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New gTLD program continues to gain momentum – nearly 6 million new domain registrations to date

The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.

What’s selling?

During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.

The top 10 gTLDs in terms of number of domain registrations:…

End of Cuban embargo could prove costly for unprepared trademark holders

President Barack Obama has called on the U.S. Congress to lift the U.S. embargo on Cuba and normalize trade relations. French President François Hollande recently urged the same of the U.S., saying there is growing interest in doing business with Cuba. When the embargo is lifted, U.S. companies should be prepared to enter the Cuban marketplace. Being prepared means seeking trademark registration.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Though it may take time to reach normalized …

Katy Perry’s left shark – take 2

In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three  applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine …

Have you taken appropriate measures to ensure your intellectual property is secure?

If manufacturing or selling goods in China is part of your current or future business strategy, it is not too early to ensure protection of your intellectual property in China. On May 8, Porter Wright is holding half-day seminar titled Strategies for protecting IP rights in China to discuss U.S. businesses’ experiences as they enter the Chinese market. During this in-person event taking place in Columbus, Ohio, business leaders have the rare opportunity to gain insights directly from Beijing-based IP attorneys. Skilled IP practitioners from the U.S. and China will discuss real-world scenarios and strategies about how businesses can ensure their intellectual property is protected. Topics are:

Wu-smallObtaining patent protection and challenging patent validity in China Get an overview of the types of patent protection available in China, and how U.S. businesses can leverage these patents to protect their new technologies and products. If a Chinese business or other Chinese patent owner makes an accusation of patent infringement, also understand procedures that can be taken to invalidate a Chinese patent. Speaker: Gary Wu, Kangxin Partners

Liles-J Web 2007Preventing unauthorized importation of your products from China Sometimes, regardless of efforts to protect your company’s IP, it happens: A rogue manufacturer or other party copies the product you are manufacturing in China and starts selling it in the U.S. (and elsewhere). Learn what steps you can take to minimize risk, pursue legal options, decommission unlawful operations and maintain the value of your intellectual property. Speaker: Jim Liles, Porter Wright

Li-croppedDeveloping your business based on …

A potential game-changer in trademark registration proceedings

In trademark infringement litigation, the critical and usually pivotal issue is whether there is a likelihood of confusion between two allegedly similar marks. Eliminating a defendant’s ability to defend against an allegation of likelihood of confusion can be tantamount to establishing liability against the defendant. Yet, that will be the situation for many defendants following the U.S. Supreme Court’s March 24, 2015 decision in B& B Hardware, Inc. v. Hargis Industries, Inc. In that case, the Supreme Court held a defendant can be precluded from contesting “likelihood of confusion” if that issue, or a non-materially different issue, was previously decided between the parties in the Trademark Trial and Appeal Board (TTAB), a tribunal in the U.S Patent and Trademark Office (USPTO).

At first blush, the decision might not appear unusual. The doctrine of “issue preclusion,” a doctrine that prevents a party from relitigating an issue previously decided between parties, is long established law. TTAB decisions, however, are different for several reasons. First, the TTAB is part of an administrative agency (the USPTO), not part of the judicial system. Second, TTAB decisions are based on “the mark as shown in the application [for trademark registration] and as used on the good described in the application,” not the mark as actually used in the marketplace. Third, and perhaps far more significant in practical terms, many trademark registration proceedings in the past have been conducted under the assumption that the stakes involved in the proceeding were relatively modest. TTAB proceeds were viewed as …

Protecting your brand in the age of gTLDs dot sucks

ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.

Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail.…

gTLD update: .adult and .porn on the horizon

The Internet was in a tizzy back in 2011 when ICM Registry began selling .xxx domain names for use by adult entertainment providers, selling nearly 250,000 addresses and netting more than $50 million. Just last year the registry sold sex.xxx for $3 million dollars, the highest price paid for a non-dot-com address. Which leads us to wonder if the addition of .adult and .porn will generate the same concerns and profits. ICM Registry has set aside nearly 1,000 domain names such as sex.porn, hoping to replicate the success they had with .xxx. But the concern for many trademark holders, as was the case with .xxx, is how to protect their brands during the launch of .adult and .porn?

ICM Registry has set up an elaborate registration period, in effect now through the launch to the general public, which is expected in early June. The two gTLDs opened their Sunrise periods March 2, which will give trademark holders who are registered in the Trademark Clearinghouse (TMCH) the opportunity to secure their registered trademark within the new top level domains.  Domains names are available on a first-come, first-served basis to validated marks in the TMCH. The cost of registration fees will be the standard registration fees without any additional sunrise application fees.

