Duets Blog : Creativity and the Law: DuetsBlog

In reading news of the passing of Fred Morrison, inventor of the Frisbee ®, I was surprised to learn that the Frisbee wasn't always called "Frisbee."  Morrison sold his rights to Wham-O in 1957 ("sold" being used loosely -- he apparently earned more than $2M in royalties).  Morrison had dubbed earlier prototypes of the flying disc with the following names:  the Pluto Platter, the Whirlo-Way, and Flyin-Saucer.  Morrison's reaction to Wham-O's name of Frisbee?  "I thought the name was a horror."  He later recanted.   According to CNN, Wham-O's inspiration for the Frisbee name was the Frisbie Pie Company, whose pie tins were apparently used by college students as early flying discs. 

So, let the speculation begin:  how much is the success of the Frisbee due to the name, and how much is due to everything else (design, functionality, enjoyment, etc.)?  Although it is probably impossible to ever know the answer, I submit that a good name is probably worth at least 10% of sales.  (The above reports peg sales at 200 million units.)  Is there a rule of thumb in the marketing industry for this, or is anyone aware of any studies that have attempted to quantify this?  I also note that Frisbee is a solid, almost staccato two-syllable word, like iPod, Apple, Sony, Honda, Nike, Kindle, and many other popular brands that seem to have staying power.

By the way, you want horror?  How about the horror of this:  point your browser to frisbee.com.  Go ahead, try it.  As of this writing, it redirects to this page--a big pay-per-click page of flying disc ads, none of which mention "Frisbee."  The page is titled, FLYINGDISCS.ORG, with the subtitle, "Ashes fly back into the face of him who throws them."  Sounds like there may be some bad blood there!

I should also point out the "horror" of the name "Frisbee Golf," both from a trademark standpoint and as an avid player in the game of disc golf.  While I am generally a fan of Wham-O products, I think Wham-O was a little late to the modern incarnation of disc golf and the specialized discs used in the sport, which are substantially smaller and flatter than a traditional Frisbee disc (think Ultimate Frisbee) with a heavy, hard rim.  I daresay Wham-O would not take kindly to the Professional Disc Golf Association changing its name to the Professional Frisbee Golf Association.  (FYI, two of the more popular brands in the disc golf biz are Innova and Discraft.)

And the real geeks can see Morrison's original design patent here, and the later utility patent for the distinctive grooves that appear on the shoulder of Frisbee discs here.  (Distinctive?  Yes.  Trademarkable?  No, because the grooves are functional.  I'll spare you the calculus that explains the aerodynamics . . . for now.)

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Similar to the Hostess Brands, Inc. predicament, recently posted by Dan Kelly, Goodwill Industries International, Inc. (www.goodwill.org), the well-known and respected non-profit, didn't own the one domain you would expect -- Goodwill.com.

The domain went up for auction this past December after the original owner, a Japanese staffing company named Goodwill Group, Inc., changed its name and allowed Goodwill.com to expire. 

Instead of seizing the opportunity to own and control this element of their brand by simply buying it at auction, Goodwill Industries gambled, in my opinion, by trying to stop the auction. Ultimately, they lost their request as well as the domain. Their next act was to sue the owner of Goodwill.com for trademark infringement and violation of anti-cybersquatting protection act, amongst other claims.

As reported by Domain Name Wire, this month the case was dismissed without prejudice and the Goodwill.com domain finally went to Goodwill Industries. Although this resolution is good for Goodwill, not owning Goodwill.com earlier denied them the domain during the key December donation period, and, potentially, could have proven a very expensive and lengthy process to resolve.

Since monitoring a domain is relatively uncomplicated, it is puzzling why Goodwill industries would allow Goodwill.com to get away so easily. As a brand manager, I am surprised Goodwill wasn't more vigilant or diligent in pursuing and protecting something so apparently associated with their trademark and their brand.

The goodwill (pun intended) a domain name inures to a brand cannot be overemphasized. One of the more important aspects of branding is presence. On the worldwide stage of the Internet, domains perform a leading role in brand proliferation. 

A domain dispute and the associated confusion, as in this case, was unnecessary, considering resolution could have been reached without extraordinary effort and without hunting for legal remedy.

—Randall Hull, The Br@nd Ranch® 

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As reported by the Star Tribune, the first B. Dalton Bookseller bookstore will be among the last to close:  the B. Dalton bookstore at Southdale Center in Edina, Minnesota closes tomorrow after a 44 year run. 

