In anticipation of an upcoming animated film inspired by the traditional Mexican holiday El Día de los Muertos (in English, The Day of the Dead), Disney recently filed a series of applications with the United States Patent and Trademark Office seeking to trademark the phrase “Día de los Muertos.” After a social media firestorm, however, Disney’s attempt turned out to be dead on arrival.

El Día de los Muertos is a holiday to honor departed loved ones that originated in Mexico and is now celebrated by millions in other parts of Latin America, the United States and across the globe. To many, Disney’s attempt to trademark the phrase was seen as an attempt to capitalize on a cultural tradition that would be akin to attempting to trademark words like “Christmas” or “Easter.” People expressed their outrage on Twitter and started a change.org petition to stop the trademark application from proceeding that garnered 19,500 signatures in one day. According to some reports, the proposed trademark “momentarily replaced immigration as the hottest topic among Latinos on Twitter.”

About a week after the filing (and a day after the internet outcry began), Disney decided to withdraw the applications. In a company statement, Disney wrote that the “trademark filing was intended to protect any potential title for our film and related activities. It has since been determined that the title of the film will change.” The online backlash was not mentioned specifically, and the attorney who filed the application on Disney’s behalf declined comment. Disney experienced similar public protest regarding another past trademark application. In 2011, USA Today reports that Disney attempted to trademark the name “Seal Team 6″ (referring to the group of Navy Seals who killed Osama Bin Laden), but later withdrew the application “out of deference to the military.”

While some questioned the wisdom of these trademark attempts from a legal perspective, Disney’s crises over its intellectual property strategy illustrate the growing role that public perception plays in a company’s decision to obtain or to enforce its trademark rights.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

As early as next month, the first of nearly 2,000 new generic top level domains (gTLDs) could begin being made available to the public at the rate of 20 per week. A gTLD is the suffix of web addresses, which generally address the subject matter of that domain. The Internet Corporation for Assigned Names and Numbers (ICANN) has been working for years to increase the number of available gTLDs beyond the 22 familiar .com, .net, .biz and .info gTLDs and the 250 country codes. This latest expansion is unprecedented in number and will add more generic terms (e.g., .hotel, .auto, .food, etc.) and for the first time brand-specific terms (e.g., .amazon and .nike). A full list of the proposed new gTLDs organized by category may be found at the New gTLD Site here.

With the launch of the new gTLDs is the heightened concern that third parties could register and establish domain names and websites using the gTLDs that incorporate legitimate business names, trade names and trademarks of others. For example, a registrant could attempt to appropriate the well-known Nikon camera name and mark by registering www.nikon.photography. To address these concerns and implement protective measures for trademark owners, ICANN has established the Trademark Clearinghouse. The Clearinghouse is a centralized repository of validated trademark rights. Trademark owners who record (register) their marks will have their claims of trademark rights verified by Deloitte’s authentication and validation services and included in a database maintained by IBM, both under contract with ICANN.

Benefits of Recording in the Trademark Clearinghouse

The three main benefits of recordation for trademark owners are as follows: First, those owners will have the opportunity to reserve their mark-specific domain names for at least the first 30 days during the Sunrise Periods for the new gTLD (meaning the initial launch phase of each gTLD) before other members of the public may register domain names within that gTLD. In fact, only those with marks recorded in the Clearinghouse will be able to register during the Sunrise Period. Second, registrants will receive at least 30 days’ notice before each new gTLD goes live. Third, during the Trademark Claims Service period (at least the first 90 days after a new gTLD is available to the public), any third party attempting to register a domain in the new gTLD that exactly matches a recorded mark will be warned about the owner’s rights in the mark before registration is granted. Ideally, the registrant would abandon its domain name application once it learns of the owner’s claim to the mark. However, if the registrant proceeds with registering the domain name, the Clearinghouse will notify the mark owner of the registration but will not take any adverse action against the registrant on the owner’s behalf.

Limitations on Clearinghouse Recording

The registration process only allows for registration of and protection against new domain names that are identical to registered marks. The registration is not available for unregistered marks or marks that are the subject of a pending application. Due to the identical match requirements between marks and the domains, owners will have no Clearinghouse protection against commonly misspelled versions of the marks, plurals, shortened marks, etc. Since trademarks from many jurisdictions can coexist in the Clearinghouse, it is possible that conflicts will arise between legitimate mark owners with rights who have met the Clearinghouse recordation guidelines through different avenues.