Once the Sunrise period has closed, .adult and .porn will launch a Sunrise B period from April 6 to April 30 for .xxx Sunrise B applicants. Sunrise B applicants consist of trademark owners who participated in the .xxx Sunrise B …

Supreme Court charts clear course for trademark tacking determination

The U.S. Supreme Court created some wake by issuing their first substantive trademark ruling in more than a decade this week. The Supreme Court decided to hear a case on appeal from the Ninth Circuit’s decision in Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013) cert granted, 134 S. Ct. 2842 (2014).

Of significant importance to the case is the trademark doctrine of tacking, which allows a trademark owner to make slight modifications of a trademark over time while maintaining the original first-use priority date. The doctrine holds that the original mark and the later, slightly altered, mark may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).

The issue addressed by the Supreme Court is whether a judge or a jury should determine whether tacking is available — that is, whether the original and revised marks are legal equivalents — in a given case.…

gTLD update: ’Tis the season for new gTLDs

ICANN has been making a final push this December after a couple sluggish months and has delegated 40 gTLDs since our last gTLD update. Those newly delegated gTLDs are:

  • .docs
  • .tires
  • .dev
  • .schwarz
  • .iwc
  • .osaka
  • .sew
  • .garden
  • .lidl
  • .doosan
  • .sky
  • .cartier
  • .samsung
  • .商店 (shop)
  • .adult
  • .porn
  • .trust
  • .eurovision
  • .fashion
  • .latrobe
  • .irish
  • .网店 (webstore)
  • .aquarelle
  • .memorial
  • .legal
  • .money
  • .coach
  • .everbank
  • .谷歌 (Google)
  • .madrid
  • .firmdale
  • .グーグル (Google)
  • .mormon
  • .lds
  • .party
  • .八卦 (gossip)
  • .cricket
  • .science
  • .reit
  • .android

Though ICANN has picked up the pace, there are only a small number of gTLDs about to enter or in the sunrise phase this month.…

Changes are coming for trademark registration holders in Canada

In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.

Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted.…

Supreme Court decision likely to affect TTAB proceedings

Early in December 2014, the U.S. Supreme Court heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. At issue are inconsistencies by the 12 regional federal courts appeal in giving preclusive effect in trademark infringement cases to a denial by the Trademark Trial and Appeal Board (TTAB) of an application to register a trademark in an opposition action. Issue preclusion prevents a party to a lawsuit from re-litigating an issue once it has been decided in a previous case where the party was given a full and fair opportunity to litigate the issue. The issue here is “likelihood of confusion.”

B&B owns a U.S. registration for the trademark SEALTIGHT. When Hargis applied to register SEALTITE, B&B opposed the registration. The TTAB held for B&B. B&B then sued Hargis in district court, alleging trademark infringement. The district court found that the TTAB’s ruling for B&B did not have preclusive effect on the district court case. B&B appealed to the Eighth Circuit. The Eight Circuit held that the TTAB and the district court used different tests to reach their findings of a likelihood of confusion, so refused to apply issue preclusion. B&B appealed to the Supreme Court.…

Sony Data Hack: “You Can’t Lose What You Ain’t Never Had”

Back in the 1960’s, legendary bluesman Muddy Waters wrote a song called “You Can’t Lose What You Ain’t Never Had.”

Now, it is Sony Pictures that is singing the blues, as damages continue to mount following the cyber attack on its data networks just before Thanksgiving. A shadowy group with possible connections to the North Korean government has claimed responsibility for the hack, which, to date, has resulted in exposure of Sony intellectual property (e.g., movie scripts), trade secrets (e.g., film budgets), employee personal information (e.g., employee and former employee home addresses and social security numbers) and other sensitive information (e.g., actor travel aliases and phone numbers).

I’m no cybersecurity expert, but I’m at the point where I seriously doubt any currently available data security technology is totally hack-proof. Who knows, there may have been precious little that Sony could have done to prevent the loss of its intellectual property and trade secret information to determined hackers. Let’s face it, some of the most highly sophisticated corporations and government agencies have been victimized by cyber attacks in the last year. But the same really can’t be said for their employee data.…

Breaking down new gTLDs by the numbers

The Internet Corporation for Assigned Numbers and Names continues to be sluggish in delegating new gTLDs this month, delegating no new gTLDs since our last post. But ICANN has made a dent this year in the 1,930 gTLD applications submitted, delegating 432 new gTLDs to date. Of those 1,930 applications, 1,157 are proceeding through the new gTLD program and 341 have been withdrawn.