Even if a bit sad for the sentimentalists among us (and I am one) to watch another relatively longstanding brand go down in chains, so to speak, this was not altogether unpredictable given modern book retailing.  The B. Dalton brand has virtually no online presence whatsoever.  The domain names bdalton.com, bdaltons.com, bdaltonbooks.com, bdaltonbookseller.com, and bdaltonbooksellers.com, all appear to be parked with pay-per-click pages.  Of the thirty or so trademark registrations in which B. Dalton had an interest at one point or another, twenty-six of them have lapsed or been canceled.  Parent company Barnes & Noble has openly discussed the "controlled descent" of B. Dalton stores in recent annual reports.  The store closing at Southdale is not even the original store that opened there--it moved to a more remote locale within the mall years ago.

Karen's recent posts on the death of the Tavern on the Green have raised some of the same issues at play here:  whither the B. Dalton brand?  One thing that distinguishes the two cases, in my mind, is that the Tavern on the Green brand is reportedly valued at $19 million.  (Query:  how does a company with one business location and a $19 million asset go bankrupt?)  At its height, the B. Dalton brand might have been worth millions, but now it is probably synonymous with "mall-based bookstore with slow sales."  Perhaps it might appraise at a few hundred thousand dollars, but an estimate is not worth very much if there is no buyer.  So long B. Dalton!

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Among the most ingrained Christmas traditions I recall from my youth was watching the Charlie Brown Christmas Special every year.  For many, many years, that Special was "brought to you by Dolly Madison."  (And it was always preceded by this intro--a classic!) 

Dolly Madison is but one of many brands owned by Hostess Brands, Inc., f/k/a Interstate Bakeries.  Hostess Brands has a number of well-known brands related to breads and cakes, including Hostess, Wonder, Holsum, and Beefsteak, among many others.  I would place HOSTESS and WONDER in the category of famous trademarks, and several of the company's other brands are probably regionally famous. 

So I was really surprised to learn that Hostess Brands does not own hostess.com.  In fact, just last month, Hostess Brands lost a UDRP arbitration to obtain that domain name from Domain Capital. (Opinion here.)  Steve Levy has an excellent analysis over at The FairWinds Blog.  I don't know if it is a deliberate association, but FairWinds also has a sidebar poll asking who among a company's legal, marketing, and IT departments should take the lead in managing domain name resources?  (Poll results here.)  I think there is no universally correct answer, except that the job should be done and be done well.  A company like Hostess Brands should not have been the last one to the party in securing the hostess.com domain name, and when it comes to domain name rights, last place is usually any place other than first place. 

Tip of the hat to the ESQwire.com law firm, which represented Domain Capital, and best of luck to Hostess Brands.

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A recent domain name decision under ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP Policy), captioned Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator, found reverse domain name hijacking, under some rather interesting, if not questionable circumstances. The Rules that govern the UDRP Policy define Reverse Domain Name HiJacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." 

What caught my eye was the three-member panel's use of the ill-fated "knew or should have known" phrase in finding the requisite "bad faith" for hijacking; a phrase well-known to those who follow the trademark fraud case law and appreciate that recently this same "should have known" standard was flatly rejected by the Court of Appeals for the Federal Circuit (CAFC) in In re Bose, as being nothing more than a test for simple negligence. For more on the In re Bose decision, see here and here.

The Bin Shabib & Associates three-member panel, assigned by NAF, was unpersuaded that complainant had proven common law trademark rights in the acronym BSA (under the first UDRP element), so it declined -- as unnecessary -- to make any findings on the second and third elements under the UDRP, namely, the "lack of legitimate interest" and "bad faith" elements. Despite making no findings on either of these two key elements, the panel held as follows:

Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”) (emphasis added).

A couple of curious points are worth discussion. First, putting aside for a moment the dubious "should have known" standard of bad faith, how can complainant be guilty of "bad faith" -- sufficient for hijacking -- in failing to appreciate that it had no chance of proving the very two elements for which the panel made no findings? Second, neither of the quoted parentheticals go far enough to support the quoted  "should have known" standard; instead, both speak only of actual knowledge.

As it turns out, however, there is some prior WIPO panel support for the "should have known" standard in finding "bad faith" sufficient for reverse domain name hijacking. Nevertheless, in each of these decisions, the panels made findings on all three UDRP elements before finding "bad faith" and ruling in favor of a claim for reverse domain name hijacking, see here, here, and here.

So, what do you think? Is the "should have known" standard defensible in reverse domain name hijacking decisions? If not, what about gross negligence? How about reckless disregard? What is the appropriate level of culpability? Does it even matter, or is a hijacking finding "of little import" to most complainants?

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If you are having any trouble with gift ideas this year, here is a novel idea:  give a domain name.  DomainRegistrar.info has published the results of a survey it conducted suggesting that there is an increased demand for domain names as gifts.  While I have some reservations about the rigor of the survey, a domain name could well be an interesting and unique gift for that someone in your life who may be a bit difficult to shop for.

