Thursday, 28 June 2012 14:18


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Trademark registry scams, in which private companies send unsolicited correspondence to a trademark registration holder seeking money in exchange for registering the trademark with U.S. Customs or including the trademark in a catalogue, have become increasingly prevalent since 2010. Most troubling about these scams is that the letters are designed to look like official correspondence from the Trademark Office, when in reality they are entirely unrelated. The “benefits” they portend to offer have no value, since trademark registrations are already publicly available through the official U.S. Patent & Trademark Office website. Some of these companies include:

Colombia recently became the 87th member to join the Madrid Protocol for the International Registration of Marks, effective August 29, 2012.  Administered by the World Intellectual Property Organization, the Madrid System for the International Registration of Marks (“Madrid system”) is designed to provide a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Although the sunrise period has passed for brand owners from outside the adult entertainment industry to pay a one-time fee to block the registration of “.xxx” domain names matching their federally registered trademarks, many companies are now considering whether to directly purchase their .xxx domain name, and perhaps variations thereof, for “defensive” purposes. 

Tuesday, 18 October 2011 21:32


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Most of our clients have secured the “.com” domain name corresponding to their trademarks, but there are other top level domains such as “.net, “.org,” and “.biz.” While we usually do not recommend securing every possible domain, there is a new “.xxx” extension that is causing concern among trademark owners. From now until October 28, 2011 brand owners from outside the adult entertainment industry have the opportunity to pay a one-time fee to block the registration of “.xxx” domain names matching their federally registered trademarks. Generally, the names can remain blocked for at least the next 10 years. Of course, many technicalities and conditions apply in this blocking process, so please consider this to be general information only. For more information on how to proceed directly with approved registrars, visit the .xxx registry’s website, If you would like our assistance, our estimated fees to assist with this domain blocking process would be $625.

Timelines Inc., a Chicago-based company filed a lawsuit against Facebook for trademark infringement based on Facebook’s much-hyped and anticipated Timeline, which is a new profile touted by Facebook as “"the story of your life.” Timelines Inc. operates the website, which allows users to record and share personal or historic events, and contribute descriptions, links, photos and videos related to those events, people, etc. In its Complaint, Timelines alleges that it has been using the “TIMELINE” mark since 2008 and is the owner of two federal trademark registrations for “TIMELINE” and claims that Facebook’s Timeline could eliminate” its entire business.” Timelines has its own Facebook page and alleges that Facebook is redirecting visitors to Facebook’s own Timeline page and away from Timeline’s Facebook page. The lawsuit seeks damages and a temporary restraining order to prevent itself from "being rolled over and quite possibly eliminated by... the world's largest and most powerful social media company." Facebook’s Timeline is scheduled to go live any day to Facebook’s 750 million users.>

Tuesday, 23 August 2011 21:26


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With the somewhat controversial launch of the new top level domain .XXX scheduled for late-2011, trademark owners should take note of the upcoming dual sunrise periods: one for those within the adult entertainment industry; another for those who wish to block their registered marks from use in .XXX.

  1. Sunriseis the time period when trademark owners and other IP holders within the adult sponsored community can apply for .XXX domain names ahead of the general public.  This period will run for 52 days starting September 7, 2011.
  2. Sunrise Bthe time period when trademark owners and other IP holders outside of the adult sponsored community can apply to opt-out of .XXX to block their registered marks from use in .XXX.  This period will also run for 52 days starting September 7, 2011.

More information on the .XXX registry, click here.

Paris-based footwear designer Christian Louboutin was denied a preliminary injunction to prevent famed-fashion house Yves Saint Laurent from selling shoes with red soles similar to Louboutin's. In April, Louboutin filed a federal lawsuit for trademark infringement against Yves Saint Laurent in the United States District Court for the Southern District of New York claiming  that YSL infringed Louboutin's signature red soles. 

Monday, 01 November 2010 20:42


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The Key West Tourism Development Association ("TDA") recently filed a lawsuit alleging intellectual property violations stemming from alleged unauthorized use of the mark "FANTASY FEST" by Zazzle, Inc., a California business entity.  Zazzle is the owner of the web site,, which according to the complaint, offers "blank" products such as t-shirts and coffee mugs that can be customized by consumers.  TDA argues that, in so doing, Zazzle facilitates and benefits from the creation of counterfeit items.  In its Complaint, TDA takes issue with Zazzle's use of meta tags, and the offering of products which feature the marks "FANTASY FEST," and "HABITAT FOR INSANITY," this year's festival theme. 

In a world where online status is determined by how many Facebook users “like” your page and how many followers you have on Twitter, what happened to GAP of North America comes as no surprise to those of us who follow the many ways in which Facebook and Twitter are changing the rules of marketing and now it seems the world of trademarks. 

Almost three months after deciding to grant summary judgment in favor of Google in Rosetta Stone Ltd. v. Google, the Eastern District of Virginia finally released its opinion articulating the reasons behind the decision.   Specifically, the Court held that Google could not be held liable for trademark infringement or dilution based on its sale of keywords utilizing Rosetta Stone’s trademarks.   The decision was a coup for Google which was absolved of liability on every count brought by Rosetta Stone.
In perhaps the most significant portion of the decision, the Court held that Google’s use of a trademark within a keyword was “functional” and, therefore, did not amount to infringing use.  In coming to this conclusion, the Court noted that keywords “have an essential indexing function because they enable Google to readily identify in its database relevant information in response to a web user’s query.”   This seemingly brings the Court in conflict with other decisions – most notably the Ninth Circuit’s opinion in Playboy v. Netscape  – which have rejected the defense of trademark functionality in similar contexts.   Accordingly, it will be interesting to see how, or if, the Court's interpretation of the doctrine is employed in future decisions examining the unauthorized use of trademarks in conducting internet commerce.

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