Mechanics and Limitations of Registering

To record a mark with the Clearinghouse, owners must submit an application, the applicable fee and proof of use. Recordation is generally only available for (1) text-only marks registered on the U.S. Patent and Trademark Office’s Principal Register or with another national trademark office, (2) court-validated marks and (3) marks protected by statute or treaty. Not all trademarks are eligible. Trademarks containing a dot (such as amazon.com) and state-registered marks are not eligible. Special rules apply to symbols that are not recognized in domain names such as @ and &.

Timing

The Clearinghouse opened on March 26, 2013, and will remain open throughout the duration of the launch of the new gTLDs. This could be as early as May or June 2013 and will last until the last gTLD is launched (that could be as late as 2015 or thereafter). In order to take maximum advantage of the Clearinghouse and have opportunities to register their marks during the Sunrise Periods for the first gTLDs to be released later this spring, trademark owners should consider early registration. The first gTLDs to be released are those in non-Latin script. For example, the second gTLD set to launch is the gTLD Amazon is launching with the Japanese characters that mean .store.

Who Should Record Marks in the Trademark Clearinghouse

Trademark owners should determine if they wish to file to (1) protect their marks in any of the roughly 1,900 gTLDs or (2) defensively prevent any third party from registering any of its trademarks as a domain name with a new gTLD (e.g., .suck., .porn). However, if a trademark owner desires to file any domain name that corresponds to its mark during the Sunrise Period of any gTLD, the only way to be able to make that filing in the first days of the gTLD launch is to register its mark in the Trademark Clearinghouse. Owners must weigh the costs and benefits in determining whether to record/register marks in the Trademark Clearinghouse and whether to file to protect or block a domain name.

It is important to remember that recording in the Trademark Clearinghouse does not create or enhance legal rights. But it does give trademark owners the ability to monitor the rollout of the new gTLDs and to file offensive and defensive domain name applications. There are limits to the protection however. The Trademark Claims Service is only in effect for at least the first 90 or more day period established by the new gTLD registration. Thus it may be desirable to engage a commercial monitoring service after the Trademark Claims Service period has run.

ICANN’s plans for deploying the new gTLDs are ongoing and subject to change. Trademark owners will want to pay close attention to the ongoing news releases regarding the gTLDs and their Sunrise Periods and to timely file relevant sunrise applications as well as defensive domain name registrations. Please contact your trademark counsel to discuss the options available to you to protect your marks now that the gTLDs will soon launch.

For additional information, please contact Susan Rector at (614) 462-2338 and susan.rector@icemiller.com, or any member of Ice Miller’s Litigation and Intellectual Property Group.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

On April 2, 2013, the United States Securities and Exchange Commission (SEC) issued a Report of Investigation clarifying that companies can use social media sites to communicate corporate information, in compliance with Regulation Fair Disclosure (Regulation FD), as long as investors have been alerted about which social media will be used to disseminate such information. 

Regulation FD (17 CFR 243.100-243.103), according to the Report, was “adopted out of concern that issuers were selectively disclosing important nonpublic information, such as advance warning of earnings results, to securities analysts or selected institutional investors before making full disclosure of the same information to the general public.” (See also http://www.sec.gov/rules/final/2010/33-9146.pdf). The Regulation requires public companies to either file a form 8-K with the SEC or to disseminate “material nonpublic information” regarding the company or its securities through a “method (or combination of methods) of disclosure that is reasonably designed to provide broad, non-exclusionary distribution of the information to the public.” Conservative practice has typically been for companies to file an 8-K as the primary – or at least contemporaneous – form of disclosure.

As explained by the Commission (and in this April 2, 2013 press release), the Report was prompted by a Division of Enforcement inquiry into whether Netflix violated Regulation FD when its CEO Reed Hastings posted to his personal Facebook page that Netflix’s monthly online viewing had, for the first time, exceeded one billion hours.  The information was not reported by Netflix through a form 8-K filing and was not included in a company press release issued later the same day. Netflix had neither used Hastings’ Facebook page for disseminating company information in the past, nor taken steps to alert investors that Hastings’ personal page might be used to communicate corporate information.  Netflix’s stock increased from $70.45 at the time of the post to $81.72 at the close of the next trading day.  The SEC did not initiate an enforcement action against Netflix or Hastings, but issued the Report to clarify how Regulation FD and the Commission’s 2008 Guidance on the Use of Company Web Sites (directed primarily at the use of corporate websites for the disclosure of material, non-public information) apply to disclosures made through social media channels. 

