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That’s some (un)intellectual property

July 16, 2012Domaining, Domainnamewire, lawsuits, Policy & Law, trademarksComments Off on That’s some (un)intellectual property

Attorney starts blog covering overzealous intellectual property enforcers.

I write a lot about companies that seem to think they have universal rights to generic terms. Whether it’s a UDRP or a trademark lawsuit, some companies seem to think they control terms such as entrepreneur, elk, and (ironically) “legal advice“.

That’s why I think I’m going to like a new blog from Brian Hall, an attorney with Traverse Legal.

UnIntellectualProperty.com covers cases where a company claims exclusive intellectual property rights in a trademark, copyright, trade secret, or even a patent only to have a court of law declare no intellectual property right exists.

Here’s a great example Hall has already blogged about: Texas Toast.


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Chicago.com applies for dotchicago trademark

June 6, 2012chicago.com, Domaining, Domainnamewire, dot chicago, Policy & Law, trademarksComments Off on Chicago.com applies for dotchicago trademark

…but didn’t apply for the top level domain.

Chicago.com, Inc., has filed a trademark application with the U.S. Patent and Trademark office for the DotChicago mark. But Chicago.com founder Josh Metnick says his company did not apply for the top level domain .Chicago with ICANN.

The application, filed May 31, states that the mark is for “Domain name registration services; Domain name registration services, namely, conducting domain name searches for the purpose of providing legal advice on domain name registration”.

The application claims that Chicago.com, Inc. has been using the mark in commerce since “as early as 05/01/2012″. As proof, the application includes a copy of this page from Chicago.com’s web site.

This isn’t actually for second level domains; it’s for third level domains such as realestate.chicago.com. The examples listed on the page resolve to Google Sites pages.

The page also states “Since 2005, Chicago.com, Inc. has been providing a “.Chicago” directory of Chicago metropolitan area goods and services.”

Metnick told me Chicago.com has been offering these domains since 2005.

The wording on the page may seem peculiar for a third level domain. But Metnick claims “for domainers it’s probably confusing, but for most business owners it’s not.” The message on the @chicago Twitter page is more clear: “Get yourname@chicago.com or register your idea.chicago.com”

Chicago.com has had quite a bit of success parceling off identities under the .chicago web address, including selling e-mail addresses. Some people who have bought email addresses have also picked up the corresponding rights to the third level domain.

Chicago.com has two granted U.S. trademarks including THE .CHICAGO LOWDOWN for its newsletter. It tried and failed to register .chicago with the U.S. Patent and Trademark Office in 2005.

It also has a number of State of Illinois trademarks, including .chicago. It has filed trademarks for some of its third level domains, too, but in a way that makes them look like second level domains. One example: realestate.chicago.

This could make for an interesting scenario if .chicago ever exists as a top level domain.

“We want to own the top level domain,” Metnick admits. “That’s our goal. We’ve been using the name since 2005 and we don’t know anyone else who’s using it…They’re our marks. We were the first ones using them.”

Metnick says his company might apply for .chicago (the top level domain) in the future if it has the resources.


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Olympic Committee sues guy it won UDRP against

May 25, 2012Domaining, Domainnamewire, Policy & Law, trademarks, united stats olympic committee, usocComments Off on Olympic Committee sues guy it won UDRP against

USOC claims person continues to infringe on its trademarks.

The United States Olympic Committee (USOC) has filed a lawsuit (pdf) against Alan Bachand, an individual with whom the organization has a history when it comes to domain names.

Back in 2009 the USOC objected to Bachand’s use of the domain name OlympicsBestHotels.com to pitch hotels for the Vancouver Olympics. It ended up filing a UDRP against Bachand and won control of the domain.

Now the USOC is objecting to his use of the Olympics trademarks on a number of other sites, including SuperHotelRooms.com, 14sb.com, and LuxurySuperBowlHotels.com.

USOC says it reached out to Bachand about the infringing use, but he hasn’t made all of the changes it requested.

Its suit claims that Bachand is violating the Olympic and Amateur Sports Act and the Lanham Act.

In the UDRP all Bachand lost was his domain name. With a lawsuit, he could face financial penalties if he loses.