The report suggests that "personalization" is the leading characteristic making a domain name a good gift.  Many unique or personalized domain names can probably still be had for less than $10 per year.  If you want to give a domain name as a gift that may give in other ways, for instance, as a potential investment vehicle, give one that is generic or a collector's item.  (See here for year-to-date top domain name sale prices.)  A domain name might even be a creative business-to-business gift, but probably best given with prior approval or as a gift card. 

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I have never participated in early morning Black Friday sales.  For me, those hours each year are most often spent peacefully enjoying the last fruits of a tryptophan-induced slumber.  It is not just a lack of interest, either.  There is a bit of loathing mixed in.  For instance, my goal for the last two year's shopping seasons was not to go to the largest mall in the area.  Increasingly, when I shop, as I stand in lines, fight traffic, and not find what I'm looking for, I repeatedly arrive at a conclusion I need to recall before I step out the door:  shop online. 

The interesting thing about shopping online, though, is the overwhelming number of options.  Comparison shopping conventional retailers' online stores can sometimes be as time consuming as physically running from store to store.  On the other hand, online clearinghouses don't always inspire confidence.  It seems that many retailers are a bit slow at comprehending where some of the future value lies on the Internet, but not all.  Toys 'R Us has figured it out:  it owns toys.com and etoys.com. 

Here's a brief survey of websites residing at some "generic" domain addresses pertinent to the season, roughly in order (as of this writing) of least developed to most developed:

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This reminder is a bit late for new Christmas-season consumer products, but it bears repeating year round, as companies contemplate new products:  buy domain names associated with a new product before announcing the new product.  This seems like an obvious thing to do, but I regularly read stories where companies fail to perform this step of a new product launch, then have to go and spend thousands of dollars to secure related domain names that could have been purchased for perhaps $10 per year prior to launch. 

The latest lesson comes from the otherwise savvy Apple Inc., who just won an uncontested UDRP arbitration on the domain name "ipodnano.com."  As flagged by Domain Name Wire, Fusion Media Ltd. registered ipodnano.com two days before Apple announced the product.  In order to win a UDRP arbitration, the complainant must show that the respondent both registered and used the domain name in bad faith.  Having registered this particular domain name a mere two days before the product launch suggests that Fusion Media either (1) made a fortuitous guess, or (2) heard advanced news about the new product.  Even if Fusion Media's guess on the "nano" part of the name was completely in good faith, the "ipod" part of the name was not.  Fusion Media did not respond to the UDRP arbitration complaint, so we may never know, but it is interesting to note that Apple apparently only asserted its trademark rights in IPOD in the arbitration.  (And, as I think of it, maybe Apple isn't so savvy . . .)

To borrow a phrase from Steve Baird, other examples of this sort of thing can be found here, here, and here. 

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A bomb exploded in the domain name aftermarket world on Wednesday.  A well-known domain name auction house called SnapNames.com announced that one of its (now former) employees had been bidding as a shill in many online domain name auctions run by the company since 2005.  SnapNames has an FAQ page on the matter here. 

It is not difficult to decry the many abuses that have gone on in the domaining industry:  cybersquatting, typosquatting, domain name tasting, domain name kiting, pay-per-click fraud, and now shill bidding (to name a few).  As these abuses tend to make for the juciest news, it is not surprising that some (including trademark attorneys) accuse the whole domain name business (or "industry") of being dirty.  But law, being a generally slow, blunt instrument, has so far caught up with only the first two of the abuses listed above.  What is less widely reported is that, for all of its wild-westness, the DN business has policed itself (e.g. cybersquatting, domain tasting) without resort to government intervention.  This is as it should be. 

Even so, self-policing is also slow to catch up to opportunists, so caveat emptor is the rule of the day in domain name transactions, especially when bidding at an auction, especially an online auction.  I recommend reading any auction site's rules, terms and conditions carefully before engaging in a transaction.  Some of these sites will readily represent both buyer and seller, which is a situation well-known to lawyers and real estate agents as a "conflict of interest."  Caveat emptor, indeed. 

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Last week, a group calling themselves The Yes Men apparently perpetrated an elaborate hoax to usurp the corporate persona of the United States Chamber of Commerce, to the point of publishing a fake website and holding a press conference at the National Press Club, posing as the Chamber itself.   (Image of genuine website here.)

As reported at Betanews (and elsewhere), representatives of the real U.S. Chamber of Commerce became aware of the hoax in time to actually interrupt the faux press conference, under the auspicies of which the pranksters were announcing an about-face in the Chamber's previously-stated positions on climate policy.  As of this writing, the Betanews article has a six minute video of the press conference as it is interrupted by a genuine representative of the Chamber.  It is interesting to see how close the hoax came to actually duping real members of the press.  (Of those in attendance, apparently four actual reporters were naive to the hoax, and they reported for the Washington Post, Reuters, and Greenwire.  Some of those attending were allegedly plants.)

