–Dan Kelly, Attorney
I have blogged numerous times in the past about domain name related issues that are concerns for brand owners: domaining, typosquatting, and the planned roll-out of new gTLD domains. This last issue–the expansion of the top-level domain space from a relative handful of top-level domains (like .com, .net, .org,
–Dan Kelly, Attorney
Last week, I went to the Internet to look up some information. I opened the browser and hastily typed “wkipedia.com” in the address bar and was met with this page:
I stared at it for several seconds, during many of which I seriously thought that Wikipedia had updated its home landing page and puzzle-globe design. The Google and Ebay search bars eventually convinced me that I was in the wrong place, and after staring at the banner for several more seconds, I realized that I had directly navigated not to wikipedia.com (which lands at wikipedia.org), but instead to “wkipedia.com,” just like I typed, omitting the first “i.”
Typical typosquatters use pay-per-click pages (examples here) to monetize their typo domain names, which is bad enough. The Wkipedia.com typosquatter is using a look-alike of a registered trademark that, at least for me, creates confusion, which elevates the issue. It is no longer “mere” typosquatting, but this may very well be flat out trademark infringement.
Typosquatting profits from traffic, and it does not discriminate as to whether the traffic is generated from a domain held by a for-profit company or one held by a not-for-profit company. The difference in battling the beast is that a for-profit company often has a larger budget to combat the problem. Unless or until better tools are developed to battle typosquatting on the back end, the best defense remains a good offense, and all the more for non-profits. If you are planning to start a non-profit with a heavy web presence, make sure that your budget includes the purchase and holding of as many typographical variants of central domains as are feasible to purchase.
An image of the Wikipedia landing page is below the jump for comparison.Continue Reading Typosquatting: Not Just a For-Profit Problem
The New Year will be ringing in a brand new trademark truncation, ironically caused by a recent expansion.
Just so you know, it’s not a new type of Gatorade (G01, G2, and G03), excuse me, G.
So, what can this latest trademark truncation represent?
Apparently, the truncating trademark owner has not yet secured the most obvious domain, www.b1g.com, because it’s for sale, by someone apparently located in Russia.
Answer below the jump.Continue Reading Trademark Truncation Alert: B1G
–Dan Kelly, Attorney
In the past on these pages, I have been hard on Apple Inc. for apparent missteps in securing trademark rights to some of its more well-known products (iPhone, iPad). Last week, Apple landed a victory on the domain name front, winning a Uniform Domain Name Dispute Resolution Procedure (“UDRP”)
Another interesting trademark case was filed last Thursday in Minnesota federal district court, captioned Rolex Watch U.S.A., Inc. v. Associated Partnership Ltd., d/b/a Rollx Vans and d/b/a www.RollxVans.com. Here is a pdf of the Complaint and the attached Exhibit.
The crowned plaintiff really needs no introduction. On the other hand, the
What is the difference between a semiconductor computer chip maker and an electrician?
Not much, at least when both have the word “intel” in their business names, according to a Complaint (complete with Exhibits) filed last Thursday in Minnesota federal district court, by Intel Corporation a/k/a Chipzilla, against a pair of
Seems as though there is a lot of discussion and news reports these days about bullying and how to put a stop to it: School bullying, workplace bullying, and cyber-bullying, to name a few of the most common types. Fair enough, as I recall, my seventh grade PE teacher was a real bully.
However, for those of you who haven’t heard yet, there also is growing interest in examining a brand new type of bully, and they are calling this creature the "trademark bully".
That’s right, the U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether "you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?" If you have an opinion on these questions, please share your views below, and the USPTO would like to hear from you here.
So, what is a "trademark bully" you ask? The USPTO’s survey provides this definition: "A trademark ‘bully’ could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow."
The USPTO’s "trademark bullying" inquiry apparently stems from some language in the Trademark and Technical Conforming Amendment of 2010, directing the Secretary of Commerce to "study and report" to Congress on “The extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”
Beyond a "reasonable" interpretation of the scope of rights granted to the trademark owner? Of course, the plaintiff and defendant will never agree on what might be considered a "reasonable" interpretation of the scope of plaintiff’s trademark rights, even in the most routine trademark cases, so whose perspective decides what is reasonable for the purpose of applying the trademark bully label, and what are the consequences, if guilty? Moreover, who decides what "might be" reasonable under the circumstances, since those additional qualifying terms appear in the USPTO query?
In addition, I’ve heard before that "reasonable" minds can differ on just about anything. And, in my experience that is especially so when it comes to arguing and deciding trademark disputes, where litigants argue over and decision makers are asked to carefully balance the evidence according to a number of multi-factor tests, including likelihood of confusion, trademark fame, likelihood of dilution, and bad faith intent to profit, to name just a few. This isn’t exactly black and white material. Then, add to all that, an understanding that trademark rights are dynamic, not static, their scope can shrink or grow over time, and also recognize that trademark attorneys have an ethical duty to zealously represent their clients.
So, even with all that, we’re still to decide how to apply the trademark bullying label based on mere reasonableness? Sorry, but that seems, well, unreasonable to me.Continue Reading The Mark of a Real Trademark Bully
–Dan Kelly, Attorney
I read this week that the Corn Refiners Association is making a move to rename high fructose corn syrup to “corn sugar.” Interesting and informative article at the NYT. (H/T Elliot’s Blog.)
The CRA’s presser, here, is a carefully crafted piece, as it should be. Everything in it, from
–Dan Kelly, Attorney
Which of these two signs (generally speaking, not these specific signs) do you think has sold more beer?
or
It stands to reason that COLD BEER signs have probably moved more product than BUDWEISER signs in the history of time, but, as with all things, context is important.
Merge the above train
–Dan Kelly, Attorney
What a difference a year makes. Last year, I wrote about the .CM top-level domain as a potentially popular typographical variant of the ubiquitous .COM. In that post, I mentioned that it did not appear that widespread commercialization of .CO was in the works.
Well, .CO domains are available and out there.