News & Analysis as of

Domain Names

UDRP Proceedings: Solving Domain Name Disputes

by Revision Legal on

If a dispute arises over use and/or registration of an internet domain name, resolution of the dispute is accomplished through proceedings under the Uniform Domain Name Dispute Resolution Policy, known as UDRP proceedings,...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

Summer's Here, Don't Get Burned!

In May of 2014, this newsletter discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings (see "Scammers Still Be Scamming" here). Unfortunately,...more

Media Law Bulletin: Google: Everybody Does It Everywhere — But It’s Still Trademarked

by Sedgwick LLP on

The U.S. Court of Appeals for the Ninth Circuit recently held that the Google brand continues to enjoy trademark protection, notwithstanding that the word “google” has entered (maybe stormed) the popular lexicon to describe...more

MarkIt to Market® - July 2017

The July 2017 issue of Sterne Kessler's MarkIt to Market® discusses trademark and domain name scams and lists the new gTLD Sunrise periods. Please see full Newsletter below for more information....more

Who vs. What: 4 Steps to Prevent Your Trademark from Falling in the 'Genericide' Abyss

Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court...more

Intellectual Property Primer for Startups

by Revision Legal on

Many startup companies do not realize that their intellectual property (IP) rights are often their most valuable asset. Few startups have portfolios of real property or vast quantities of retail inventory and other physical...more

Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name

by Smart & Biggar on

A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain name transfer at a first...more

Do You Even Trademark, Bro?

Two Bros are competing over their Bro meal delivery services. Jamie Giovinazzo is the owner of Eat Clean Bro, LLC, a meal delivery service providing “a convenient service that is designed to bring chef-prepared meals right...more

China: Cybersquatter asks Chinese court to declare its own domain names invalid

by Hogan Lovells on

The Beijing Haidian District People’s Court has recently heard a case in which a domain name registrant requested the court to declare its domain name registration contracts invalid. In this somewhat unusual case, the court...more

No Trademark Genericide: GOOGLE Is Not “a Google”

by McDermott Will & Emery on

The US Court of Appeals for the Ninth Circuit made a point to remind trademark litigants of the relevant laws and policies pertaining to trademark “genericide” when it sustained summary judgment in favor of ubiquitous search...more

Wait… “GOOGLE” is Not a Generic Word?

by Field Law on

Is Google a brand or just a word meaning “conduct an online search”? A trademark can suffer “genericide” when it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous...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

Master of Your Domain – ACPA Damages Sought by Greg LeMond

by Dorsey & Whitney LLP on

You might want to think twice before registering a domain name containing a competitor’s personal name or trademark. Three-time Tour de France winner Greg LeMond put his “pedal to the metal” recently, suing two Minnesota...more

Time to re-visit the 2-year time bar in a .CN complaint?

by Hogan Lovells on

Unlike the Uniform Domain Name Dispute Resolution Policy (UDRP), the CNNIC ccTLD Dispute Resolution Policy (CNDRP) – the dispute resolution policy governing the .CN domain in China – sets a time bar which stipulates that no...more

Welcome to the WIPO overview 3.0

by Hogan Lovells on

The World Intellectual Property Organization (WIPO) has recently updated its WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the previous edition of which (WIPO Overview 2.0) was published in 2011....more

MarkIt to Market® | June 2017

The June 2017 issue of Sterne Kessler's MarkIt to Market® discusses bad word brands, strategies for dealing with trademark office suspensions, and lists the new gTLD Sunrise periods. Please see full Newsletter below for...more

“GOOGLE” Survives Attempted Genericide

On May 16, 2017, the Ninth Circuit affirmed Google Inc.’s summary judgment win in a lawsuit that sought to cancel the GOOGLE mark on the ground it has become generic. In early 2012, David Elliot registered 763 domain names...more

United Airlines Grounds Complaint Website

by Bennett Jones LLP on

A joke does not work if it needs to be explained. While some complaint and parody websites may constitute fair dealing, close copying of trademarks and copyrighted works, combined with mean-spirited commentary, will not fly....more

“I googled it”: Generic Words and Trademark Rights

by Field Law on

A registered trademark can suffer "genericide" if it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service....more

Trademark Law & Genericide: Google's Not Dead Yet

by Lewitt Hackman on

Domain name registration is usually a good first step to cement trade name and mark ownership. In a previous blog we reminded readers that possession, even in Intellectual Property matters, is nine-tenths of the law...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

US: Amazon wins tax dispute over cross-border IP transfer, but favorable tax treatment may no longer be available

by Hogan Lovells on

Earlier this year in Amazon v. Commissioner, 148 T.C. No. 8 (March 23, 2017), the U.S. Tax Court issued a 207-page decision largely upholding Amazon’s tax treatment of an intellectual property transfer in 2005 and 2006 from...more

Even GOOGLE Can Google After All

by Fish & Richardson on

In a well-reasoned opinion, the 9th Circuit Court of Appeals recently held that the GOOGLE trademark has not suffered death by genericide – even if the public uses it as a verb for searching the Internet. The case before...more

MarkIt to Market® | May 2017

The May 2017 issue of Sterne Kessler's MarkIt to Market® discusses social media influencers' disclosure of material connections, business transfer clauses, and lists the new gTLD Sunrise periods. Please see full Newsletter...more

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