On Monday, the U.S. Chamber of Commerce sued The Yes Men for a host of trademark-related torts, including trademark infringement, unfair competition, trademark dilution, false advertising, and cyberpiracy.  (PDF of complaint here.)  They even worked in an allegation of counterfeiting.  (Had I drafted the complaint, I would have used the word "counterfeit" as often as possible.)  While I reserve judgment as facts develop, the information publicly available now suggests that the Chamber has a strong case.  The Yes Men seem to be leaning towards some sort of a free speech defense.  The complaint suggests that The Yes Men perpetrated the hoax in an effort to publicize their new movie.  Whether this is the case, or whether this was an actual effort to deceive people, I don't see much traction for a free speech defense, which requires at a minimum that the speech in question not be misleading.  This should be a fun case to watch!

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Trademark Infringement is a sticky subject online. Our first blog talked about Twitter and trademark infringement and today I want to address trademark infringement in relation to affiliate marketing. 

Affiliate Marketing is a process that rewards a blog or website for every customer that is brought to the company (the affiliate) that blog or website is promoting. The goal of the affiliate marketer is to bring visitors to the affiliate’s website in efforts to sell the affiliate’s products or services. Affiliate marketers will try numerous things in efforts to market these products or services in efforts to make money. In the past there have been lawsuits brought against marketers like this due to improper claims they were making about a product or service, who endorsed it, and if it worked. 

In August, a complaint like this was filed against not only the affiliate marketers but the affiliate as well. The claim is that the affiliate should be monitoring any and every marketing vehicle and message that is used in relation to its product.

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I assume that most readers have heard that the universe of Internet domain names may be expanding next year.  Instead of being limited to a finite number of relatively mundane top-level domain extensions like ".com" and ".org," ICANN is planning to allow for the registration of any string of characters to the right of the dot.  These plans have been in the works for a while, and just this week, ICANN released the latest version (version 3 for those keeping score at home) of the "Draft Applicant Guidebook."  This version is publicly available here, and ICANN is taking comments on the contents of this draft through November 22, 2009.  Speak now or hold your peace (at least until the next draft comes out).

I have previously observed that the world of Internet domain names bears some semblance to the proverbial "Wild West."  I have also expressed some doubts about the prudence of opening up the gTLD space.  At the risk of being Dr. No, I see a host of potential problems for trademark owners, based principally on current abuses.  Even so, the gTLD roll out process provides at least some opportunity for taking a broader view of the possibilities, both good and bad, and stakeholders should pay attention now and weigh in before it is too late.

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As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

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A couple of weeks ago, news reports came out that KB Toys, which had filed for bankruptcy in December, sold its trademarks and domain names to a company called CE Stores LLC for $2.1 million.  Last week, Toys "R" Us disclosed that it owns CE Stores.  While this may be somewhat unremarkable, consider that Toys "R" Us has made the following other moves this year:

• In February, it purchased eToys.com, babyuniverse.com, and ePregnancy.com for an undisclosed amount.
• In March, it purchased Toys.com for $5.1 million.
• In May, it purchased FAO Schwartz for an undisclosed sum.

Well, looks like all of our toys now belong to Toys "R" Us.  Let's hope they don't pick them up in a huff and go home.  I am fairly certain that there are no other national bricks and mortar toy retailers left (not counting department stores), and I wonder if the Federal Trade Commission will snoop around for antitrust compliance issues.  (Toys "R" Us has been down that path before.)  In the meantime, good luck finding competitive deals on toys!

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When it comes to scope of rights and trademark enforcement, as a trademark type, it's hard not to admire Adidas' success in preventing the use of two, three, and four stripes, when its long-standing federally-registered design mark consists of three stripes.

At least in the U.S., Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol, so advocates for Adidas might say 2, 3, or 4 stripes, and you're out (of luck anyway).

(For some great coverage on Adidas' recent trademark enforcement activities, check out Seattle Trademark Lawyer).

How can it be then (within the hospitality industry), that no analogous buffer exists between 4&5, Motel 6, Big 7 Motel, Bel-Air Motel 7, Big 7 Motel (Chula Vista, California), Big 7 Motel (Valdosta, Georgia), Magnificent Seven, Seven Days, Super 8, and National 9 Inn, with them all happily coexisting (apparently) without any likelihood of confusion?

(Also, how can it be that Super 8 (apparently) doesn't control the Super8Inn.com domain?)

Perhaps it all comes down to what your trademark strength and likelihood of confusion analysis happens to count, stripes or numbers . . . .

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In giving advice in the field of intellectual property, one hackneyed phrase repeatedly crosses my lips:  an ounce of prevention is worth a pound of cure. 

When it comes to protecting a brand or trademark on the Internet, I may start saying, "an ounce of prevention is worth a ton of cure."  A couple of weeks ago, the Corporation Service Company released the results of a study that found, among other things, that brand owners had spent more than $220 million to obtain domain names from third parties through the UDRP dedicated arbitration process.  The study found that if the brand owners had registered the disputed domain names privately (prior to the third party doing so), the costs to obtain the domain names would have been approximately $1.1 million.  An ounce of prevention, indeed.  That is a 200:1 ratio. 