Are new gTLDs selling?

More than 3 million second-level domains have been purchased in new TLDs, but of those 3 million, nearly two-thirds are parked domains, i.e., registered internet domain names which are not associated with any services. A total of 62,666 new second-level domain registrations were purchased within the last week, at an average of nearly 9,000 a day.

Top 10 gTLDs in terms of registrations:

Rank

New domain

No. of registrations

1

.xyz

700,817

2

.berlin

153,170

3

.club

131,418

4

.realtor

84,621

5

.wang (net)

82,837

6

.guru

75,460

7

.nyc

55,905

8

.oyc

54,387

9

.london

48,852

10

.photography

47, 766

gTLD update: Are ICANN and the gTLD program suffering from jetlag?

ICANN has given 34 gTLDs the green light to launch since our last gTLD update. Only 14 new gTLDs were launched in the month of October, and only 21 were delegated in total for the month of September. These numbers are strikingly low compared with the rapid-fire delegation the Internet community witnessed through the summer. The following list represents the small batch of gTLDs that have been delegated by ICANN since Sept. 15, 2014:

  • .sydney
  • .bloomberg
  • .energy
  • .delivery
  • .taipei
  • .emerck
  • .band
  • .yoga
  • .crs
  • .abogado
  • .rip
  • .wedding
  • .poker
  • .alspace
  • .allfinanz
  • .ibm
  • .forsale
  • .vermögensberatung (financial advice)
  • .vermögensberater (financial advisor)
  • .pyc (Russian)
  • .tui
  • .dvag
  • .pohl
  • .work
  • .casa
  • .budapest
  • .world
  • .fly
  • .nexus
  • .channel
  • .prof
  • .gle
  • .zip
  • .cal
  • .chrome

This sluggish behavior also is demonstrated with the small number of gTLDs currently entering or in the sunrise phase this month.

These gTLDs are in the queue for launching:…

Grab your passport; geographic gTLDs are jetsetting this month

Twenty-three new gTLDs have been delegated since our last post. The following gTLDs have been cleared for takeoff:

  • .network
  • .企业 (Chinese for “enterprise”)
  • .business
  • .otsuka
  • .gbiz
  • .gmail
  • .pizza
  • .immo
  • .esq
  • .prod
  • .here
  • .youtube
  • .meme
  • .eat
  • .rsvp
  • .mov
  • .new
  • .ing
  • .frl
  • .day
  • .dad
  • .boo
  • .gmx
  • .pharmacy
  • .wme

Delegation is the green light for new gTLDs to launch into their respective mandatory sunrise period before moving on to landrush, early access and their final destination: general availability.…

Coinye West will not take over bitcoin’s reign on cryptocurrency

There’s exciting news in the world of cryptocurrency, the exchange medium that uses cryptography to secure the transactions and control the creation of new units. Bitcoin, created in 2009, was the first cryptocurrency and remains the most popular, though numerous other cryptocurrencies, such as Coinye, have emerged in the interim.

Where can you find cryptocurrency? Certainly not at your local bank.

Cryptocurrency is essentially digital money, a virtual medium of exchange that is not issued, backed, or tied to any particular nation or government. Cryptocurrency derives value through a variety of ways, such as buying either from exchanges, or directly from other people selling them, or try your hand at mining, which requires software you download to your computer.

After obtaining cryptocurrency, such as a bitcoin, the next hurdle is finding someone who will accept the currency in exchange for goods and services — which isn’t as difficult as you might think. Analysts estimate that over 65,000 bitcoin transactions occur every day through electronic transactions. What types of goods and services are exchanged, you may ask? Almost anything from the mundane products, such as electronics or dog apparel, to swanky cocktails or a Tesla, or to the illegal, including drugs and guns. Because purchases occur online through user’s virtual wallets, purchasers can remain anonymous and law enforcement can’t freeze their accounts.

