© 2011 winston & strawn llp · 10/13/2011 · background on louboutin case designer christian...

HOT TOPICS IN TRADEMARK LAW 2011: CUTTING EDGE ISSUES IMPACTINGCUTTING‐EDGE ISSUES IMPACTING BRAND OWNERS AND ADVERTISERS

Brought to you by Winston & Strawn LLP's Advertising, Marketing, and Entertainment Law Practice

© 2011 Winston & Strawn LLP

Today’s PresentersToday s Presenters

Thomas M. WilliamsChicago

[email protected]

Mary Hutchings ReedChicago

[email protected]

Liisa ThomasChicago

[email protected]

312‐558‐3792312‐558‐5721 312‐558‐6149

© 2011 Winston & Strawn LLP 3

OverviewOverview

1. Outer Limits of Trademark Protection2. Truthful Use of Another’s Trademark

f3. Use of Trademarks in Promotions and Prizes4. Use of Celebrity Names5 T d k Dil ti5. Trademark Dilution6. Green Marketing7 Keywords and Social Media7. Keywords and Social Media8. Domain Name Issues


O t Li it f T d kOuter Limits of Trademark Protection


What is a Trademark?What is a Trademark?

Statutory Definition: Statutory Definition: “any word, name, symbol, or device, or any combination thereof” used to

“identify and distinguish … goods [or services] from those manufactured or sold by others and to indicate the source of the goods [or services].” 15 U.S.C.y g [ ]§ 1127

U.S. Supreme Court (Qualitex Co. v. Jacobson Prods. Co., 514 U S 159 (1995)) :U.S. 159 (1995)) :

“[S]ince human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.”

“[I]t is the source‐distinguishing ability of a mark—not its ontological status as a color, shape, fragrance, word, or sign—that permits it to serve [as a trademark].”


ExamplesExamples


On the Outer Limits with Color

Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., No. , ,11 Civ 2381(VM), 2011 WL 3505350 (S.D.N.Y. Aug. 10, 2011)


Background on Louboutin CaseBackground on Louboutin Case

Designer Christian Louboutin claimed to conceive of red‐gsoled women’s shoes in 1992.

Louboutin’s red‐soled shoes sold for $1,000/pair.

Louboutin’s shoes became a pop culture icon. Sex and the City

“J Lo” song J Lo song

Celebrity and fashion magazines


Louboutin Obtained Principal Register Registration

(USPTO Reg. No. 3,361,597 issued January 1, 2008)


Defendant YSL's ArgumentsDefendant YSL s Arguments

YSL had entire line of monochromatic shoes: all‐ YSL had entire line of monochromatic shoes: allyellow, all‐green, all‐red.

YSL had offered red‐soled shoes sporadically since the 1970’s.

The red did not serve as a trademark.


Louboutin HoldingLouboutin Holding

A single color can serve as a trademark if it has secondary g ymeaning and not “functional.”

Louboutin court cited: Qualitex Co v Jacobson Prods Co 514 U S 159 (1994) (protecting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1994) (protecting green‐gold color for dry cleaning pads)

In re Owens‐Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) (protecting pink for insulation)(p g p )

However, justifications for single‐color marks in “industrial” applications do not apply to fashion world.

“Th diff f L h A i h i f hi k “The difference for Lanham Act purposes … is that in fashion markets color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes ”


purposes.

Single Color May Not Be ProtectableSingle Color May Not Be Protectable

Look at competitive need – single‐color is “functional” in p gfashion world.

“Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants.”p y p g p p

“[T]he Court cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.”

The court denied Louboutin’s motion for a preliminary injunction against YSL.

The court noted that it may cancel Louboutin’s registration The court noted that it may cancel Louboutin s registration. Louboutin has appealed to the Second Circuit.


On the Outer Limits: Product Design as Trademark

Specialized Seating, Inc. v. p g,Greenwich Indus., L.P., 616 F.3d 722 (7th Cir. 2010)The Plaintiff (counterclaim) had been The Plaintiff (counterclaim) had been selling its “x‐frame” chair design for 80 years.

Pl i iff b i d P i i l R i Plaintiff obtained a Principal Register trademark registration in 2004 (U.S.P.T.O. Reg. No. 2,803,875). The i ht f d b th i t tirights conferred by the registration were incontestable.

Defendant was a former employee who


founded a competing chair company.