As I noted previously, the going rate for a domain name registration for one year is somewhere around seven to ten dollars (retail, not wholesale).  At the National Arbitration Forum, the cheapest filing fee to initiate an arbitration on a single domain name is $1,300.  Attorney's fees to prepare a UDRP complaint will typically run anywhere from a couple to several thousand dollars.  Given the cost disparity, I think that a brand owner is well advised to sit down and contemplate this question:  "What domain names would I spend several thousand dollars to obtain if a third party came along and started using them to advertise confusingly similar goods or services?"  The domain names that answer that question are the domain names that the company should go out to register proactively.

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Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

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Back in April, I explained a little bit about how typosquatters can capitalize on direct navigation Internet traffic.  I offered an example of the "omitted letter" typo:  www.kellggs.com.  Well, one omitted letter typo variant of .com is becoming widely available:  .cm. 

The TLD ".cm" is the country code top-level domain ("ccTLD") for the country of Cameroon.  It appears that in November of 2008, a company called Netcom.cm Sarl launched a registry for com.cm, co.cm, and net.cm domain names.  The company has since contracted with NameJet for the landrush of all other second-level registrations in the .cm domain space.  The landrush started July 15 and runs through July 31, at which point second-level .cm registrations will be accepted on a first-come, first-served basis.  Unlike some other domain landrushes, there appears to be no premium for registration during the landrush period, but a two-year registration is required.  If multiple parties seek the same second-level domains during the landrush, such domains will be auctioned beginning August 4.  NameJet has a FAQ page here and does not hide the fact that .cm registrations are "just one letter and keystroke away from a few of the most highly recognizable domains."  Really?  I'm not sure that it is wise to encourage domainers in this direction. 

By the way, of the other two omitted-letter .com typos, ".co" belongs to Colombia, and it does not appear that widespread commericalizaiton is in the works.  The ccTLD ".om" belongs to Oman, and also appears to be territorially limited for now.  Interestingly, the .om space could also be used in transposed-letter typos, like www.youtubec.om.  I suspect that it will be just a matter of time before entrepreneurs in these countries see the possibilities, and second-level domains start opening up in these spaces. 

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What’s the first thing you think about when you’re naming a company or a product? Securing a domain? Avoiding trademark conflict? Sounding different from your competitors?

All are important concerns. But I contend that the first thing you should think about is this:

A name is the title of your story.

Yes, you’re naming your company or your product. But what you’re really doing is putting a title on the story you’re telling investors, shareholders, customers, and employees.

If you’re smart and lucky, the name you choose will be the title of a great story. A best-seller. A legend. A tale told around the campfire for generations.

If you’re haphazard or confused or pretentious or timid, your name will end up on the equivalent of the remainders table at your local bookstore: piles of copies at 70 percent off.

You can have a great story that nobody wants to read because the title is pedestrian or perplexing or pompous.

Or you can create demand for your story by giving it a title that tells just enough without giving away the plot.

So before you do any internal namestorming or hire a name developer, spend some time thinking about the story your company or product needs to tell.

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Moore’s Law holds that the power of an integrated circuit will double every two years. That prediction, made in 1965 by Intel co-founder Gordon Moore, has proved remarkably durable.

The continued application of Moore’s Law has taken us in a few decades from crude transistor radios to handheld information devices packing more power than entire rooms of mainframe computers that sent the first spaceships to the moon.

And it’s unleashed an unprecedented burst of creativity, as the reach of the Internet allows people from around the globe to exchange information and build on each other’s ideas at dizzying speed.

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This past Tuesday, June 9, Facebook, Inc. announced on its blog that, as of 12:01 EDT on Saturday, June 13 (that's tomorrow), Facebook users will be able to register for unique user names on a first-come, first-served basis.  Each user name will be incorporated into a personalized URL of the format http://www.facebook.com/firstname.lastname or http://www.facebook.com/username, depending upon the user name.

Trademark or other proprietary name holders may fill out a form at this page to prevent Facebook users from registering particular marks or names as usernames under this scheme.  Facebook has also set up a FAQ page here to answer some questions about these new user names, and provides a form here by which a trademark owner can challenge someone else's use of a protected intellectual property right. 

David Berkowitz has additional details over at Ad Age. 

Commentary after the jump . . .

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If your business depends upon your name, you should obtain a trademark for your name and register it as a domain name. Andre Agassi must be glad he did so. A judge in the United States District of Nevada recently issued a preliminary injunction banning three web sites from using Andre Agassi’s trademarked name in their web addresses. 

