Does the public really want new generic top-level domains (gTLDs)?

Most people that use the Internet are familiar with the generic top-level domains (gTLDs): .com, .net, etc., and use them on a daily basis. These gTLDs have gained a level of cachet, and are more commonly used than country specific domain names (e.g. .co.uk or .jp) by companies. In the past, users traditionally would use a search engine to find a website for a company. Now most users simply add “.com” to the company’s name (or trademark) to find the website. Due to the popularity of .com, most of the “desirable” domain names are already registered. It can be difficult to register a new domain name in the .com space, unless it’s something bizarre (sdfjhdskjfhsdwh.com) or unwieldy (like joeswestlosangelesrestaurantandbar.com rather than joesbar.com).

Because of the desire to have simple, easy to remember (and search engine optimization-friendly) domain names, a number of attempts have been made to create new gTLDs (such as .jobs, .mobi, and .biz). These new gTLDs have not been widely adopted or successful, and there are some indications that they are not profitable in the long term. New gTLDs pose risks to trademark holders (who likely already have registered the .com, .net, etc. version of their trademarks), and thus they often register their marks in the new gTLD (even if there is no intent to use the new domain name).

The logic is that it is cheaper and easier to register a domain name in a new gTLD than to have a competitor or cybersquatter do so (and thus have to litigate or use other methods to recover the domain name). Most new gTLDs have a sunrise period when trademark holders can preregister their trademarks- sometimes necessitating payment of hundreds of dollars in addition to registration fees. I have heard grumblings from my trademark colleagues that this is the only time that new gTLDs are really profitable. Observing how little these gTLDs are used and/or promoted, I tend to agree.

In spite of this, domain name registrars are convinced that new gTLDs (such as .sex, .berlin and .nyc) are desperately needed. If you have attended an ICANN meeting in the past decade (I have), this very vocal group constantly has pushed for allowing their gTLD to be accepted, or for opening the gates wide open and allowing for pretty much anything to be setup as a gTLD. It looks like ICANN got sick of the complaining, and has decided to implement unrestricted gTLDs.

Let’s just say that this decision scared the hell out of trademark holders. They imagine having to register their marks in dozens (hundreds?) of new gTLDs each year, maybe costing upwards of tens of thousands of dollars annually (for domains they have no desire to use). I work for such a trademark holder, and I agree with them. I have no idea how much it will cost, and question why we need all of these domains.

ICANN recently brought on a new president, Rod Beckstrom. In an interview with the Washington Post, Mr. Beckstrom said:

ICANN is simply asking the global community of IP attorneys and others to develop the best possible solutions they can which can actually be implemented. But one of the solutions is not avoiding the gTLDs, because there’s tremendous demand from all over the world to have those, and the number of companies who are opposing them appear to be a minority compared to those who think they should be out there and present.

I added the emphasis. Yes, Mr. Beckstrom says that the public is clamoring for these new gTLDs. I was shocked to read this. I have been a server administrator since 1993 (when I ran my college’s Gopher server), first professionally then as a hobby (I still administer the server hosting this blog). I am a rare attorney that actually understands and has worked to administer the underlying technology of the Internet. I am, for lack of a better description, a computer geek that spends a lot of time using and learning about the Internet.

I have not heard of a single general Internet user demanding new gTLDs. Most users do not even know what a gTLD is. The only time I have heard anyone demanding opening up new gTLDs is by domain name registrars and other companies that would make money from the registration of new domain names.

So, I decided to research if the public really is excited about new gTLDs. Not surprisingly, there was little info out there on this. I did, however, find one survey that was actually conducted by a registrar (Gandi Bar). The results are telling:

The majority of consumers polled (60%) agree that the liberalisation of domain name extensions will change the way they use the Internet, but not for the better. The sceptical amongst them believe that the Internet will become full of pointless domain names (for 65% of the people polled), messy and confusing (57%), too complex to navigate (46%) and out of control (41%).

Consumers muster little enthusiasm for any new top-level domains. A quarter of people are ambivalent about the prospect of a .music suffix and 28% would be wary of domains ending with .theirprofession. Just 15% think this sort of suffix would be appealing. Consumers are most suspicious of extensions linked to porn and religion. A massive 84% of consumers think .sex is dodgy, and two thirds think .god is suspect.

This registrar is admitting that the public doesn’t want these new, and likely confusing, gTLDs. Gone will be the days when you can add .com to a trademark or company name to find their website, you’ll have to poke around through search engines to find them. The public understands this, and doesn’t want this.