Product Design HoldingProduct Design Holding

Claims in an expired utility patent “presumptively are p y p p p yfunctional.”

“[S]ince inventions covered by utility patents pass into the bli d i h th t t i it i i i t tpublic domain when the patent expires, it is inappropriate to

use trademark law to afford extended protection to a patented invention.”

The x‐frame chair “looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark) ”made it (the function of a trademark).

Functionality holding affirmed.


On the Outer Limits: Flavor MarksOn the Outer Limits: Flavor Marks

In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B.In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006)

Mark at Issue:• “an orange flavor” for pharmaceuticals for human use

Facts:• Applicant N.V. Organon filed a USPTO trademark application to

register “an orange flavor” for pharamaceuticals.

• The USPTO examiner refused the application.pp


Flavor HoldingFlavor Holding

Although sound and scent (i.e., “Plumeria blossom floral g ( ,fragrance” for sewing thread (In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)) are registrable as trademarks, there are no federal trademark registrations for flavors or tastesfederal trademark registrations for flavors or tastes.

Flavor is “a utilitarian feature that provides a competitive advantage,” in that it masks a generally “disagreeable taste” in medicines.

“[I]t is not clear how taste would as a practical matter function as a trademark A consumer generally has no accessfunction as a trademark. A consumer generally has no access to the product’s flavor prior to purchase.”

Registration refused.


On the Outer Limits: Sound MarksOn the Outer Limits: Sound Marks

In re Vertex Group LLC, 89 U.S.P.Q.2d 1694 (T.T.A.B. 2009)p , Q ( )

Mark at Issue:• “Amber Alert” alarm sound (“…descending frequency sound pulse

occurs four to five times per second ”) for a “personal securityoccurs four to five times per second…”) for a “personal security alarm in the nature of a child’s bracelet to deter and prevent child abductions.”

F t Facts:• Applicant applied to register alarm sound as a trademark for child‐

safety bracelets.

• Applicant has a nationwide advertising campaign, including ads featuring Al Roker.

• U.S.P.T.O. examiner rejected the application.


Sound Marks HoldingSound Marks Holding

Sounds are protectable as trademarks (i.e., NBC Chimes).

When a sound is proposed as a trademark for goods that make the sound “in their normal course of operation,” the applicant must prove “acquired distinctiveness.”

i.e., alarm clocks, appliances, telephones, alarm products

“[I]t is not at all clear that listeners would perceive the sound … to be anything other than an alarm sound.” The [advertisements] did not refer to the sound as coming from a particular source.

“We do not find that consumers are predisposed to equate such sounds with the sources of the products that emit them.”

Registration refused.


Non‐Traditional Marks – TakeawayNon Traditional Marks Takeaway

1. Defensive Considerations• Clearance strategy must include traditional (words, logos, slogans)

and “non‐traditional” branding elements (colors, sounds, product design).g )

2. Offensive Considerations• Developing “non‐traditional” marks requires significant investment:

time budget “look for” advertisingtime, budget, “look‐for” advertising.

3. Courts may find a way to invalidate what they perceive to be overly broad trademarks.

• Examples include “red” for shoes, “black” for boat engines.

• No amount of distinctiveness can overcome functionality.

• The dispositive inquiry in non‐traditional trademark cases is often


The dispositive inquiry in non‐traditional trademark cases is often “competitive need.”

T thf l U f Thi d P tTruthful Use of Third Party Marks (Fair Use)Marks (Fair Use)


Truthfully Describe Relationship to Product/Service

Example: dealership/franchise Example: dealership/franchise “Independent Volkswagen‐Porsche Service”

But not to confuse: “Volkswagen Service Center” as name of store

“Volkswagen The Bug Shop” and outline of auto

Symbol:


Can Use To Truthfully Describe ProductCan Use To Truthfully Describe Product

Size: Size: MICRO

KING SIZE

Intended Purpose of Goods: PM

Characteristic Ergonomic

Virtual or E‐


To Laud Your ProductTo Laud Your Product

SPEEDY SPEEDY

FRIENDLY

DEPENDABLE DEPENDABLE

PREFERRED

BEST BEST

GOLD MEDAL

BLUE RIBBON BLUE RIBBON

GREATEST

SUPER


SUPER

To Compare Your Product by Characteristic or Price

OBSESSION by Calvin Klein for Women our type by OBSESSION by Calvin Klein for Women our type by Designer Collection Description:Our version of designer fragrances has the same great scent at the fraction of the price. Even our professional smell testing team can’t tell the difference between oursmell testing team can t tell the difference between our imitations and the originals. Our fragrances are identical to brand‐name, expensive perfumes, and they are not

i it ti fyour common imitation fragrance.