The Anticybersquatting Consumer Protection Act (“the Act”) protects trademark owners against cybersquatters as well as providing protection against the unauthorized registration of personal names as domain names.  This includes prohibiting the unauthorized registration of a domain name that is the same as or confusingly similar to the name of another living person, if done with intent to profit from the domain name by selling it for financial gain to such person or a third party. 

Aside from the Act, there are common law rights to a personal name. Not surprisingly, a court found “Risky Business,” “Top Gun,” Oprah couch jumping superstar “Tom Cruise” to have common law rights in his name. However, Jerry Falwell did not fare so well. His name was found not to have common law rights.  Similarly, the headline “Sting Stung Online” touted the first famous celebrity to suffer a defeat under the Act in 2000. Front man for the rock band the Police, and superstar solo act, Sting (also known as Gordon Sumner) was unable to prevail against Michael Urvan’s registration and use of Sting.com. under the Act. The World Intellectual Property Organization for Arbitration found that “Sting” was a common dictionary name and Mr. Urvan was not using the domain in bad faith. Significantly, Sting had not registered his name as a trademark. 

If your name is your business, and you are not as famous as Tom Cruise, it might be best to register your name as a trademark and register the domain name, as Andre Agassi did. 

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What is Twitter? What’s a Tweet? Can I be Tweeted?  Will a Tweet hurt? Twitter is a micro-blogging portal that allows for sharing messages and links that are 140 characters or less and it is being talked about everywhere. This buzz is causing clients to ask questions, similar to those above, about what this space means for them. The majority of these questions seem to be surrounding trademark rights with Twitter profile names. Similar to the domain name “squatting” from the early 90’s, people are registering Twitter names for brands that they do not represent. 

First, it is important to remember that as social media continues to take over the on-line space companies need to be registering their names on these sites. If a company is proactive about this process, the issues surrounding trademark violation will not occur. Second, let’s be honest, very few companies have the resources, time, or ingenuity to realize they need to be doing this. That being said, there are many things a company can do to reclaim their trademarked Twitter name from its current owner.

The first thing a company should do when it finds their trademarked brand has been taken on Twitter is see when the last tweet was sent from the account. If the account has not had activity for 30+ days and the company can prove the trademark, the company can work with Twitter directly to retrieve the account. If the account is being actively used the company should personally reach out to the person who has it. Simply ask them to turn the profile over to the company and reference the trademark rights. It is important to note that the company will likely fair better by playing nice and offering a complimentary something to the person for their time and inconvenience. If the profile is not surrendered after these efforts legal steps can be taken to retrieve the account. Another thing to consider is that if the person who owns the account is not causing detriment to the brand it may be timelier to simply create a differing variation of the trademarked name and begin Tweeting from the new account. 

Happy Tweeting

—Ted Risdall, Risdall Marketing

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Memorial Day is another example of successful re-branding: Memorial Day apparently used to be called Decoration Day.

Although most appreciate and understand that this federal holiday since 1971 comes on the last Monday in May, there is a concern that "many Americans nowadays have forgotten the meaning and traditions of Memorial Day." It is more than a three-day weekend, it is a day to remember those who have died in military service for our country.

After you have paid your respects on this Memorial Day, I have a suggestive branding challenge for you, below the jump, if you're interested.

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Gripe sites have been around for almost as long as the Internet itself, and they tend to be difficult to shut down.  Conventional wisdom among brand owners is to send a threatening letter and play the odds that the (likely) individual with an axe to grind will not want to get sued by a corporation. 

There are two problems with that strategy.  First is the possibility that the letter will draw more attention to what is likely a sparsely visited site, or the person or entity running the gripe site will actually sue first, as Mike Morgan has done against Goldman Sachs.  Second, and by far the larger problem, is the failure to assess the root causes of the gripe site.  For many retailers, the roots can often be traced to a bad customer experience.  With Goldman, the issue seems to be more that Mr. Morgan is just looking for a place to vent.  Sometimes, the griper is just off the deep end.

As a usually disinterested observer, I find mild entertainment value in how clever the gripers can sometimes be with their domain names, like NoDaddy.com.  There is even enough gall and vinegar to fuel sites devoted to griping wholesale, like this one and this one (warning, these may be offensive).  Interestingly, I have yet to run across any sort of praise sites, like cokerocks.com.  Do any exist?

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I am earnestly trying to reserve judgment on the prospect that the Internet Corporation for Assigned Names and Numbers ("ICANN" -- the proverbial "man behind the curtain" of the Internet) is actually going to go through with its roll out of opening new generic top-level domains ("gTLDs") to anyone (a TLD is the thing that comes to the right of the dot in a domain name -- the most famous being COM).  This is no easy task.  Each month some new report comes out that makes the prospect of throwing open TLDs look worse and worse.  As I have observed before, the Internet has a bit of the Wild West to it.  Despite some drawbacks, it has regulated itself fairly well. 