Back to school – time to get educated about the newest gTLDs

Ready for the first day of sunrise

ICANN continues to make big strides in widening the Internet playing field. To date, ICANN has invited 1,159 new gTLDs to contract, and of those 1,159 invited, 495 registry agreements have been signed. From the 495 applicants who have signed a registry agreement, ICANN has delegated 357 new gTLDs to the root zone including the newest 20 that have been delegated since our last post. The newly delegated gTLDs are:

  • .tatar
  • .wales
  • .gifts
  • .sarl
  • .cymru
  • .restaurant
  • .bnpparibas
  • .佛山 (Chinese city of Foshian)
  • .广东 (Chinese province of “Guangdong)
  • .sca
  • .caravan
  • .cern
  • .ltda
  • .property
  • .hosting
  • .help
  • .uol
  • .ooo
  • .how
  • .diet
  • .click

ICANN continues to rapidly expand the Internet this summer — newest statistics released

As of July 4, 2014 ICANN announced that out of the 1,930 applicants received in 2012, 1,146 have been invited to contracting. Contracting is the process through which ICANN will contact eligible applicants and engage with them through execution of the registry agreement. Contracting is part of the transition to delegation phase of the New gTLD Program. To date, 464 registry agreements have been signed and those new gTLDs have entered the delegation phase of the program.

Next six gTLDs jump into the Internet pool

More than 300 new gTLDs have now been delegated to the root zone. A gTLD is delegated to the root zone and becomes a part of the Internet once it has completed the new gTLD program. The newest group of gTLDs to be delegated is:

  • .deals
  • .melbourne
  • .city
  • .schmidt
  • .cuisinella
  • .cancerresearch

The Internet revolution — new gTLD update

Since our last blog post, the total number of domain name registrations among all new gTLDs has reached 1,414,766. There has been little movement this week on the leader board. The leaders are:

Number

New domain

Total registrations

1

.xyz

250,731

2

.berlin

136,703

3

.club

78,767

4

.guru

64,123

5

.photography

39,868

6

.email

34,799

7

.link

33,781

8

.在线 (online)

33,726

9

.today

29,669

10

.tips

25,661

ICANN has delegated four new gTLDs to the root zone:

  • .active
  • .suzuki
  • .place
  • .direct

Protecting the home front

It is important to remember that each newly delegated string that is set to launch is potentially one new threat to a trademark owner’s brand unless it has proactively protected its registered trademarks.…

It’s game time — 140 new gTLDs are now publicly available

To date more than 1.3 million new second-level domain registrations have been registered within new gTLDs that have launched. The top 10 on the leader board are:

Number

New domain

Total registrations

1

.xyz

214,789

2

.berlin

136,371

3

.club

76,035

4

.guru

63,234

5

.photography

39,066

6

.email

34,172

7

.在线 (online)

33,605

8

.link

33,456

9

.today

28,887

10

.tips

25,120

The Redskins trademark decision — great media interest, overhyped reaction

The June 18, 2014, decision of the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) cancelling six federal trademark registrations for trademarks used by the Washington Redskins professional football team has received substantial media coverage and generated great interest among the public.

The impact of the decision has been widely misstated in early news reports. Harry Reid, the Senate Majority Leader, stated on the Senate floor: “The Redskins no longer have trademarks. They are gone.” According to the Majority Speaker’s statement, anyone who wants to sell T-shirts with the name Redskins can now do so.” Highly regarded publications have advised their readers: “The ruling, if it stands up to an appeal to the U.S. Court of Appeals for the Federal Circuit, would mean that the NFL no longer has the exclusive right to sell merchandise and apparel branded with those specific uses of the nickname.”

The truth is far different. Though undoubtedly a matter of significance in the trademark area, the legal impact of the TTAB’s decision is likely to be far less influential than these news reports suggest. Most importantly, the decision, even if ultimately upheld, does not mean that the team has lost all rights in the marks or that the marks are not enforceable under state or federal law. To put the case into perspective, let’s look at what happened, what the decision means to the NFL, and what it means for the rest of us.…

Quiet week for gTLDs but don’t be fooled — the new dot era is still heating up

New gTLD total registrations surpassed 1 million this week with 1,068,354 domain name registrations. In the wake of the .xyz promotional domain name registration scandal, .xyz overcomes .club and .guru on the leaderboard, with 113,242 registrations. The top 10 new gTLDs now are:

Number

New domain

Total registrations

1

.xyz

113,242

2

.club

69,285

3

.guru

61,202

4

.berlin

48,183

5

.photography

37,876

6

.在线 (online)

32,730

7

.email

32,629

8

.link

32,515

9

.today

26,923

10

.tips

23,583

NetSol comprises 96,158 of the total number of new registrations within the .xyz registration, maintaining 84.91% compared with GoDaddy.com’s 5.93%. These statistics still beg the question: Are these numbers inflated because of the complimentary domain name give away?…

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