gTLD

Protecting Trademarks from Registration with an Unwanted Domain Name

November 5, 2015

General registration has begun for websites including the generic top level domains (gTLDs) .sex, .porn, .XXX, and .adult, thus allowing the public to purchase domain names ending with these extensions. Registration is on a first come, first serve basis and does not require pre-ownership or proof of a trademark registration to be granted the domain name. This presents the risk that third parties may register domain names in these new gTLDs for trademarks they do not own and potentially use the domain names for derogatory purposes.

If a trademark is registered in a domain name in an undesired gTLD to a party that is not the owner of the trademark, the actual trademark owner could sue the domain name holder and ask the judge to award them control and ownership of the domain name. However, this could be a costly and time consuming process. Instead of waiting for a third party to register a domain name with a trademark in an undesired gTLD, a trademark owner may proactively register for a domain name containing their trademark in that gTLD to prevent other parties from registering and using it for disparaging purposes. Actual use of the domain name is not required to maintain ownership and this approach may provide a cheaper alternative filing a lawsuit against a third party owner.

If you have any questions regarding the registration for new generic top level domains or wish to protect your brand from being registered in these domains by a third party, please contact the attorneys at Woodard, Emhardt, Moriarty, McNett and Henry LLP.


June 2012 Prosecution Group Luncheon

June 28, 2012

Topics discussed in this month’s prosecution group meeting include the recent U.S. Chamber of Commerce study finding that industries that depend on intellectual property rights account for more than $5 trillion of the country’s gross domestic product, the USPTO’s pilot “Deadwood” project, and the ICANN list of applied-for generic top level domains (gTLDs). To download a copy of this presentation click here.


ICANN Releases List of Applied-for New Generic Top Level Domains

June 21, 2012

ICANN, the corporation responsible for technical coordination of the Internet such as IP-address-allocation and domain-name system (DNS), recently released the full list of applied-for new generic top level domain (gTLD) strings.  There were a total of 1930 applications submitted from 60 different countries, with 911 applications submitted from North America.  Some of the most applied-for strings include .APP, .INC, .HOME, .ART, .LLC, .BLOG, .BOOK, .MUSIC, .MOVIE, .DESIGN, .WEB, and .HOTEL.  The full list of applied-for gTLD strings is available here.

The release of this list marks the beginning of the 60 day public comment and seven month objection periods.  These applications must also pass a review process, which is expected to be completed around January, 2013.  If you wish to make a comment or an objection to an applied-for gTLD, feel free to contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


October 2011 Newsletter

November 4, 2011

   Patents


A Summary of the America Invents Act

 On September 16, 2011, President Obama signed into law the “America Invents Act”which makes sweeping changes to the U. S. patent system. Congress’s primary goals were to further enhance opportunities for innovation and entrepreneurial investment, to better harmonize U. S. patent laws with those of other countries, and to streamline patent office procedures.

Read More

 

 

 


  Supreme Court Clarifies Patent Ownership Under Bayh-Dole Act

As a result of Leland Stanford Junior University  v. Roche Molecular Systems, Inc., No. 09-1159, organizations and universities subject to the Bayh-Dole Act should construct more effective assignment agreements with their employees instead of relying on the Bayh-Dole Act to automatically vest title. 

Read More

 


  Another Reason to Keep Lab Notebooks—Tax Credits Upwards of 7-10%

 Law firms and in-house attorneys are always asking inventors to keep lab notebooks.  There are a number of reasons to keep such documentation, including seeking patent protection, but there is another reason that is often overlooked, substantial tax credits.

Read More

 


  Trademarks and Copyrights


ICANN Approves New Generic Top-Level Domain Names, Including The XXX  Domain

 ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs).  Currently 22 gTLDs exist, with .com being the most utilized.  However, internet address names will soon be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.

Read More

 


Do you work with copyrights? If so, do not forget about an author’s rights to terminate transfers and licenses.

The copyright act provides the authors of transferred or licensed works the opportunity to recapture his or her rights.  This means that after waiting a specific period of time, an author, or an author’s estate, can terminate a prior transfer or license.  Such terminations can have a dramatic impact on a company’s rights to use certain intellectual property or the rights to revenue from certain copyrighted works.

Read More

 


 Litigation


A Tougher Standard for Proving Inequitable Conduct?

 In a 6–1–4 decision, an en banc Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company tries to cure the “plague” of inequitable conduct pleadings by raising the bar for proving that alleged bad acts were material to patentability and that the patentee undertook the alleged bad acts with intent to deceive the Patent and Trademark Office.

 Read More

 


 Other Announcements


2011 Midwest Intellectual Property Summit

 The 2011 Midwest Intellectual Property Summit, organized by Woodard, Emhardt attorney, Holiday W. Banta, will be held November 17th and will showcase presentations on the latest research and topics of concern in the field of intellectual property.  Woodard, Emhardt attorneys presenting at the Summit include T.J. Cole, Michael Morris and Spiro Bereveskos

Read More

 


  Bill McKenna Selected for Indianapolis Bar Association’s Bar Leader Series 

Woodard, Emhardt associate Bill McKenna was selected for the Indianapolis Bar Association’s Bar Leader Series.  The Indy Bar’s Bar Leader Series is designed to develop lawyers for future opportunities in leadership roles in business and legal communities.  Through the series, selected lawyers will learn how to communicate, motivate, inspire, and succeed not only in their law career, but also in service to professional, political, judicial, civic, and community organizations.

Congratulations, Bill!

 


 

  


ICANN Approves New Generic Top-Level Domain Names, Including The XXX Domain

September 22, 2011

ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs).  Currently 22 gTLDs exist, with .com being the most utilized.  However, internet address names will soon be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.  Under the plan, new gTLD applications will be accepted starting on January 12, 2012. 

The most infamous of these new gTLDs, which is already set to be granted to the ICM Registry, is the gTLD .xxx.  In conjunction with the issuance of this gTLD, for a limited period, brand owners will be able to have their registered marks blocked for at least 10 years and possibly longer from the xxx domain. 

Attorneys at Woodard, Emhardt can assist in blocking registered marks from use in the xxx domain.  The deadline for submitting a request for blocking a mark is October 28, 2011.  Once the window for blocking a domain based upon a registered mark has expired, registration will be opened to all others on a first come first serve basis, and once a domain is registered, it will undoubtedly be much more expensive to stop. 

Please contact us for more information regarding the xxx domain and/or if you are interested in proactively blocking your registered marks from potential derogatory use in that domain.


ICANN Approves New Generic Top-Level Domain Names

July 8, 2011

ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs), from the current 22.  Internet address names will be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.  Under the plan, new gTLD applications will be accepted starting on January 12, 2012.  To read the entire news release please click here.