News & Analysis as of

Domain Names

Three Point Shot - April 2017

by Proskauer Rose LLP on

Premier League Takes the Pitch in Fight against Pirated Streams - The United Kingdom's most popular soccer league is using skillful legal tackling to maintain possession of its intellectual property. The Football...more

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please contact us...more

Court of Appeal gets digital

by Dentons on

On March 27, 2017, the Court of Appeal for Ontario released its endorsement in Boaden Catering Limited v. Real Food for Real Kids Inc., which concerns a dispute over domain name registrations. The upshot of the decision is...more

MarkIt to Market® | March 2017

The March 2017 issue of Sterne Kessler's MarkIt to Market® discusses using building signage to support service mark registration, navigating the lifecycle of an eponymous brand, and lists the new gTLD Sunrise...more

UDRP: An alternative to traditional litigation

by McAfee & Taft on

Imagine for a moment that after investing time and money in branding and marketing your product or service, someone registers a domain name that matches your trademark. Now imagine that the owner of the domain name will only...more

Lettre d’actualité IPMT – Français

by Hogan Lovells on

Brevets - Déclaration de non-contrefaçon et compétence territoriale du juge français - Le Tribunal de grande instance de Paris est compétent pour connaître d'une action en déclaration de non-contrefaçon des parties...more

Trademark Owners Beware of Chinese Domain Name Marketing Ploy

by Jaburg Wilk on

Some e-mail marketing ploys are pretty clever and some spam or phishing attempts brilliantly disguised as valid e-mail. While there are many great reasons to register your trademark with the United States Patent & Trademark...more

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please contact us...more

MarkIt to Market® | February 2017

The February 2017 issue of Sterne Kessler's MarkIt to Market® discusses navigating the lifecyle of an eponymous brand and lists the new gTLD Sunrise periods. Please see full newsletter below for more information....more

The State of Domain Names

The World Intellectual Property Office (WIPO) has released its 2016 Uniform Dispute Resolution Proceedings (UDRP) statistics. The overall number of new cases increased by 10 percent over the previous year. WIPO indicates...more

Avoiding trademark and domain name scams

by Dentons on

As a brand owner, you understand the importance and value of your proprietary brands, whether they be words, logos, tag lines, unique packaging or distinctive uses of colour. You may have also taken steps to apply for Federal...more

Trademark Scammers Abound

There are still a number of entities out there trying to trick trademark owners into spending money to list their marks in various on line and print directories by sending official looking invoices and other paperwork. In...more

Judge gives .AFRICA the green light to proceed

by Hogan Lovells on

As previously reported here, the Internet Corporation for Assigned Names and Numbers (ICANN) has been sued by the disgruntled new generic Top Level Domain (gTLD) applicant, DotConnectAfrica, in order to prevent the delegation...more

France: No requirement for a domain name to be distinctive in unfair competition claims

by Hogan Lovells on

In a decision of 6 December 2016, the French Supreme Court of the Judiciary (“Cour de Cassation”) provided a very useful clarification in relation to unfair competition claim (“concurrence déloyale”, a tortious action) based...more

gTLDs: The luck of the .IRISH

by Hogan Lovells on

The Internet Corporation for Assigned Names and Numbers (ICANN) launched the application process for new generic Top Level Domains (gTLDs) in January 2012.  The new gTLD program resulted in an unprecedented expansion of the...more

Ross’s Top 10 Law Firm Domain Name Mistakes (Part II)

by Ross Fishman on

Last week I discussed Ross’s Domain Name Rules 1-5, how to ensure that your website is easy for prospects to find, and that you’re using best practices in selecting your domain name. Here are Ross’s Rules 6-10; I hope it’s...more

WIPO - France: Domain name used for cyber fraud

by Hogan Lovells on

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel ordered the transfer of a domain name because, although it had never been...more

The Designer Formerly Known As…Intellectual Property Issues Arising From Personal Names As Fashion Brands

by Ladas & Parry LLP on

Kate Spade, Paul Frank, Joseph Abboud, Catherine Malandrino, and Karen Millen—aside from being well-known designers, all have something else in common; they no longer own the right to use their personal names as their brands....more

Key Takeaways: IP 101 for Non-IP Counsel

Kilpatrick Townsend Partner Allisen Pawlenty-Altman and Associate Kate Gaudry Ph.D. recently participated in an interactive panel — “Technology and IP Forum: IP 101 for Non-IP Counsel” — presented by the National Capital...more

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please contact us...more

Ross’s Top 10 Law Firm Domain Name Mistakes

by Ross Fishman on

What’s Your Law Firm’s Domain Name? YourName.com - Back in the mid-90s, we were just starting to develop the first law firm websites. As Marketing Partner of Ungaretti & Harris in the mid-1990s, I remember the...more

MarkIt to Market® | January 2017

The January 2017 issue of Sterne Kessler's MarkIt to Market® includes an overview of the TTAB's recent surname decisions, the changes made by the USPTO to their trademark processing and services fees, and lists the new gTLD...more

Keyword Advertising Decision Reversed on Appeal

by Smart & Biggar on

In August 2015 we reported on the decision of the British Columbia Supreme Court (“BCSC”) in Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470. That decision was notable in Canadian...more

Sue-per Bowl Shuffle III: The Year In NFL-Related Intellectual Property Litigation

Two years ago, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those intellectual property lawsuits that sports fans assume IP...more

Resolve to Strengthen Your IP Rights: Foolproof Exercises for 2017

by Dickinson Wright on

Protecting your intellectual property has never been easier or more cost-effective, even if you engage outside counsel. Whether you are positioning your company for sale or expansion or simply want to step up your game, here...more

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