dry roasted nuts, recently filed a trademark infringement suit in the United States District Court for the Southern District of New York against Peeled Fruit LLC (“Peeled Fruit”) www.simplypeeled.com.  Peeled Fruit sells frozen soft-serve fruit, with fresh fruit toppings. Peeled alleges that Peeled Fruit is attempting to cash in on the brand awareness and goodwill associated with Peeled’s marks.

Peeled began marketing its products under the marks “Peeled,” “Peeled Fruit,” and “Peeled Snacks” as early as 2004. Since that time, Peeled’s marks have received extensive coverage in television and print media, including receiving a coveted spot on Oprah’s O List as one of Oprah’s favorite afternoon snacks, and receiving the 2008 “Best of Food” award from Health Magazine. Peeled registered the mark “PEELED SNACKS” on January 10, 2006 with the United States Patent and Trademark Office.

Peeled alleges in its complaint that long after it began marketing its products with the Peeled marks, Peeled Fruit began infringing on the marks by using the words “Peeled” and “Simply Peeled” in its marketing materials. Peeled argues that Peeled Fruit sells similar products with similar ingredients, and that as a result the products are confusingly similar. Peeled claims that Peeled Fruit had full knowledge of Peeled’s prior use of the marks, and that in spite of Peeled’s requests, Peeled Fruit has refused to cease its use of the marks.

Peeled alleges that Peeled Fruit not only knew about Peeled’s use of the marks, Peeled Fruit “adopted the trademarks with the intent to trade and capitalize on the goodwill generated by Peeled, Inc.’s extensive and widespread use of its trademarks, as well as its extensive sales, advertising and consumer acceptance and recognition.” Peeled argues that the similarities between the products sold by both companies make the shared use of the marks likely to cause confusion, mistake and deception among consumers.

As a result, Peeled is seeking an injunction against Peeled Fruit, which would restrict Peeled Fruit from further use of the marks. Peeled is also seeking a monetary damage award, under federal trademark law (15 U.S.C. § 1117), in an amount equal to either 1) three times the amount by which Peeled was damaged by the alleged infringement, or 2) three times the total profits Peeled Fruit obtained from the use of the allegedly infringing marks.  Finally, Peeled is seeking an order from the court, under 15 U.S.C. § 1118, requiring Peeled Fruit to destroy all materials that display the allegedly infringing marks.

Reposted with permission from Stoel Rives’ Essential Nutrition Law Blog.

Copyright 2010 Stoel Rives LLP

Authored by:

Jonathan Stagg is an associate practicing in the Corporate, Securities and Finance section of the firm’s Corporate group. Jonathan assists clients with mergers and acquisitions, business formation, public and private offerings, venture capital and general securities law compliance. www.stoel.com / 801-428-6338