I decided to contact Mr. Beckstrom about his comments. Mr. Beckstrom, to his credit, is easy to contact online (he followed me back on Twitter and responded to my email within a day). I asked him how he could reconcile his statement with the survey I quoted (along with my own personal observations and experience). I told him that I, as an attorney with a company that has a very important trademark portfolio, would work with ICANN if we knew that the public really wants these new gTLDs. If it’s just registrars and not end users who want this, then obviously we trademark holders have some legitimate concerns about costs and loss of trademark rights.

Mr. Beckstrom replied that he received my email, appreciated my feedback, and would follow up once he had time to review my request. That was July 6, 2009- I’ll post again when I hear back from him.

Thanks to Ron Coleman for inspiring me to write this post.

Posted in domain names, gTLDs, ICANN, Rod Beckstrom | 1 Comment

Facebook to launch usernames: reserve your trademark now!

As some of you may know, Facebook has been testing usernames for its accounts. Previously accounts were identified through a user number and name, and thus URLs for Facebook pages would look like: www.facebook.com/people/Owen-Smigelski/714352306.

Facebook announced on June 9 that on Friday, June 12 at 9:01 PM (Pacific), username registration will go live for all users. This will allow for a simpler user page such as http://www.facebook.com/owen.smigelski (however I personally hope to register as “owen”).

This could pose a problem for trademark holders, with the classic Web 2.0 foible of third parties registering trademarks as usernames. Facebook has attempted to address this, and has a form entitled “Preventing the Registration of a Username” for trademark holders. The form is at: www.facebook.com/help/contact.php?show_form=username_rights

There are a few unanswered questions about this form:

(1) Will I receive an email confirmation of my submission (I did not receive one although I submitted the form about 20 minutes ago)?
(2) Will I receive confirmation that my request has been processed/accepted?
(3) Will my company be able to use the reserved username for our own company’s official product page on Facebook?
(4) Can non-Facebook users utilize this form to prevent registration of a trademark as a username?
(5) Will company product pages be able to register for usernames as well?
(6) Is there a limit to the number of trademarks that can be reserved (the form only allows for the entry of one mark/reg. no.)?
(7) Can a trademark registration entered in the form be for any jurisdiction (including ones which may not be easily identified online?)
(8) What will happen in the event that multiple parties reserve/attempt to use the same trademark term?

Some credit is due to Facebook for establishing this trademark reservation system, however in light of the impending deadline, trademark holders need to reserve their marks ASAP.

Good luck,

Owen

Posted in Uncategorized | 1 Comment

New job

It’s been a little while since I’ve posted- I’ve been busy with work, and interviewed for a new job. I will be moving from my current law firm job to an in-house position with Sunrider International. I will be the senior counsel for intellectual property, and be responsible for the company’s worldwide I.P. portfolio. Although I will miss litigation, I will be at my dream job- focusing solely on worldwide I.P. I look forward to the new position, which I will be starting on June 25. My updates will be sporadic until then, but once I’m settled in my new position, I will start updating the blog again.

Posted in Uncategorized | 1 Comment

Church symbol trademarks

I read an interesting article today regarding a trademark dispute brewing (sorry for the pun) in Utah involving coffee, clothing, the angel Moroni, and the Church of Jesus Christ of Latter Day Saints (aka the Mormons). The article is entitled Church Trademark Used to Sell Coffee Shop T-shirts.

The dispute involves a coffee shop in Taylosville, Utah called Just Add Coffee. The individuals decided to sell a t-shirt and greeting cards that utilize images of an angel. They drew unwanted attention by using a specific angel- namely the angel Moroni. For those of you not familiar with the Mormon faith, Moroni was the angel who told Joseph Smith (the founder of Mormonism) the material that would become the Book of Mormon. Moroni had some golden plates upon which were inscribed these words of god. A picture of Moroni is to the right, and it is Moroni from which the term “Mormon” is derived. Moroni is thus one of the fundamental pillars of the Mormon faith. Each Mormon temple that is constructed has a gilded statute of Moroni, facing Salt Lake City, Utah, and blowing a trumpet. I am not an expert in Mormons, but I imagine that each statute of Moroni looks different– and an example is provided to the left.

The Mormons have decided to take issue to the use of the angel Moroni in conjunction with apparel and stationary relating to coffee. They claim trademark rights to the image of Moroni, and have requested that Just Add Coffee cease all use of the angel image (to which Just Add Coffee has stopped using the image).