To Describe the Truthful Geographic Origin of Your Product

Florida Orange Florida Orange

But not:


Statutory Marks and Absolute ProtectionStatutory Marks and Absolute Protection

36 USCA § 220506: 36 USCA § 220506: Without the consent of the U.S. Olympic Committee, it is unlawful to use any of the following “for purposes of trade,”

i d l f d f hl i fto induce sale of goods, or for an athletic performance or competition:

Interlocking rings

Olympic emblem

The words: OLYMPIC, OLYMPIAD, CITIUS ALTIUS FORTIUS, PARALYMPIAD, PAN‐AMERICAN, AMERICA ESPIRITO SPORT FRATERNITE

Any combination of those words “tending cause confusion or mistake, to deceive, Any combination of those words tending cause confusion or mistake, to deceive, or to falsely suggest a connection with [the Olympics, the Paralympics, the Pan‐American Games]”


Close Calls: Ambush MarketingClose Calls: Ambush Marketing

Trading off the goodwill connected with an event Trading off the goodwill connected with an event without having an official relationship to the event

Sometimes called “parasitic”

Typically, trademarks and logos are NOT used


Clever Examples: “Bavaria Girls” at the World Cup Denmark/Netherlands Game


“Bavaria Girls” ExampleBavaria Girls Example

Officially sponsored by Budweiser Officially sponsored by Budweiser

FIFA Trademarks not used FIFA Trademarks not used

Some girls charged with “organizing unlawful Some girls charged with organizing unlawful commercial activities”


SUPER BOWLSUPER BOWL

NFL owns 10 registrations, including NFL owns 10 registrations, including SUPER BOWL OF GOLF

SUPER BOWL

Design marks

Also has common‐law rights in others


“THE BIG GAME”THE BIG GAME

NFL abandoned attempts to register in 2002 NFL abandoned attempts to register in 2002

Still NFL aggressively pursues unauthorized tie‐ Still, NFL aggressively pursues unauthorized tieins/ambushes—like tickets as prizes Considerations:

Duration of campaign

Expense of campaign/how hard to move to Plan B

Whether there is an existing “official” sponsor or supplier Whether there is an existing official sponsor or supplier


Other Common Ambush Strategies That May Not Raise Trademark Concerns

Hire a well‐known soccer athlete to be a spokesperson during p p gWorld Cup (not in uniform!)

Sponsor a US Olympic Sport

Buy billboards around venues Buy billboards around venues

Sample products around venues

Increasingly, properties protect against those activities


London Olympic Games and Paralympic Act fof 2006

“London Olympics Association Rights” London Olympics Association Rights

Conveys “exclusive rights” in relation to the use Conveys exclusive rights in relation to the use Of any representation (of any kind)

In a manner likely to suggest to the public That there is an association between the London Olympics and goods/services

http://www.opsi.gov.uk/acts/acts2006.htm


U f T d k iUse of Trademarks in Promotions or As PrizesPromotions or As Prizes


Can You Use Branded Goods As Prizes?Can You Use Branded Goods As Prizes?

Fair use permits use as prizes Fair use permits use as prizes But “fair” has limits; mentioning brand in ad may be too far

Also be careful with tickets/branded destinations!!

Danger when use prizes prominently in advertising or as part of name of promotion Implies false endorsement or sponsorship of promotion

Get permission if running a “BRAND Giveaway”

Or call it a “Car Giveaway“ or “The Truck Sweepstakes” Or call it a Car Giveaway or The Truck Sweepstakes

Also avoid using photographs of products (they can be source identifiers, too) and avoid logo use


Always risk when go too far to be “fair”

What About iPad and iPhone Giveaways?

Apple says, don't give away its products Apple says, don t give away its products Has been heard to be cracking down

But guidelines don't say it expressly (http://www.apple.com/legal/trademark/guidelinesfor3rdparties.html)


U f C l b it NUse of Celebrity Names


Celebrity Names – More than Right of Publicity

For clearance, usually think about right of publicity For clearance, usually think about right of publicity Did we get permission? Can we use?