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Hey buddy, it’s probably too late to trademark .NYC

May 2, 2012.music, .nyc, .shop, Domaining, Domainnamewire, new tld, Policy & Law, top level domains, trademarksComments Off on Hey buddy, it’s probably too late to trademark .NYC

A good way to waste $325.

The guy who just recently wasted his money filing a trademark application for .music is at it again.

Joseph Walker DBA ExtraWeb Ent just filed trademark applications for .nyc and .shop.

New York City has already announced plans for the .nyc domain name and has selected a registry partner to bring it to market.

Numerous companies want to bring .shop to market as well.

Both of these applications will be summarily rejected by the U.S. Patent and Trademark Office.

But I’ll give some clever points to Mr. Walker for filing this as if the marks are in use in commerce already. He attached a screenshot of supposed web sites at register.shop and search.nyc to his applications.

Strange. I can’t get either of those sites to load.


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Related posts:

  1. Another Day, Another New TLD Trademark Application: .Store
  2. Up Next, Trademark Applications for .Auto, .Tax, and .Food
  3. Another .music trademark application and an interesting one for .pay

.XXX registry and many other domain companies head to INTA meeting next week

May 1, 2012Domaining, Domainnamewire, icm registry, inta, Policy & Law, trademarksComments Off on .XXX registry and many other domain companies head to INTA meeting next week

There’s money in brand protection.

9,000 people are expected to attend the International Trademark Association (INTA) annual meeting in Washington, DC May 5-9. Some of the topics on the agenda for next week include domain names and how companies can protected their brands in an expanding top level name space.

There will be a lot of domain name companies in attendance. Here are some that are exhibiting:

101domain.com
DomainTools
GoDaddy
ICM Registry (.xxx registry)
Key-Systems
Marksmen Inc.
Melbourne IT DBS
Safenames LTD

You may be surprised to see ICM Registry on the list, but it makes perfect sense. Many of its customers are trademarks holders who want to protect their brands. I suspect ICM will also start talking up its plans to help trademark holders by applying for several other adult top level domains, such as .sex.


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What Box? Adds 3 More TLDs to Trademark List

October 8, 2011Domaining, Domainnamewire, new top level domains, Policy & Law, trademarksComments Off on What Box? Adds 3 More TLDs to Trademark List

Mystery company files trademarks for .wedding, .club, and .discount.

California’s What Box? Holdings, LLC has applied for three more top level domain name trademarks with the U.S. Patent and Trademark Office. The three applications are:

.Wedding – filed September 27
.Club – filed October 3
.Discount – filed October 3

Little is know about the company other than its lawyer being Thomas A. Brackey, II. The company was formed September 1.

My guess is this is not an actual applicant for new top level domains, so don’t read too much into the applications. Given that this entity has already filed a trademark application for .hawaii — a top level domain that would require the blessing of Hawaii’s government — I don’t think there’s a rhyme or reason to the filings.


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Warning: Retargeted Ads a New Way for Trademark Holders to Go After Your Domains

September 7, 2011alamo car rental, Domaining, Domainnamewire, google adsense, lawuits, Policy & Law, trademarksComments Off on Warning: Retargeted Ads a New Way for Trademark Holders to Go After Your Domains

Think your site doesn’t show ads related to a trademark? Think again.

Have you ever noticed a Google Adsense ad that seems to have nothing to do with the context of the page you’re viewing? These are retargeted ads based on your previous web browsing.

These ads may prove to be a new way for trademark owners to claim that your web site was designed to infringe on their marks.

For years, trademark owners have manipulated the results on parked domain names to show ads related to the trademark holder’s field of use. But re-targeted ads might take this tactic up a notch.

Consider this scenario: you operate a web site that includes a generic term in the domain name. The generic term is also a trademark in a limited field of use. But the trademark holder visits your page after visiting web sites in the field of use of the trademark and sees ads related to the field. Thus, the mark holder claims that your domain was created to infringe on its mark.

Sound far fetched? Hardly. In a recent UDRP decision (now the subject of a lawsuit), complainant Vanguard Trademark Holdings USA LLC (which owns the Alamo car rental brand) made this exact argument:

Respondent admits that he is using Google’s AdChoices program in an attempt to generate money from the disputed domain name “alamoclub.com”. Notwithstanding Respondent’s assertion that his website cannot provide links to car rental services, the copy of Respondent’s web page and Google’s own explanation of Google’s AdChoices program shows that it can and will. In this regard, Complainant relies upon the Google website as to what Google envisages about its AdChoices program (See Exhibit 4):

What are AdChoices?