I think the Mormons have a very weak case, and that Just Add Coffee should continue using their design. Can one have a trademark in a symbol that represents a religion? Where does this end- will the Mormons police all use of the name? Will they stop all use of the beehive (another symbol associated with Utah and Mormons) image? This is the same as the Pope asking people to stop using images of the cross or Christ in their names or logos. Similar arguments can be made for the Star of David or the Crescent Moon. Furthermore, there does not appear to be one image of Moroni that is always used, thus it appears they’re claiming rights to any guy blowing into a long horn. I’ve seen similar representations in artwork, architecture, and products elsewhere- so the Mormons have perhaps not been diligent in enforcing their alleged trademark. This enforcement of trademark rights can also extend to all individuals that use images of the Moroni statutes, which I suspect includes a significant number of tourist related information (guides, postcards, books, movies, etc) and other “unauthorized” uses of the angel Moroni.

I suspect one main issue the Mormons had was the use in conjunction with coffee, which the Mormons forbid. Additionally, this is a store located in Utah, where individuals are more likely to be familiar with the representation of the angel Moroni. The Mormon church may not want individuals assuming that Just Add Coffee is associated with, or approved by, the Mormons. While certainly valid reasons, I do not believe that Just Add Coffee should stop their use.

Posted in apparel trademark, cease and desist, mormons, trademark infringement | 8 Comments

No immoral or scandalous trademarks

A client of mine recently asked to register a trademark that included what one would consider a “bad word.” The word in question rhymes with “duck.”* I advised my client that there is no way to register such a word through the United States Patent and Trademark Office. U.S. law forbids the registration of marks that consist of “immoral or scandalous matter.” Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01.

To be considered “scandalous,” a mark must comprise something that is “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

One might consider that today, when “bad words” are more prevalent in common parlance, that such standards would be lower- and thus more words no longer qualify as “immoral or scandalous.” That is not the case. Basically any bad word, such as “f*ck,” “sh!t,” and “a$$hole,” cannot be registered in the U.S.

That does not stop a lot of people from trying to register such marks. This is one reason for consulting a trademark attorney before filing a trademark application, as they can assist you from essentially donating your filing fees to the USPTO. There’s no way you’ll be able to argue around this rejection. A quick search of the USPTO records indicate 39 rejected applications comprising the f-word, 60 rejected applications comprising the s-word, and 8 rejected applications with the the a-hole word. The results of these searches are below.

F_ck Trademark Applications
Sh_t Trademark Applications
A_shole Trademark Applications

I have also seen marks such as sh!t being rejected, because the USPTO states that everyone knows that it actually means the word for poop. The only way this will change, and we’ll be able to see registered trademarks that comprise “dirty words” will be to change the laws. For now you’ll need to use the “TM” symbol, other common law rights, and perhaps state trademark systems to protect your more racy trademarks.

* I myself am no stranger to dirty words, and occasionally use them in my more colloquial speech. I see no need to censor these words on TV or elsewhere. However, to ensure this site is not blocked by filters at work and school, I am using the abbreviations of these words.

Posted in immoral, office action, scandalous, trademark prosecution, trademark rejection, uspto | 3 Comments

Internet Trademark Domain Name Disputes

The National Arbitration Forum just released three decisions regarding trademark domain name disputes, which is commonly referred to as “cybersquatting.” The three cases illustrate different how to win an internet domain name trademark dispute, and how not to.

Magic Johnson

The first domain name is MagicJohnsonTravelGroup.com. June Bug Enterprises, on behalf of basketball legend Magic Johnson and his latest venture Magic Johnson Travel Group, filed to recover the domain name MagicJohnsonTravelGroup.com. A few days after the announcement of the formation of the Magic Johnson Travel Group, myspecialprice.com registered the domain name in question. myspecialprice.com had no rights to utilize the terms “Magic Johnson,” and provided pay-per-click ads on the website. The Forum found for Magic Johnson, and ordered the domain name transferred from myspecialprice.com to Magic Johnson. This case illustrates the importance of registering domain names for your trademarks- especially before announcing your new trademarks to the public. The cost of registering the domain name is a lot lower (and quicker) than having to arbitrate over the domain name. The full decision is June Bug Enterprises, Inc. v. myspecialprice.com

War Games

In 1983, Metro-Goldwyn-Mayer Studios (“MGM”) produced the hit movie “War Games.” In 1998, World Readable registered the domain name wargames.com. For 8 years, pay-per-click ads appeared on the website, and in 2006 the website began selling military simulation war games.

The arbitrator found that although the marks were identical, MGM failed to show the 3 requirements to transfer a domain name:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The arbitrator found that World Readable had legitimate rights in the domain name, in light of the sale of products. This case highlights the importance of policing your trademarks, and for acting immediately to address infringers. If MGM had gone after World Readable 5 years ago, when they were only showing ads, then they would have likely been successful in obtaining the domain name. The full decision is Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead.

