News & Analysis as of

Domain Names Trademarks

“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

Top Ten Urban Legends of Intellectual Property

1. Poor Man’s patent/copyright: mail yourself a copy of what you want protected and don’t open it.The sealed information can then be used to prove ownership of the intellectual property contained in it. While this may...more

Public Use of “Googling” Does Not Genericize Trademark

by Dorsey & Whitney LLP on

When faced with a random (but very important) question, how often is our response: “I’ll google it”? Using google as a verb, similar to the above question, was at the center of a recent decision by the U.S. Court of Appeals...more

Ninth Circuit Confirms GOOGLE Is Not Generic

by Brinks Gilson & Lione on

On May 16, 2017, the Ninth Circuit affirmed the district court’s finding that the GOOGLE trademark had not become generic, providing guidance on preventing genericide. Elliott et al. v. Google, Inc., No. 15-cv-15809, 2017 US...more

AGG Food and Drug Newsletter - May 2017

by Arnall Golden Gregory LLP on

Arnall Golden Gregory LLP's Food and Drug Newsletter is a monthly update of legal and regulatory issues that affect the FDA-regulated community, including regular updates on legislative initiatives from AGG’s Washington, DC...more

WIPO - UDRP: Proof of bad faith registration crucial

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 denied the transfer of a domain name mainly based on the lack of evidence...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

New Internet Domain Available for U.S. Credit Unions

by Fox Rothschild LLP on

Credit unions in the United States now have access to a new top-level domain – .creditunion – for websites named to match an existing registered trademark. The “sunrise period” for the new domain runs from May 4 through...more

Navigating the Lifecycle of an Eponymous Brand (Part 3)

In this three-part series, we identified three distinct seasons in the lifecycle of an eponymous brand: (1) Choosing the Brand, (2) Commercializing the Brand, and (3) Legacy of the Brand. In Part 1, we discussed what is at...more

MarkIt to Market® | April 2017

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

Do You Want a “.health” Web Domain Name? Do You Want to Prevent Others from Using Your Trademark in a “.health” Web Domain Name?

“.health” (dot - health) is one of the newest domain extensions (also known as Top Level Domain, or TLD), reserved for brands, organizations, and people who provide health products, services, and/or information. The new...more

Here is How to Fix the UDRP

by Revision Legal on

Recently at Namescon I had the pleasure of watching three of my esteemed colleagues, Nat Cohen of Telepathy, Inc., Jason Schaeffer of Esqwire.com, and Zak Muscovitch of DNAttorney.com, examine three of the most shocking UDRP...more

.Health: What You Need to Know About the Internet’s Newest Domain Name

by Carlton Fields on

On May 8, the new .health Internet top-level domain opens up to members of the health care industry and will be awarded on a “first-come, first-served” basis. Below is what your organization needs to know about “.health.”...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: #14 - March 2017

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...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

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