The AdChoices icon appears on sites that use Google’s AdSense program to show ads. While Google often shows you ads based on the content of the page you are viewing, we also show some ads based on the types of websites you visit, view, or where you interact with an ad or other Google product supported by Google’s advertising services. In doing this, Google doesn’t know your name or any other personal information about you. Google simply recognizes the number stored in your browser on the DoubleClick cookie, and shows ads related to the interest and inferred demographic categories associated with that cookie. It’s our goal to make these ads as relevant and useful as possible for you. Google doesn’t create categories, or show ads, based on sensitive topics such as race, religion, sexual orientation, or health.

The ads shown on Respondent’s web page can and will include links to vehicle rental sites that participate in Google’s AdChoices program, particularly if the Internet user has been searching for vehicle rentals.

At least Vanguard admits that this is how the ads showed up on the page.


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Pssst… “Got Milk?” is a Trademark

September 2, 2011domain name, Domaining, Domainnamewire, got milk, Policy & Law, trademarksComments Off on Pssst… “Got Milk?” is a Trademark

Don’t mess around with the Got Milk slogan.

Got Milk?

This slogan has become such a cultural mainstay that we see variations of it all the time.

But what many people don’t realize is that it’s trademarked. California Milk Processor Board has multiple trademarks to the slogan and related slogans.

That’s a lesson that one punk rock band learned the hard way. The band called “GotMilk” needs to find a new name.

The California Milk Processor Board just won the transfer of the group’s domain name GotMilkBand.com. Not only is the band called “GotMilk”, but it even used the stylized font commonly used with the milk slogan.

This isn’t the first time the California Milk Processor Board has gone after people who use domain names including its slogan. It recently won rights to momgotmilk.com and 1800gotmilk.net. It forced the owner of yougotmilkmoney.com to hand over its domain. It has even gone after variations such as GotHempMilk.com.


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Another Day, Another New TLD Trademark Application: .Store

July 14, 2011Domaining, Domainnamewire, new tlds, trademarks, UncategorizedComments Off on Another Day, Another New TLD Trademark Application: .Store

Pair files three trademark applications for .store.

More people are trying to trademark potential top level domain names now that ICANN has approved the program.

The latest attempt is by Eric Doerr of Delaware and Greg Disler of Pennsylvania. The pair filed applications for three marks; two for .store and one for dotStore.

The U.S. Patent and Trademark office won’t issue trademarks for top level domain names, but that hasn’t stopped people from trying to slide them by. It has created some contentious debate in the ICANN community.

In this case the three applications cite different fields of use, not just for a top level domain name.

While ICANN doesn’t plan to consider a trademark when selecting an applicant, that doesn’t mean someone won’t try to use a trademark to halt others’ new TLD plans.

.Store seems fairly similar to an initiative for .shop. Frankly, I like .store better.


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U.S. Shuns .Music Trademark Ahead of New TLD Launch

June 14, 2011.music, constantine roussos, Domaining, Domainnamewire, new top level domain names, Policy & Law, trademarksComments Off on U.S. Shuns .Music Trademark Ahead of New TLD Launch

Trademark office questions use in commerce of .music logo.

.musicConstantine Roussos has made it clear that he plans to use international trademarks to help him win the .music top level domain name during the application process.

But the U.S. Patent and Trademark Office isn’t playing a long.

On December 31 Roussos filed a trademark application for a .music logo. The U.S. Patent and Trademark Office wrote back saying there were two problems:

1. The mark hasn’t been used in commerce “in connection with the identified services as of the filing date of the application.” In other words, Roussos has used the logo but not for the goods and services identified since no one can actually register .music domain names right now.

2. The application must disclaim the descriptive wording “.MUSIC”. Filing a design trademark that includes .music may be a clever way to claim rights to .music, but the USPTO isn’t hearing it.

Roussos isn’t the only one filing trademarks on top level domain names before the application window even opens. I think this will be one of the messy areas during the application process.

Roussos’ .music campaign has its first announced competitor. I expect there to be more.


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