Perhaps the best proxy for the prudence of doing anything is to gauge the number of acronyms it generates:  the fewer, the better.  (By this measure, some of civilization's more dubious achievements include the military, the federal government (or see here), and, of course, the practice of law.)  The debate about ".anythingoes" is relatively new, and the first draft report from the Implementation Recommendation Team (the "IRT") reads like vegetable soup.  The IRT recommends an RPM (rights protection mechanism), a URS (uniform rapid suspension system), a GPML (globally protected marks list), and possibly SERs (sunrise eligibility requirements) in a SDRP (sunrise dispute resolution policy) -- all this (and more!) in a svelte 47 page document complete with numerous footnotes, appendicies, and even a handy flowchart (itself a warning flag):

Don't get me wrong:  if ICANN wants to allow anybody to register any word as a top level domain name, it is worth protecting brand owners.  I'm still struggling with why ICANN is opening up the top-level domain space in the first place.  If ICANN has to create an armada of administrative procedures to protect entities with acknowledged, existing rights, is it something that is really worth doing?

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How did you get here?  Seriously, how did you navigate to this web page?  Is DuetsBlog.com in your bookmarks?  (Do you have an Internet "loop"?)  Perhaps you navigated directly by going to the little box at the top of the page and typing in "www.duetsblog.com."  If you did this last step, and did it without mistyping, congratulations.  You directly navigated to this page.  Those that mistyped might have gone here or here or here.  (Hopefully those people will join us soon.)

Many domainers capitalize on the mistakes Internet users make when directly navigating to web pages, and policing this activity can be tiresome because there are so many ways to make mistakes, like these:

• A sticky key, like www.niike.com.
• Swapped letters from typing too fast, like www.weahter.com.
• An omitted letter, like www.kellggs.com.  (Would you know at first glance that this is not the official Kellogg's site?)
• A QWERTY typo, where one of your fingers accidentally hits a key adjacent to one you intended to type, like www.homedepor.com.  Or perhaps you hit two adjacent keys, like www.homedeport.com.

A business or organization that relies on heavy Internet traffic, like amazon.com, should own a wide variety of typographical variants of its domain name(s).  Amazon.com, Inc. owns thousands of domain names, and most of them are variants of amazon.com.  In fact, it is pretty difficult to find a typographical variant of amazon.com that does not take you to amazon.com.  (And if you've read this far, you've killed enough time already that you might as well try it.)

The upshot is that a business or organization can either let domainers typosquat on its domain names, or it can capture its own typo traffic. 

Untrill nxet weeek . . .

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I was reading a piece my partner, Mike, wrote a little while ago titled, "Are you brand happy?" It reminded me that as the world continues to become more and more complex and intertwined with the rapid explosion of social media, the importance of this simple question increases considerably.

It’s never been easier, or harder to tell your story. This is where being “brand happy” comes into play. (Brand happy, the state of branding everything you touch.)

To have highly effective communications these days, everyone has to be on the same page. Your audience needs to clearly understand your message and know that you deliver on your brand promise. Keep in mind that a brand is a customer's gut feel about your product, service or company; it’s what they say it is vs. what you say it is.

That’s why the decision on what to brand is such an important one. The number of brands you choose to build will have a significant and lasting impact in your business for years to come.

Now, what happens if Web addresses could end with anything including your brand name. Imagine the complexity that would bring to the protection of your branded name(s). Well that’s going to happen too. Check out http://usat.me/?34687748.

It is time to really start thinking about what is worth protecting. One simple test is to see if your internal people can keep all of your brand names and trademarks straight. If they can’t, I assure you that neither can your audience. As mind share becomes harder to find, market share harder to get and trademark protection harder to ensure I think all of us need to ask if we’re brand happy.

—Bob Freytag, President @ Introworks

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One of the shortcomings to living in the 21st century is that all of the land rushes are over.  What an amazing way that was to get some land:  just run right out there and put a stake in the ground.  No messing with title insurance and mortgage bankers, and no need to inspect the property prior to purchase.  Caveat emptor, indeed. 

A loose analog to the old-time land rushes exists today, and that is the practice of domain name warehousing, or "domaining."  Unlike trademarks (at least in the U.S.), it is permissible (so far) to buy, sell, and store Internet domain names without using them.  Not surprisingly, people do this.  They are called "domainers," and some of them make lots of money.  The trick to making money off of a domain name portfolio is not just to buy low and sell high, although as you can see from my post last week, that may be lucrative enough.

The real trick is to make money while holding the domain names.  This is called "monetizing" domain names.  The most common way for a domainer to monetize a domain name is to place an array of pay-per-click ("PPC") advertising links on a web page and hope to make more money on the revenue generated by those clicks than the domainer spends in maintaining the domain name and site.  Even if this is only a few dollars a year on any given domain, a portfolio of thousands or hundreds of thousands of domain names (not uncommon) can start to generate a noticeable revenue stream.

