NETWORK EFFECT GENERICIDE: THE BRANDING PAINS OF ONLINE SERVICE PROVIDERS

Posted By: Drew Weigel

Trademark-Symbol_32When is a book not a book? How do you remove the app from apple? Should Google be a verb? this post provides a brief look into the struggle for corporations to maintain trademark rights over ubiquitous online services.

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Yelp – The New Teflon Dons?

Posted By: Stephen Timmer

Yelp Defeats Legal Challenge to its User Review Filter.” It is a headline that we have all become accustomed to seeing; the scales of justice tipping in the favor of the 800-lb. gorilla of review sites. As a refresher, Yelp is one of the most recognized review sites on the Internet. Yelp professes itself as a source for consumers to locate local businesses, determine the quality of their services and to provide a forum for consumers to issue reviews on said businesses. James Demetriades, a manager of three restaurants in Mammoth Lakes, California, filed a lawsuit against Yelp; he claimed the site’s review filter was skewed towards displaying negative reviews of one of his restaurants and suppressing the positive reviews. While the case did not go in favor of Mr. Demetriades, it is important to understand how the California Superior Court in Los Angeles applied the law against him and how it was misapplied in this high-profile case. The rules of law cited in the case that could be crucial in holding Yelp liable in future litigation based upon different factual scenarios. Continue reading

Google AdWords and Trademarks: The Difficulties and the Confusion

Posted By: Aidan L. Clark

Avoiding consumer confusion is the paramount goal of trademark law. Being able to identify a name or slogan—called a mark—with a certain product, service, or source of that product or service, can only benefit a well-running consumer market. As with many of our laws in the United States, they were drafted and codified in an analog-type time. Though, as we’ve moved into a digital-type era, issues and questions have arose about how to apply these laws to the new type of world in which we live. Trademark law is a prime illustrator of this struggle.
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When Trademarks and Domain Names Collide

Posted by Angelica J. Simpson

April 6, 2015

Trademark-Symbol_32Branding your product has long been a protected area of American legal practice. However, in the fast changing age of the Internet, the ability for those to monitor and protect their trademark has become increasingly difficult. With multiple parties requesting the use of limited domain names, the legal rights to who controls these names becomes an issue. As the access to the Internet expands, along with the domain names available, the international community requests authority and structure to level the playing field of all countries involved.

The Madrid Protocol, adopted in 1989, and in operation since 2004, sought to address the original issue of international trademarks. The system provides a way to register trade marks internationally, by way of one application. With 91 members, including the United States, trademark holders with an existing trademark, can seek application to register their mark with thy system. This grants the trademark the protection afforded by the international registration in more than one jurisdiction. It is important to note that a valid trade mark in the United States, might not enjoy the same status abroad, and with the every changing law and technology things become more difficult to understand. Continue reading

New gTLDs and Their Effect on Trademarks

Posted by: Shemmyla Green

March 26, 2015

domainsCurrently there are more than 547 new generic top-level domains (gTLD). A massive increase since the 22 that the Internet Corporation for Assigned Names and Numbers (ICANN) had in 2011 and new suffixes are being released monthly. The benefit of the descriptive domain, such as .fashion and .healthcare, are that they will assist web users in arriving at there intended destination. These new suffixes also differentiate industries, which can assist in a brand’s recognition and marketability. On the flip side, with suffixes like .sucks and .porn, could they induce a potential problem for a brand’s trademark? How does Trademark Law deal with these issues? What should the proactive business owner/brand do?

ICANN is opening up .porn and .sucks, after June 1. They have given a select group of people and company the opportunity to have first claims on these polemical domains. Several brands have already registered these domains, including Taylor Swift. If another public figure was not as proactive as Taylor Swift, what could the outcome be? Continue reading

WorldWideWar.com

Posted By:  Daniela Madrid

 

200px-RegisteredTM.svgWhat happens when an owner of a trademark wants to use his trademark as a domain name for his website but discovers that the domain name is already being used by a third party? There are several options to resolve this dilemma. The trademark owner can use an alternative domain name suffix, can file a dispute with ICANN, can file suit in court for trademark infringement or cybersquatting. Continue reading

Cybersquatting on Social Media

Posted By: Jeremiah Chin

 

twitterSocial media began as a way for people to interact across the internet, communicating with friends, family and new people in new ways. Companies have quickly caught on to the heavy use of social media, establishing their brand on Twitter, Facebook and other sites in order to create good will with fans, and ensure that their company is properly represented on the web. For new companies, or those who are simply late to the game, finding a good social media branding can become difficult as usernames may be already taken. Continue reading

Tread Lightly with Trademarks: American Greetings Gags and Binds Penny-Arcade

Posted By: John-Philip J. Schroeder

 

strawberry shortcake characterIn 2003, a humor website called “Penny-Arcade” was forced to take down a comic by American Greetings, the popular greeting card company.  Ten years later, the comic is still not available on Penny-Arcade’s the website.  This is a close look at just one instance of how trademark law can be used to achieve private censorship.

Penny-Arcade’s original posting for April 14, 2003 depicted the characters Strawberry Shortcake and Plum Pudding in dominatrix gear under the title of “Tart as a Double Entendre.”  The comic was poking fun at American McGee, a video game designer with a tendency to infuse darkness and sexuality into formerly sweet and innocent childhood figures.  (Most famously, his game “Alice.”)  However, Penny-Arcade was forced to take down the comic when American Greetings sent a takedown notice, in which they claimed Penny-Arcade was violating American Greeting’s trademarks.  To this day, the comic is absent from the Penny-Arcade archive. Continue reading

New gTLDs, New Era, New Issues

 Posted by:  Florencia Todaro

 

dTLDAfter decades without many changes in gTLDs, INCANN announced the new era of internet, with the expansion of TLD; but when? Experts expected that this big deal is going to be this year, but apparently no.

At this moment there are 22 gTLDs for all the world (plus ccTLDs). The case is that the necessity of new TLD is a reality. The limitation that .com domains implies is a constant debate; is it possible to increase the TLD (top level domains) without creating confusion or increasing and facilitating cybersquatting? Continue reading

International Protection: Domain Disputes and Remedies

icann_logo_0Posted By: Joseph Citelli

Joseph Citelli
–>As more and more businesses shift their focus towards online commerce, there are bound to be disputes, facilitated by the very nature of the internet, that occur across international borders. While some disputes that can be brought within the jurisdiction of the Untied States can be resolved through the Anti-Cybersquatting Consumer Protection Act (ACPA), it is important for business owners to recognize that the ACPA and other United States laws may not be sufficient to hale international parties into a United States court. Therefore, in order to protect against international cybersquatting or trademark dilution, businesses should ensure that they are adequately protected under the Internet Corporation for Assigned Names and Numbers (ICANN) standards. Continue reading