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.
In a precedential opinion issued this past Friday, the United States Court of Appeals for the Federal Circuit rejected arguments that an accused device merely needs to be "capable" of being configured or programmed to perform a claimed function in order for patent infringement to occur.
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, http://www.icmregistry.com/. 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 www.timelines.com 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.>
The U.S. Patent and Trademark Office is set to raise many patent-related fees on Monday, September 26, 2011. Many fees will experience an approximately 15% increase. The new fee schedule can be found here.
This morning, President Obama signed the America Invents Act (H.R. 1249) into law. This represents the largest reform to the U.S. patent system in over 60 years. The goal of the Act is to create better quality patents in a shorter time, spur the economy, and create jobs. Whether this will be the reality remains to be seen.