Like land rushes of old, the Internet is still a bit of the wild west in our midst, and some domaining is legitimate, but much of it is not.  Next week, I will touch on some of the abuses in this area, including cybersquatting and typosquatting.

Now, if you want to see a sample of what real domaining geeks talk about, look after the jump . . .

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How much would you pay for an Internet domain name?  Network Solutions just finished its "48-Hour Spring Sale" of domain names for $9.99 each.  Go Daddy is offering domains for $6.99 each.  The company 1&1 is offering .BIZ domain names for $3.99.  Domain name prices typically cover registration and perhaps some basic web hosting and e-mail features for a year.  But not all domain names are created equal.  Presently, the domain name universe is one of the most unrestricted markets in existence, and one owner's trash may be another's treasure. 

So here's some trivia:  how much do you think each of these domains sold for on the open market?  Click below to see the answers after the jump . . .

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Ok, ok, I get it. My last blog post, The Paradox of Brand Protection, was way too long. Just so you know, I do recognize that we live in a sound bite world, but sometimes the educator and storyteller tangled in my DNA get the worst of me, at least when it comes to brevity.

Brevity is a gift. The federal Court of Appeals judge I worked for in Washington, D.C., years ago, had this gift, among many others. He used to describe those who “go on and on” as having no “terminal facilities.” Those of us who worked for him eagerly awaited the meaningful pearls of wisdom he gifted from time to time.

Brevity is memorable. Out of all the words strangers have uttered to me during my life, I have never lost one brief line from a man (a man I couldn’t pick out of a line-up today, by the way) at the public swimming pool some thirty-five years ago: “You’re going to have in-grown toe nails some day.” He was right, and I have never forgotten those exact words.

Brevity is effective. The GOOGLE® home page is a model of brevity. The ALTAVISTA® landing page has migrated in this direction too. Author and master-blogger Seth Godin makes “every word count” a new art form. His blog posts are models of brevity.

Brevity is hard work. It takes significant time, effort, and knowledge to properly distill complex thoughts and ideas into brief, digestible, and meaningful points. This hard work, however, pays dividends in giving the lasting and important gifts of being memorable and effective.

Brevity can have issues. Sometimes it misleads people into believing things are simple, when it is far from the truth. Other times it creates arguments much later about lacking notices or informed consent. So, while brevity is valuable in engaging attention, any further necessary information should be filled in later, as appropriate.

In the trademark world, brevity has issues too. Perhaps most importantly, brevity is more difficult to own, making it much more valuable when you can. Many different companies might vie to boil down their names to the very same acronym. The same is true for top level domains with a limited number of characters. If you haven’t heard before, there is extraordinary value associated with two character top level domains. Quite simply, the shorter the designation, the more interest and competition there is to use and own it.  

For all of these reasons, and probably more, it seems everyone these days wants to truncate their brand. American Express® is AMEX® (never mind that it isn’t the only one), Federal Express® is FEDEX®. Gatorade® is truncating to G (more about that controversial move later). Even law firms, frequently strangers to brevity, are on the bandwagon too. In case you hadn’t noticed, there is currently no shortage of law firms attempting to truncate their multiple alphabet soup names to a single surname. As you might imagine, this can and does lead to trademark fights, even between law firms.

Food for Thought: Will McDonald's® ever attempt to truncate its famous 71 letter mark? Click here to see their trademark registration.  Repeating it in this post clearly would violate my new quest for brevity.

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There is an interesting phenomenon in the blogging world in which readers who can post comments on a blog vie to be the first one to comment on a new post.  On some of the larger blogs, this results in several entries at the head of the comments, all of which contain nothing more than the word "first."  Only one of these comments is ever correct for a given post, and I've never seen any commenters vie for second. 

Observing this phenomenon recently, I was reminded of a similar phenomenon in the banking industry.  How many "First" banks are there?  Hard to say, but there are more than 450 registered trademarks in the United States using some form of the word or number "first" for use in connection with banking services.  The oldest of these is a stylized logo for the ordinal "1st," claiming use back to 1903.  The registration is currently owned by JPMorgan Chase.  By comparision, I can find only eight registered marks using "Second" for banking services, and most of these belong to the same entity. 

In this context, I've always thought that Fifth Third Bank had a particularly memorable brand, if for no other reason that it really makes a person wonder about what happened to the first four "Third Banks."  Fifth Third is apparently so named as it is the product of a merger between Third National Bank and Fifth National Bank. 

As an aside, try an Internet search for the words "first bank" and note various domain names that come up:  firstbanks.com, firstbank.com, firstbankks.com, and efirstbank.com, among many others.  The third of these is a clever play on the fact that it is located in Kansas. 

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