Don't recommend using without permission

Celebrities might also have trademark rights Impact: still means can't use without permission

Also means to take care if licensing Towel manufacturer licensee: Does Martha Stewart have

i ht i MARTHA f t l ?rights in MARTHA for towels?

Bottled water manufacturer: Does Michael Jordan have rights in JORDAN for water?


g

What About Less Famous People?What About Less Famous People?

Non‐celebrities can develop trademark rights Non celebrities can develop trademark rights Question is whether name serves as identifier of source

Joe's Diner

May not matter if the person has a different name “Secondary meaning”: does the consuming public identify it as a source of origin?

Clearance concernI d ti i t t h k t th d 't In advertising, want to check names to ensure they don't infringe

Look at Yellow Pages listings – is there already a Joe's Diner?


g g y

Dil tiDilution


Victoria’s Secret: Famous Marks Are Protectable Absent Confusion

Federal Trademark Dilution Act of 1995: “… the owner of a famous mark shall be entitled … to an injunction

against another person’s commercial use in commerce of a mark or trade name … [that] causes dilution of the distinctive quality of the [ ] q ymark ….” (15 U.S.C. § 1125(c)(1) (original language; emphasis added).)

Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003)US A C l l t F t K d ti t f “ d lt” US Army Colonel at Fort Knox saw an advertisement for “adult” novelty store in Kentucky named “Victor’s Secret.”

The Colonel was offended and sent a letter to Victoria’s Secret f h b dinforming the brand owner.

Victoria’s Secret sued “adult” novelty store in Kentucky named “Victor’s Secret,” subsequently, “Victor’s Little Secret.”


Victoria’s Secret: h ld d dThe Holding and a Revised Law

No dilution under 1995 Act. No dilution under 1995 Act.

FTDA of 1995 required “actual harm” rather than a mere “likelihood” of harm.

Trademark Dilution Revision Act of 2006: “… the owner of a famous mark shall be entitled to an injunction against another person who … commences use of a mark or trade name … that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark ….”blurring or dilution by tarnishment of the famous mark …. (15 U.S.C. § 1125(c)(1) (amended language; emphasis added).)


Victoria’s Secret: What Happened Under the Revised Law

V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. g , y, (2010)

Facts Final episode in “Victor’s Secret”/“Victor’s Little Secret” saga Final episode in Victor s Secret / Victor s Little Secret saga

Victoria’s Secret’s claims were adjudicated under the new TDRA 2006 standards.

Holding Holding The new language regarding “likely” dilution “significantly changes the meaning of the law.”

The new law “seeks to reduce the ‘burden’ of evidentiary production on The new law seeks to reduce the burden of evidentiary production on the trademark holder.”

“The new law [regarding dilution by tarnishment] seems designed to protect trademarks from any unfavorable sexual associations. Thus, any


new mark with a lewd or offensive‐to‐some sexual association raises a strong inference of tarnishment.”

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009)

Defendant was a small New England coffee roaster selling g gbeans wholesale to local grocers and via a retail outlet in Portsmouth, NH.

Defendant began selling a dark‐roasted blend called “CHARBUCKS BLEND” and subsequently, “MISTER CHARBUCKS.”CHARBUCKS.

Starbucks challenged, Defendant dug in, and Starbucks filed suit.

Defendant prevailed in a bench trial.


Starbucks Holding: Dilution by BlurringStarbucks Holding: Dilution by Blurring

District court erred in requiring the marks to be District court erred in requiring the marks to be “substantially similar.” The 2006 statute does not require “substantial similarity.”

District court erred in considering evidence of absence of “actual confusion.” Confusion, either “actual” or “likely,” is not required.

Second Circuit remanded to district for proper l f “d l b bl ” lanalysis of “dilution by blurring” claim.


Starbucks: No Dilution by TarnishmentStarbucks: No Dilution by Tarnishment

That a consumer may associate a “negative‐sounding junior y g g jmark” with a famous mark does not establish that the junior mark “harm[s] the reputation of the famous mark.”

Alth h “Ch b k ” d b thi d ti i Although “Charbucks” was used by third parties in a pejorative manner during New England “Coffee Wars,” Defendant was using it to “promote” its “CHARBUCKS” coffee product.

Defendant’s marketing of its “CHARBUCKS” product as a high‐quality product “is inconsistent with the concept ofquality product is inconsistent with the concept of ‘tarnishment.’”