The Report ultimately clarified that “the principles outlined in the 2008 Guidance – and specifically the concept that the investing public should be alerted to the channels of distribution a company will use to disseminate material information – apply with equal force to corporate disclosures made through social media channels.”  The SEC emphasized that the steps taken to alert the market about which forms of communication a company intends to use for the dissemination of material, non-public information, including the social media channels that may be used and the types of information that may be disclosed through these channels, are critical to the fair and efficient disclosure of information.  Without such notice, the investing public would be forced to keep pace with a changing and expanding universe of potential disclosure channels, a virtually impossible task. 

The Report further identified a number of methods a company could use to provide the required notice to investors, for example by providing information about the social media channel in periodic reports, press releases, or on the company’s website

Ultimately, while highlighting that every case must be evaluated on its own facts, the SEC found that disclosure on the personal social media site of an individual corporate office, without advance notice to investors that the site might be used for this purpose, is unlikely to meet the requirements of Regulation FD.

For more information on corporate disclosure requirements or the use of social media in your business, contact info@theiceloop.com. 

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

Last week, Google entered into a settlement agreement with more than thirty states’ attorneys general, acknowledging that its “Street View” cars violated computer users’ privacy by collecting more than just images of neighborhoods and buildings. Instead, the cars also managed to collect “passwords, emails and other personal information” from unencrypted wireless networks as they drove by. Google maintained that the data was never wanted, never used or looked at, and has reportedly agreed to destroy it.

While Google agreed to pay $7 million to settle the case, some have questioned the effectiveness of the penalty, noting that Google pulls in revenues in excess of $100 million each day. However, in addition to the settlement payment, Google also agreed to a series of commitments that the participating states hope will spark a broader commitment to privacy protection at Google and other companies as well. For example, within six months, Google must (among other things):

• Hold an annual “privacy week” event;

• Create and promote a You Tube video explaining how to encrypt data on wireless networks; and

• Commit to educating employees about privacy by providing privacy certification training for certain employees and “refresher” courses for its lawyers.

These changes, focused on changing corporate culture and practice, have given some privacy watchdogs hope that the settlement will have a more lasting effect than the (comparatively) minor fine likely will. With the states’ attorneys general’s complaints now behind it, Google can now look towards implementing the new privacy policies—and towards repairing consumers’ confidence that their private information will stay private.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

Ice Miller is a sustaining parter of TechPoint and we are especially pleased to support and play a role in the ALHIT Initiative (Advancing Life Science & Health Care Information Technology).

The mission of ALHIT is to capitalize upon Indiana’s IT leadership and complement statewide life science efforts. This initiative is aimed at creating and growing more information technology companies that will provide innovative solutions for Indiana’s health and life sciences sector. ALHIT will identify opportunities for increased use of information technology in the health and life sciences sector. The initiative will also identify research in academia and in the marketplace that can be commercialized or “spun out” with venture capital and other funding sources.

ALHIT has three or four mini conferences throughout the year that bring together users and developers of Health IT products. These meetings help to keep everyone up to date on the advancements that are being made in this space, to demonstrate new products that are currently serving a need in the industry as well as giving a chance for others to speak up regarding new needs that are arising and being recognized by health care officials. 

The mini conference held on March 6, 2013 included iSalus Healthcare Co-Founders and Board Members Michael Hall and Dr. Chuck Dietzen as well as Indigo BioSystems Founder and President Rand Julian and CEO Raul Zavaleta. Other speakers have included:

            Management of Orchard Software:

                Rob Bush, President

                Jeffrey Kain, Executive Vice President

                Curt Johnson, CEO

            Lee Ann Blue, Chief Nursing Officer, Wishard Health Services

            Bill Tierney, Chief of Medicine, Wishard Eskinazi Health and President & CEO of           Regesntrief

            Andy VanZee, Statewide Health IT Director, State of Indiana

            Charlie Harp, CEO, Clinical Architecture LLC

For more information regarding ALHIT visit the TechPoint web site here. The next community meeting will be held on July 17, 2013.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

Ice Miller LLP proudly congratulates all of its clients named 2013 TechPoint Mira Award Finalists. We are excited and honored to have relationships with so many creative and innovative people and companies. this is a truly exciting time for our tech community and we would like to take this opportunity to thank each and every one of you for the role you play in bringing Indiana’s technology sector to the forefront.

TechPoint Mira Awards recognize excellence and innovation through the achievement of Indiana’s outstanding technology industry performers and contributors, and focuses attention on the broader issue of the important role technology plays in Indiana’s economy. This year’s finalists criss-cross the marketplace from established corporations and major research universities to fledgling startups, and from creative agencies to cutting edge mobile and emerging technologies.

