DuetsBlog Collaborations in Creativity & the Law

Category Archives: Domain Names

Subscribe to Domain Names RSS Feed

IKEA översittare: Bully or Baloney?

Posted in Branding, Dilution, Domain Names, Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Marketing, Social Media, Trademark Bullying, Trademarks

I once spent 20 minutes trying to figure out whether I was installing a metal insert for an NYMÖ lamp upside down, or rightside up. I’m still not sure I ever installed it correctly, but it’s still working. So there. But a new IKEA översittare is getting a lot of attention on the internet, and… Continue Reading

Business in the Age of the New gTLDs

Posted in Domain Names, Guest Bloggers, Search Engines, Technology

- Mark Skoultchi, Catchword Brand Name Development As you may have heard, the Internet is undergoing a growth spurt of unprecedented proportions. Over 1000 new global top level domains (gTLDs) are in the midst of launching, so in addition to familiar extensions like .com, .org, and .net, expect to start seeing .nyc, .company, .nike, and… Continue Reading

When Intent Matters in Trademark Matters

Posted in Almost Advice, Articles, Counterfeits, Domain Names, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people. Unfortunate, because this permission is frequently abused, especially by less experienced trademark counsel, or perhaps when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into… Continue Reading

What Does the Suffix Say?

Posted in Advertising, Articles, Branding, Domain Names, Infringement, Law Suits, Marketing, Trademarks

Ylvis, the Norwegian music/comedy duo, recently revealed the secret of the fox to more than a hundred and twenty-three million viewers on YouTube (as of this posting), answering the vexing question: What does the fox say? Not surprisingly, given this wide-spread attention, an individual apparently unconnected to Ylvis already has filed an intent-to-use trademark application for ”What the Fox Say”… Continue Reading

Trademark Clearance Opinions Webinar

Posted in Almost Advice, Dilution, Domain Names, Famous Marks, Infringement, Trademarks, TTAB, USPTO

Teaming up with Susan Upton Douglass of the Fross Zelnick firm is always fun, so don’t miss our upcoming webinar on September 11, 2013. It is entitled “Structuring Trademark Clearance Opinions: Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, and Preparing Opinions to Reduce Legal Risks,” and it is offered by Strafford Publications. We’ve… Continue Reading

The Wharton School Goes to Trademark Court to Protect Its Business Reputation

Posted in Articles, Dilution, Domain Names, Famous Marks, Guest Bloggers, Infringement, Law Suits, Trademarks

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group). For those who have not been paying attention to business for the past 132… Continue Reading

Dear Entrepreneur Who Needs A Name: Do Not Let Tactics Drive Your Strategy

Posted in Branding, Domain Names, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Mark Prus, Principal, NameFlash There was an article this summer in the Wall Street Journal called, “Why Startups Are Sporting Increasingly Quirky Names.” The author indicated that this trend was being driven by a “lack of short, recognizable URLs” which “prompts use of misspellings and word mash-ups” in the names of new startups. One… Continue Reading

Eh, it’s Ey?

Posted in Branding, Domain Names, Guest Bloggers, Infringement, International, Loss of Rights, Marketing, Trademarks, Truncation, USPTO

Ernst & Young, here is to hoping you can take a little joke about your new truncated name, EY: We’ve written a lot about the potential hazards of brand truncation here, and when one of our talented guest bloggers brings this unfortunate story to our attention, we simply couldn’t resist spilling a little digital ink from our perspective. According… Continue Reading

Nutty News: Dear Biggest Fan, Here’s a Cease-and-Desist Letter

Posted in Almost Advice, Branding, Domain Names, Fair Use, Famous Marks, Food, Social Media, Squirrelly Thoughts, Trademark Bullying, Trademarks

You have to be one big fan of a company or product to establish a World {What-You-Cannot-Live-Without} Day.  Well, a sticky situation with the well-known hazelnut spread Nutella may have you rethinking your public affection. Back in 2007, Sarah Rosso (Nutella Fan) established World Nutella Day to celebrate her affection for Nutella.  Within the past… Continue Reading

Inherently Distinctive Restaurant Interior?

