Domain Names

News & Analysis as of

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

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

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

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

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)

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

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

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

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

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

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

A Top 10 Dispute in China

China Business Law Journal has recently announced its ‘Deals of the Year 2016’ recognizing cases that saw the most sophisticated efforts by legal counsel. And as a result our work for Tencent has been recognized as one of the...more

UK, US, HK and China – Access denied: an international perspective on ISP blocking injunctions

While the UK Court of Appeal has opened the door for broadband ISP blocking to combat trademark or copyright-infringing activities, the picture in the United States, China and Hong Kong is more complex. Please see full...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 see our...more

Trademarks - New Year, Clean Start

As 2016 draws to a close, now is the perfect time to slow down (or at least try), wrap up loose ends, and plan for the promise and possibility of a new year. For businesses, the holidays are a particularly good time to...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 see our...more

MarkIt to Market® - November 2016

The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most...more

The Evolving Internet of Things and Its Risks for Business Consumers

The recent distributed denial of service (“DDOS”) attack on domain name service provider Dyn is likely to result in greater scrutiny by regulators and lawmakers of the potential risks associated with the increasing use of the...more

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