Pig

The third case involves the trademark “pig.” Canadian Adam Dicker registered the domain name pig.com. New Pig Corporation has been using the trademark “pig” since 1987 for industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products. Mr. Dickler has been using the pig.com domain name to show pay-per-click ads. The arbitrators found that since Mr. Dicker had not registered the domain name in bad faith (e.g. he did not intend to usurp New Pig’s trademark rights, and obtained the domain name because of it’s desirable 1 word format), then New Pig had not proven the necessary elements to force transfer of the domain name.

Mr. Dicker purchased the domain name in an auction in 2006. New Pig should have been policing the mark and the domain name, and could have won it through the auction. They gambled through the arbitration process, and in the end, do not have a domain name with their trademark. Mr. Dickler is earning over $2 for the top click on his website, so this also demonstrates the value of domain names. The full decision is New Pig Corporation v. Adam Dicker.

Read the full press release.

Posted in cybersquatting, domain names, trademark infringement, trademark rights | Leave a comment

Asics and Skechers trademark dispute

Two dueling press releases caught my attention today– because they involve trademark infringement allegations, and are from my two favorite shoe companies. ASICS, maker of athletic shoes, has sued SKECHERS, maker of “lifestyle footwear.” I run marathons wearing ASICS, and prefer SKECHERS for my casual shoes. According to ASICS, they are suing

for trademark infringement, unfair competition, trademark dilution and false advertising. ASICS is seeking a permanent injunction against Skechers [sic] to prevent any future sales and distribution of shoes that bear a stripe design similar to ASICS famous stripe design. In addition, ASICS is also seeking damages, including profits and attorney fees.

The press release includes a quote from the vice president and general counsel of ASICS, Michael Zall:

“These shoes are an attempt to free-ride on the ASICS brand image and goodwill associated with our stripe mark that we have developed over the years. ASICS has spent over 40 years building a world-renowned premium brand and nurturing the goodwill represented by this mark. We will do what we must to protect the ASICS brand and to maintain its integrity.”

ASICS states that their stripe mark is a registered trademark in most countries in the world. Read the full press release (Feb 5, 2007).

SKECHERS has replied with press release dated Feb 7, 2007, in which they deny all the allegations. A good legal analysis is put forth by executive vice president and general counsel of SKECHERS Philip G. Paccione:

“We believe that this lawsuit is completely without merit and will vigorously defend ourselves and our customers against such baseless allegations,” says , General Counsel and Executive Vice President of SKECHERS. “Our stripe design does not look like the ASICS trademark; in fact, on the shoes in issue, our differences are patently obvious. Our designs use one horizontal stripe while ASICS uses two horizontal lines — a prominent feature of the ASICS trademark. In addition, our designs do not mimic the curves and contours of ASICS’ design. There are many differences. “

Read the full SKECHERS press release.

Here are pictures of the two shoes in question:

The shoe on the left is from ASICS, and the one on the right is SKECHERS. Looking at the two side-by-side, I tend to agree with Mr. Paccione, in that the stripe patters are indeed different- there are different numbers of stripes, one is wavy and the other straight, the orientation is different… and a number of other differences.

I think it might be tough for ASICS to win this one, however this can only be determined by significant analysis- and the use of consumer surveys. This is gearing up to likely be a very long and expensive court battle.

Posted in ASICS trademark, false advertising, SKECHERS trademark, trademark dilution, trademark infringement, unfair competion | 5 Comments

Keith Urban v. Keith Urban- trademark infringement

The Smoking Gun has an interesting article today, regarding litigation by Keith Urban. The two litigants are both named Keith Urban. The plaintiff, Keith Lionel Urban, is a country musician from Nashville, Tennessee. He is the husband of Nicole Kidman who spent three well publicized months in rehab. The defendant is Keith D. Urban, of Wayne, New Jersey. He is a painter.

Keith L. Urban is unhappy that Keith D. Urban runs the website keithurban.com. He wants Keith D. Urban to stop selling his paintings on the website. Keith L. Urban was slow in registering domain names, and he uses the website keithurban.net. I did a quick search through Google for “Keith Urban,” and the all of the first few pages of search results all point to the country singer, and identify his .net website.

When I first read about this website, I figured that Keith L. Urban must be back on the bottle- the other guy is actually named Keith Urban, registered the domain name first, so one could logically conclude that the painting Urban has the right to use the domain name comprising his actual name.

