For Immediate Release.
Purportedly reputable domain name registrars from Honk Kong and other Far East countries are using a new scheme to drum up domain name registrations among U.S. Trademark registrants.
How it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they have received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.
The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.
The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.
In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.
The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.
However, having now witnessed this hundreds of times this routine is truly just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.
The Trademark Company
Monday, May 25, 2009
Sunday, May 17, 2009
Washington Redskins Win One - Really
Since the dawn of time man has wandered the Earth. Shortly thereafter, the case of Pro Football, Inc. vs. Harjo began.
On May 15, 2009 the U.S. District Court of Appeals for the District of Columbia issued its latest and once-again ruling in this matter focusing on the narrow issue of laches as it applies to the claims in this matter.
At its heart, this case concerns whether various trademarks related to the Washington Redskins football team disparage Native Americans within the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. §1052(a). But that question has been overshadowed by the defense of laches.
Appellants, seven Native Americans, filed a 1992 action before the Patent and Trademark Office seeking cancellation of six Redskins trademarks that were, they argued, impermissibly disparaging towards members of their ethnic group. Pro-Football, the Redskins’ corporate entity and the owner of the marks, argued to the Trademark Trial and Appeal Board that its long-standing use of the name, combined with plaintiffs’ delay in bringing the case, called for application of laches, an equitable defense that applies where there is “(1) lack of diligence by the party against whom the
defense is asserted, and (2) prejudice to the party asserting the defense,” Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121–22 (2002) (internal quotation marks omitted).
Finding on the merits that the marks were indeed disparaging, the TTAB cancelled them, see Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999). Pro-Football then exercised its option to dispute this holding by means of a civil action in the United States District Court for the District of Columbia. The district court sided with Pro-Football on the laches issue, holding that the 25-year delay between the mark’s first registration in 1967 and the TTAB filing in 1992 indeed required dismissal of the action. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C. 2003).
The U.S. District Court of Appeals for the District of Columbia reversed the District Court’s decision having inappropriately begun the running of the period of laches prior to the youngest plaintiff having reached the age of majority.
On remand in this case, the district court again found the defense of laches persuasive. On appeal, the U.S. District Court of Appeals for the District of Columbia has now upheld the application of laches in this matter. Accordingly, once again the Washington Redskins’ trademarks are protected.
However, if history is any judge it is likely that this matter may be headed for further proceedings.
One thing is for sure, the Washington Redskins’ franchise has now had their most significant victory in over a decade.
The Trademark Company
On May 15, 2009 the U.S. District Court of Appeals for the District of Columbia issued its latest and once-again ruling in this matter focusing on the narrow issue of laches as it applies to the claims in this matter.
At its heart, this case concerns whether various trademarks related to the Washington Redskins football team disparage Native Americans within the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. §1052(a). But that question has been overshadowed by the defense of laches.
Appellants, seven Native Americans, filed a 1992 action before the Patent and Trademark Office seeking cancellation of six Redskins trademarks that were, they argued, impermissibly disparaging towards members of their ethnic group. Pro-Football, the Redskins’ corporate entity and the owner of the marks, argued to the Trademark Trial and Appeal Board that its long-standing use of the name, combined with plaintiffs’ delay in bringing the case, called for application of laches, an equitable defense that applies where there is “(1) lack of diligence by the party against whom the
defense is asserted, and (2) prejudice to the party asserting the defense,” Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121–22 (2002) (internal quotation marks omitted).
Finding on the merits that the marks were indeed disparaging, the TTAB cancelled them, see Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999). Pro-Football then exercised its option to dispute this holding by means of a civil action in the United States District Court for the District of Columbia. The district court sided with Pro-Football on the laches issue, holding that the 25-year delay between the mark’s first registration in 1967 and the TTAB filing in 1992 indeed required dismissal of the action. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C. 2003).
The U.S. District Court of Appeals for the District of Columbia reversed the District Court’s decision having inappropriately begun the running of the period of laches prior to the youngest plaintiff having reached the age of majority.
On remand in this case, the district court again found the defense of laches persuasive. On appeal, the U.S. District Court of Appeals for the District of Columbia has now upheld the application of laches in this matter. Accordingly, once again the Washington Redskins’ trademarks are protected.
However, if history is any judge it is likely that this matter may be headed for further proceedings.
One thing is for sure, the Washington Redskins’ franchise has now had their most significant victory in over a decade.
The Trademark Company
Monday, May 11, 2009
Death of Business as Usual: Are the Days of The Mega Law Firms Numbered?
Think of a world in which law firms no longer bill by the hour. Flat-fee services replace billing by the hour. Clients enjoy the benefit of knowing what their legal representation will cost them. That day is coming, and it may be coming sooner than expected.
The legal landscape is changing. The economic downturn of 2008 and 2009 has led companies to examine their bottom lines like never before. One rapidly increasing casualty of this new wave of thought – Why are our legal fees so high?
In a profession that has long rewarded client loyalty with annual increases in hourly rates – a custom that cuts against almost every rationale basis for customer retention – a backlash is developing against the ways of old.
Savvy corporations are looking to outside counsel to develop new approaches to hourly billing including alternative fee arrangements, lower per unit and per project costs, and expanded flat-fee services.
Only time will tell if billing by the hour will survive. But with more and more firms offering quality flat-fee services, corporate flight from the mega firms to firms offering such services will likely continue.
The Trademark Company
The legal landscape is changing. The economic downturn of 2008 and 2009 has led companies to examine their bottom lines like never before. One rapidly increasing casualty of this new wave of thought – Why are our legal fees so high?
In a profession that has long rewarded client loyalty with annual increases in hourly rates – a custom that cuts against almost every rationale basis for customer retention – a backlash is developing against the ways of old.
Savvy corporations are looking to outside counsel to develop new approaches to hourly billing including alternative fee arrangements, lower per unit and per project costs, and expanded flat-fee services.
Only time will tell if billing by the hour will survive. But with more and more firms offering quality flat-fee services, corporate flight from the mega firms to firms offering such services will likely continue.
The Trademark Company
Monday, May 4, 2009
New Domain Names May Could Usher In The Next Wave of Cybersquatting
A wave of change may be coming to the Internet in the near future. The familiar .com, .net, .org and 18 other suffixes – officially top level domains – could be joined by a veritable endless variations.
Under a landmark change approved last summer by the Internet Corporation for the Assignment of Names and Numbers (ICANN) tourists to
Whatever can be imagined by the registrant will be available. This will translate into one of the largest marketing and branding opportunities in history.
Correspondingly, businesses are increasingly worried that this change lead will significant additional defense costs to guard their brand identities. With the soon-to-be limitless TLD extensions, scammers intent on attacking the trademarks of others will be able to register domain names of the marks of others with any number of TLDs. (e.g., CocaCola.soda, Microsoft.computer).
To beat a cybersquatter to the punch some companies prefer to engage in a campaign of registration of domain names which could be secured by cybersquatters.
Others monitor their marks and respond aggressively to domain name registrations which may attempt to trade on the good will established by their marks.
Whatever the strategy a trademark holder employs one thing is clear: ICANN’s new change will require heightened diligence and effort on the part of trademark holders to protect their brand identities on the Internet.
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