New TLD Update: Navigating Somebody Else’s Gold Rush

by T+B Blog Team on September 16, 2014

New gTLDs—The Challenge for IP Professionals

ICANN’s announcement that it would expand the Internet with thousands of new Top-Level Domains was accompanied by a burst of hype: a new Gold Rush will dawn. Entrepreneurs lined up to make their fortunes. But the hype was met with a mixed reaction from IP professionals responsible for defending brands who wondered if these new fortunes would be made at their expense. ICANN addressed these concerns by creating the Trademark Clearinghouse (TMCH). But would brand holders still face a new surge of cybersquatting—this time with far too many TLDs to attempt an old-fashioned strategy of “register everywhere just in case”? Where should they focus their time and money? The TMCH is a good tool, but how can it be used to best effect? (See our recent post on best use of the TMCH). Now that some 250 new TLDs have launched and are starting to develop real-world track records, what lessons can the IP professional learn?

The first step is to distinguish between protecting a brand and registering a domain for use. If you want to use a URL, it’s simple: first and last, does the domain fit? How many of today’s URLs, even company names, are the result of trying domain after domain, less and less attractive, only to find them all registered—until you end up with one that you would never have considered at the start of the process? For example: you make furniture and you cannot get your brand or marketing term in .COM. Your team is growing desperate as they consider second, third, fourth choices—awkward variants or obscure international country code TLDs. If ‘yourbrand.furniture’ suddenly makes them cheer up, it has clear and substantial value. Register it! Use it! Who cares if the TLD itself has few registrations if the domain serves you well? [click to continue…]

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Back in May, clothing company Blue Sphere Inc., which does business as Lucky 13, sued singer Taylor Swift for trademark infringement over the use of “Lucky 13.” Thirteen happens to be the singer’s lucky number: she was born on December 13, uses the number in her Twitter account name (@taylorswift13), and in the past sold t-shirts on her website emblazoned with “Lucky 13″. The clothing manufacturer, whose clothes are aimed at the same demographic Swift appeals to, claimed that Swift’s use of the trademark is damaging its business,.

Last week, Swift’s legal team fired back, stating in court documents: “… the alleged uses of ‘Lucky 13′ are so drastically and obviously different that there’s no chance that any consumer could possibly be confused about the source of the goods.” The court documents go on to say that the differences in style and “purpose,” combined with the use of the singer’s name eliminates any chance of customer confusion.

When Lucky 13 originally filed the suit, Jess Collen wrote in Forbes: “The obvious legal defense here would be that no trademark use is being made of “Lucky 13,” but that this is just a favorite phrase well known to fans of the defendant, and not likely to confuse anyone. But a favorite phrase is not necessarily free for use if someone else has claimed it first.”

There are often attempts to trademark commonly used phrases like “Lucky 13” (read about “honest to goodness” and the battle over “app store”). And, not surprisingly, trademarks including numbers are common (e.g., Boeing 737, 747, etc.). Even that phone number made famous by Tommy Tutone — 867-5309 — has been registered as a trademark in the U.S. by a plumbing and heating business.

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Wine in a Paint Can Sparks Trademark Infringement Suit

September 11, 2014

Tweet Packaging wine in a paint can sounds pretty original, doesn’t it? Pennsylvania-based Paradocx Vineyard has been selling wine in a paint can since 2007 and owns patents on the can design and trademarks for two of its clever brand names: Pail Pink and Whitewash. The vineyard was surprised to find out that the McCann […]

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Twitter Hashtag Trademarks: #whatsthedeal

September 10, 2014

Tweet Dez Bryant, a wide receiver for the NFL’s Dallas Cowboys, filed a trademark application last month for his Twitter hashtag, #ThrowUpTheX. For those who haven’t seen Bryant celebrate when he scores a touchdown, he throws his arms up in the shape of an “X.” His trademark filing with the USPTO is in International Class […]

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Twitpic Shutting Down Over Trademark Dispute With Twitter

September 9, 2014

Tweet On September 25, photo-sharing website Twitpic will shut its doors. In a blog post published on September 4, company founder Noah Everett wrote: “Unfortunately we do not have the resources to fend off a large company like Twitter to maintain our mark which we believe wholeheartedly is rightfully ours. Therefore, we have decided to […]

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NgTLD Update: .XYZ In The Lead, .MARKET, .WALES, & More

September 4, 2014

Tweet Highlights This week we see the launch of: Two new Rightside ‘Regulated’ TLDs (.MARKET and .MORTGAGE) Five new Uniregistry Sunrises (.CLICK, .HOSTING, .PROPERTY, .DIET, and .HELP) New georaphic TLDs .WALES and .CYMRU (Proud Welshpersons take note: general availability starts March 1, the day of St. David, patron saint of Wales!) .QUEBEC .BZH for the […]

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It’s New York Fashion Week: Let’s Look at Fashion Trademarks

September 3, 2014

Tweet Mercedes-Benz Fashion Week starts tomorrow in New York City so we thought it was time to take a look at recent fashion trademark stories. First up is designer Roberto Cavalli, who is being sued for copyright infringement and violations of the Lanham Act by three graffiti artists who claim their work was used in […]

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The ALS Association Withdraws “Ice Bucket Challenge” Trademark Applications

September 2, 2014

Tweet What a difference a day makes! Just as the media picked up the story that The ALS Association (ALS) had filed trademark applications for its wildly popular “Ice Bucket Challenge,” the association announced the withdrawal of the applications the following day. Here’s the August 29th announcement on the ALS Facebook page: “We’ve received several […]

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Denver Brewery Changes Name Over Threat of Legal Action

August 28, 2014

Tweet Just three months after its launch, the Denver Pearl Brewing Company is going to change its name, following complaints from two other breweries that claimed the company’s name sounded too similar to their own brands, according to The Denver Post. The company’s owner and general manager, Colby Rankin, commented that before selecting a name […]

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KIND and Clif Bar Involved in Trade Dress Infringement Case

August 27, 2014

Tweet Healthy snacks producers KIND LLC and Clif Bar & Company met in court to settle an alleged trade dress infringement regarding the packaging of their respective snack bars, Lexology reports. According to KIND, its unique packaging design incorporates a transparent front panel which allows customers to see the product itself. When KIND noticed Clif’s […]

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