Then I took a look at the keithurban.com website, and I immediately knew that Keith L. Urban had a very strong case, and will likely win against Keith D. Urban. The country singer alleges that the painter is using the website of keithurban.com in bad faith, and confusing people into believing that he is the painter in addition to being the singer.

Of particular note, keithurban.com leads you to believe that it is actually the singer who does the paintings. The website prominently proclaims:

You have reached the site of Keith Urban
To Those Who Don’t Know, Oil Painting
Is One Of My Hobbies.

The website later continues with:

For production reasons the print will not be the exact size as the painting, however it will be as close to the original size of the painting as possible.
The print will be autographed and numbered on the back and also comes with
a certificate of authenticity that is also autographed and numbered.

At no point does the website indicate that the individual is someone other than Keith Urban, country music star. Indeed, it leads one to believe that this may even be the Keith Urban, musician. By not clarifying this important fact, the painter Keith Urban is likely attempting to profit from the well known musician. Many people (myself included) will often go directly to a name and add “.com” when attempting to visit a website. I imagine the painter is receiving a good bump in website traffic by these accidental visits. As I noted earlier, the .com website does not show up within the first few pages of Google search results.

I have saved copies of the main page of keithurban.com, in the likely event that the website is shut down or ordered to change (and likely enter a disclaimer). Click the thumbnail image above to view the main page.

Posted in cybersquatting, domain names, trademark infringement | 5 Comments

Mary Carey trademark update

I earlier wrote about the trademark issues between Mary Carey and Mariah Carey. Mary Carey (the porn star, not to be confused with Mariah the singer) appeared on the Howard Stern Show on Sirius (yes, I am a subscriber). The issue of the trademark dispute came up, and everyone wondered how the dispute could actually exist- in that they sound different, do different types of entertainment, etc. All of which agrees with my earlier article. A “patent attorney from Pittsburgh” called in and said that under a likelihood of confusing test, where the marks are compared, they are confusingly similar.

It appears that our esteemed patent attorney missed the doctrine of laches. That basically states if you wait too long to bring a claim, you lose the right to do so. IMHO, Mariah Carey has waited too long to lodge any complaints. Mary Carey has been really big in the news for at least 3-4 years, in porn as well as the gubernatorial elections here in California. I even recall seeing a picture of Mary Carey promoting the re-election of President Bush in 2004, using her porn name.

Mary, who may have been drinking a little for the show, also claimed that she got the name “Carey” because of her crazy antics- like that of Jim Carey. I’m not sure if that argument will fly, but they point out many porn star names that are similar to those of other famous people- such as Arnold Schwartzenpecker– so Mariah may be a little late getting to the “stop Mary Carey” party.

More details as this case develops….

Posted in mariah carey, mary carey, trademark opposition, uspto | Leave a comment

Police to reunite? Check the USPTO

I’m a big fan the the band The Police, and have been reading a bunch of stories recently about how they may perform at the Grammys, which is just a prelude to them reuniting for a tour. Today it was confirmed by the Grammys that yes, the Police will perform at the Grammys.

My guess is that they will also go on tour afterwards. My reason? They filed a nice trademark application on January 4, 2007, covering a wide range of goods and services. Tellingly, part of the goods/services are for “use in commerce,” since the early 80s, such records and clothing– whereas other goods/services are “intent to use,” such as tour programs and live musical performances. The full listing is:

Class 9:
Records, audio tapes, video tapes, compact discs, and DVDs, all containing music.
FIRST USE: 19770600. FIRST USE IN COMMERCE: 19790000

Class 25:
Clothing, namely, t-shirts;; Clothing and footwear, namely, bandanas, caps, hats, belts, headbands, jackets, jerseys, sweatshirts, shirts, pants, shorts, shoes.
FIRST USE: 19791200. FIRST USE IN COMMERCE: 19810200

Class 14:
Decorative pins, jewelry, watches
Intent to use

Class 16:
Tour programs, posters, stickers, pens, stationery
Intent to use

Class 21:
Coffee mugs, glasses, beverageware
Intent to use

Class 41:
Entertainment services, namely, live musical performances
Intent to use

The full trademark application is online at:

THE POLICE

Now it is entirely possible that the Police filed this to protect their existing marks, but at $325 per class filing fee, that’s a bunch of money to spend on covering tours and promotion if you’re not planning on using it. While this is not proof positive that they’re going to tour, I’m certainly optimistic. Hopefully they do tour, and I get to see them here in LA.

Posted in band trademark, police, uspto | Leave a comment