District court did not err in finding no dilution by


tarnishment.

Starbucks: No ParodyStarbucks: No Parody

Parody: Defendant’s use of “CHARBUCKS” was not non‐yactionable parody. Defendant used “CHARBUCKS” as a source‐identifier for its own competing product.

Th t di ti i h d “CHEWY VUITTON” d i i L i The court distinguished “CHEWY VUITTON” decision, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (finding no dilution), on multiple grounds:

decided under prior statute

did not involve competing goods

marketed to a different class of consumers to “mock” celebrity marketed to a different class of consumers to mock celebrity.


Tips for Protecting Famous MarksTips for Protecting Famous Marks

CAN I ASSERT A DILUTION CLAIM? CAN I ASSERT A DILUTION CLAIM? Consider dilution grounds when enforcing your “famous” marks

Dilution is becoming more user‐friendly for brand owners and courts

The Trademark Dilution Revision Act of 2006 protects against marks that are “likely to cause dilution.” In contrast, the prior Dilution Act required proof of “actual” dilution, which was a more difficult burden of proof for brand owners


Tips for Protecting Famous Marks (cont)Tips for Protecting Famous Marks (cont)

When asserting dilution grounds, be prepared to prove g g , p p ptarnishment or blurring

Tarnishment and blurring are defined in the amended statute

Note that diluting uses that are sexual in nature may lead to a Note that diluting uses that are sexual in nature may lead to a presumption of tarnishment, which shifts the evidentiary burden of proof to the defendant

Prior to challenging consider whether the accused use could Prior to challenging, consider whether the accused use could be non‐actionable parody or protected speech


G M k tiGreen Marketing


“Green” As Trademark –You Can't Own It

The USPTO considers “green” to be a generic orThe USPTO considers green to be a generic or merely descriptive term in connection with environmentally friendly goods and services.

The USPTO will not register “GREEN” marks without a disclaimer of exclusive rights in the “green” element.

• i.e., BUILT GREEN for environmentally friendly building associations (requiring disclaimer of “GREEN”)associations (requiring disclaimer of GREEN )


Green Marks As Expressive SlogansGreen Marks As Expressive Slogans

Some “GREEN” marks be merely viewed as an expressive y pslogan and receive no trademark protection whatsoever.

• In re Manco, 24 U.S.P.Q.2d 1938 (T.T.A.B. 1992) (holding THINK GREEN to be merely a “slogan of environmental awareness and/orGREEN to be merely a slogan of environmental awareness and/or ecological consciousness” and not capable of functioning as a trademark for boxes and weather‐stripping materials).

From a trademark perspective you may use “GREEN ” but From a trademark perspective, you may use GREEN, but you will not have exclusivity.

Use “GREEN” with caution: beware of FTC and false advertising issues.


Can Have Green Certification MarksCan Have Green Certification Marks


What is a Certification Mark?What is a Certification Mark?


What is a Certification Mark?What is a Certification Mark?

Place of originPlace of origin

Material

Mode of manufactureMode of manufacture

Accuracy

Quality Quality

Other characteristics

That the goods are made by union labor or members That the goods are made by union labor or members of another organization


Current FTC Green GuidesCurrent FTC Green Guides

Do not specifically address certification marks or Do not specifically address certification marks or green seals

Examples of deceptive claims:p p A seal that says “EarthSmart” is “likely to convey” a broad claim of environmental superiority

h l b Such a claim requires substantiation


Comments/Concerns re: “Green” SealsComments/Concerns re: Green Seals

80% of consumers believe certification by third yparties ensures the environmental message is accurate

Possibly misleading and deceptive:• Membership marks vs. an actual certification process

• General claim vs. claim about one product attribute

• Seal may appear “governmental”

• Self‐certifications• Self‐certifications

• Resulted in proposed language in 16 CFR 260.6• Third party certifications are subject to the FTC's Guides on


Third party certifications are subject to the FTC s Guides on Endorsements

ExamplesExamples

Seals created by advertiser itself Seals created by advertiser itself Must disclose that the advertiser created the certifying program

Seals of trade associations in which advertiser is a member Must disclose that advertiser is member of the trade association

Name of certifying body may be misleading: Name of certifying body may be misleading: Ex: AMERICAN INSTITUTE OF DEGRADABLE MATERIALS

Must disclose the Institute is actually a trade association


More examplesMore examples

Seal indicates membership only, not certification Seal indicates membership only, not certification Ex: Member, US EcoFriendly Building Association