Posted in Branding, Domain Names, Food, Marketing, Non-Traditional Trademarks, Sight, Trademarks

We recently focused our attention on a very unique-looking, dare I say distinctive, retail store exterior design; for a quick reminder, see here. The recent craze for self-serve frozen yogurt shops – where you pay by the ounce (or perhaps, by the pound), has us focused today on a pretty darn unique interior retail environment: This is… Continue Reading

What Drives eCommerce? The Answers May Surprise You

Posted in Domain Names, Marketing, SoapBox, Social Networking

–Dan Kelly, Attorney A couple of weeks ago, Forrester Research issued a report called “The Purchase Path of Online Buyers in 2012.”  The report has a great deal of interesting information, two pieces of which underscore points I have hammered here for a while.  First, the report notes that “[d]irect traffic is critical to sales:”… Continue Reading

3 Ways to Handle an Unfortunate Domain Name

Posted in Advertising, Branding, Domain Names, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Mark Prus, Principal, NameFlash I was researching some potential domain names for a client recently when I came across several listings of “Worst Domain Names.” I had some fun visiting a few of these sites, and I noticed a difference in how the domain owners leveraged their “unfortunate” domain names. There seem to be… Continue Reading

Beware the Paralyzing “Whac-A-Mole” Trademark Mentality

Posted in Branding, Domain Names, Infringement, Marketing, Trademarks

Trademark enforcement against infringing domains on the Internet is frequently likened to playing Whac-A-Mole. Just as soon as you eliminate one, up pops another, and another, etc. Dan’s post from last week on the most recent land rush on the Internet – with the creation of almost infinite Internet real estate — may be a warning that this comparison… Continue Reading

Can a Domain Name Amplify Trademark Confusion?

Posted in Domain Names, Goodwill, Infringement, Law Suits, Trademarks

–Dan Kelly, Attorney There has been at least one interesting trademark-related story in the wake of the Rush Limbaugh flap.  Health insurance company Humana Inc. and its subsidiary Concentra Health Services, Inc. sued Preval Group, LLC for an injunction against Preval’s use of CONCENTRA in connection with a “memory pill.” Humana raised the issue of… Continue Reading

.Anything?

Posted in Domain Names

–Sharon Armstrong, Attorney Today ICANN, the Internet Corporation for Assigned Names and Numbers, better known as the company that basically runs the Internet, begins accepting applications for generic top level domains.  Most users know top level domains such as .com, .org, .edu…and even .xxx.  Now, under this new program, organizations can apply to use virtually… Continue Reading

Top-Level Domain Names as Trademarks

Posted in Branding, Domain Names, Marketing, Trademarks

–Dan Kelly, Attorney The Trademark Trial and Appeal Board recently issued a precedential decision upholding the Trademark Office’s refusal to register five applications for the mark .MUSIC in connection with a variety of goods and services, holding that .MUSIC is merely descriptive of the goods and services.  A PDF copy of the decision is here.  A company… Continue Reading

Putting the Shoe on the Other Tootsie

Posted in Agreements, Branding, Dilution, Domain Names, Famous Marks, Food, Goodwill, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks

There was a time when a certain kind of small business owner – strapped for cash — with a meager promotional budget, easily could be tempted to adopt a “clever” name, as a “short-cut,” to “play off” a well-known, iconic brand, but in the end, he or she probably was convinced by counsel that doing so would be… Continue Reading

First in Time on the Internet

Posted in Branding, Domain Names, Marketing, Social Networking

–Dan Kelly, Attorney Yesterday, Laura provided some good marketing reasons for grabbing your company’s brand name(s) and/or trademark(s) on various social media sites while the marks and brands are still available.  I am not a marketing professional, but I agree with everything that she has said, and I’m here to provide some “legal” reasons for… Continue Reading

Adult Domain Space Opt-Out Ends in a Week

Posted in Domain Names, Marketing, Trademarks

–Dan Kelly, Attorney Time is running out to take defensive action for opting registered trademarks out of the forthcoming “.xxx” domain space.  Depending upon the registrar that you use to do this, an opt-out application is due by October 28, 2011, will cost around $300, and will prohibit third parties from registering opted-out trademarks as… Continue Reading

Think Harder Concrete Campaign Targets Soft Competition

Posted in Advertising, Domain Names, Marketing

–Dan Kelly, Attorney But for seeing a billboard last week like the banner below, it would never have occurred to me that cement producers really needed to advertise, but the Portland Cement Association has impeccable timing, as it is pothole season in Minnesota, and billboards like this are up all around the pothole-ridden Twin Cities. … Continue Reading