Must disclose that seal only indicates membership

Use of unqualified seal likely to convey general environmental benefit claim Must substantiate broad claim, or

Qualify the claim with clear and prominent limiting language


Watch‐Outs If Licensing Certification Mark

License may prohibit use of non‐certified claims in License may prohibit use of non certified claims in the same ad

License may require a certain amount of use

License likely to be non‐exclusive

License likely to be tied to annual recertifications


K d d S i l M diKeywords and Social Media


Keywords Refresher: Issue Has Been Around for a While

Issue has been whether it is use in commerce? Most courts think it is (e.g., Rescuecom Corp. v. Google Inc., 562 F.3d

123 (2d Cir. 2009))

If so is use confusing? If so, is use confusing? Risky: buying competitor’s trademark and serving ad with slogan

Lower risk: buying competitor ’s trademark and using it to serve comparative ads

Who to sue? Suing search engine is difficult, need to prove contributory liability Su g sea c e g e s d cu t, eed to p o e co t buto y ab ty

Rosetta Stone Ltd. v. Google Inc. (E.D. Va. 2010) District court said Google not secondarily liable

Oral arguments in appeal held Oct. 5, 2011


g pp ,

Protecting Your Brand On Social Media Sites

Don’t panic! Seeking to sue every use of your brand in social media is overreaching

(sometimes fans will cooperate if you ask)

Fair use often successful argument against a takeoverg g

Be proactive Think about registering your “vanity URLs” (as you did on Twitter)

Don’t sue the messenger Suing the site often unsuccessful (Tiffany v. eBay, 576 F. Supp. 2d 463

(SDNY 2008)

Leverage the tools of the social media site Each social media site has special protection procedures

C id t diti l f t l t t


Consider traditional enforcement as a last resort

Using Social Media in Your CreativeUsing Social Media in Your Creative

Truthful use, don’t imply endorsement Follow us on Facebook – ok

Don’t combine brand with yours AbbottFacebook – not ok

Use font size that is similar to text around it Follow us on FACEBOOK – not ok

Hyperlinks to social media sites name alone should only link to home Hyperlinks to social media sites name alone should only link to home page

Only use the logos that the site has permitted companies to useThis is the most frequent mistake marketing teams make This is the most frequent mistake marketing teams make

Otherwise familiarize yourself and follow brand guidelines from each site http://www.facebook.com/brandpermissions/logos.php

http://support twitter com/entries/77641


http://support.twitter.com/entries/77641

http://code.google.com/apis/youtube/branding.html

T L l D iTop‐Level Domains


Top‐Level Domains – What Is New?Top Level Domains What Is New?

Your trademark can be a top‐level domainYour trademark can be a top level domain

Registering “.BRAND”• Brand owners may apply to register their brands as a y pp y g

Generic Top‐Level Domain (gTLD).

• Application fee is $185,000.

• Application must include detailed information regarding operational capabilities.

• ICANN will accept applications (currently) from Jan. 12, p pp ( y) ,2012 to April 12, 2012.


What if We Don’t Register?What if We Don t Register?

Stopping “.BRAND” Infringers Stopping .BRAND Infringers TBD

The new gTLD process includes rights protection mechanisms.

Brand owners will be able to protect their brands on both the left side and right side of the “dot ”the left side and right side of the dot.

The new gTLDs will include a “Trademark Clearinghouse” database where brand owners can list their trademarks.


Can Opt Out of Being a .XXXCan Opt Out of Being a .XXX

The “.XXX” adult content gTLD will be available in The .XXX adult content gTLD will be available in December 2011.

Trademark owners can file an “opt‐out” request p qfrom Sept. 7, 2011 to Oct. 28, 2011.

Owners of registered trademark can “opt‐out” for g pidentical marks (i.e., “BRAND”.XXX).

Opt‐out fees range from $200 to $400.

Costs to reclaim “BRAND”.XXX after registration would be much higher.


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Thank you!Thank you!

Thomas M. WilliamsChicago

[email protected]

Mary Hutchings ReedChicago

mreed@winston com

Liisa ThomasChicago

lmthomas@winston com312‐558‐3792

[email protected]

312‐558‐5721

[email protected]

312‐558‐6149


© 2011 winston & strawn llp · 10/13/2011 · background on louboutin case designer christian...

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