2013 Finalists and Ice Miller Clients

To see a list of all the 2013 Finalists, visit TechPoints Mira Awards website.

In 2010, the Massachusetts Eye and Ear Infirmary and Massachusetts Eye and Ear Associates Inc. (MEII) suffered a data breach issue in which the MEII lost patient prescription data and clinical information of around 3,600 individuals. Due to the breach, the Office for Civil Rights (OCR) performed an investigation and audit of MEII’s policies and procedures to determine whether they were in compliance with the HIPAA Security Rule. On Monday, Sept. 17, 2012, HHS announced that a settlement had been reached in the matter.

This data breach issue did not occur through some attack by the Anonymous group, a zero-day vulnerability exploited by some third party, or even a compromised email or social media account. What happened was very simple, and it’s the same story that seems to happen over and over again: An employee’s unencrypted laptop which contained sensitive information was lost or stolen.

The price tag resulting from the settlement, however, is not very simple. Based on the subsequent investigation that came out of the breach, MEII now must pay $1.5M for potential violations of the HIPAA Security Rule. Indeed, the potential violations found against MEII in the subsequent investigation appear to be simple failures around compliance, such as, for example, the failure to perform a risk analysis, the failure to adequately adopt or implement policies and procedures to address security incident identification, reporting and response, and the failure to implement security measures that ensure the confidentiality of electronic health information on portable devices.

This example stresses the need for organizations that must comply with the HIPAA Security Rule to put forth the time and energy into compliance in order to avoid these types of situations in the future. Employees at every level have lost portable devices for as long as we’ve had them. For example, the HHS website which discloses a list of breaches of unsecured protected health information affecting 500 or more individuals lists the word “Laptop” 34 times and “Portable Electronic Device” 10 times under the field of “Location of Breached Information”.

Importantly, the MEII situation discussed above resulted from an investigation and audit into MEII’s HIPAA Security Rule compliance. Although this investigation stemmed from a data breach, OCR has established a pilot to perform random audits of covered entities in a similar vein. This pilot program should increase in activity in 2013, and any covered entity may find themselves going through something similar to what MEII experienced.

Twitter’s decision to suspend the account of NBC’s No. 1 Tweeting Critic raises issues of free speech, censorship of the press and corporate control of social media. Guy Adams, a Los Angeles-based reporter for The Independent, has been sharply critical of NBC’s coverage of the Olympics. Adams’ caustic Tweets prominently feature the #nbcfail hashtag and include:

• “America’s left coast forced to watch Olympic ceremony on SIX HOUR time delay.  Disgusting money-grabbing by @NBColympics.”

• “I have 1000 channels on my TV.  Not one will be showing the Olympics opening ceremony live.  Because NBC are utter, utter bastards.”

The Tweet that apparently crossed the line provided the email address of NBC executive Gary Zenkel and told followers to “tell him what u think.” NBC filed a complaint after Twitter alerted the network to the disclosure. Soon after, Adams was suspended.

Critics call attention to the partnership between NBC and Twitter to promote the games and suggest that the suspension of Adams’ account may have been an act of reprisal. Twitter claims that Adams was suspended because he posted a private email address in violation of its terms of service. This raises two questions. First, was the email address, in fact, private? And second, did Adams’ Tweet actually violate Twitter’s terms of service?

The issue of whether Zenkel’s email address is public or private has no easy answer. Adams argues that it is a corporate email and formatted in such a way as to be fairly easy to figure out – FirstName.LastName@nbcuni.com. Furthermore, the email address was posted as a direct result of and in the context of his work. On the other hand, many people’s home addresses are available on the Internet in some form, but tweeting them would be considered a violation of Twitter’s terms of service.

The issue of whether Adams’ Tweet violated Twitters terms of service seems more straightforward. Regarding the posting of private information, Twitter states:

Posting another person’s private and confidential information is a violation of the Twitter Rules.

Some examples of private and confidential information are: credit card information, social security or other national identity numbers, addresses or locations that are considered and treated as private, non-public, personal phone numbers, non-public, personal email addresses.

Keep in mind that although you may consider certain information to be private, not all postings of such information may be a violation of this policy. If information was previously posted or displayed elsewhere on the Internet prior to being put on Twitter, it is not a violation of this policy.

(Emphasis added)

Adams argues that the email address is listed elsewhere on the internet. Indeed, Chris Taylor, journalist for Mashable, searched for the address and, while he admitted that the search was not as easy as he anticipated, he discovered the email address in a blog post from 2011.

Adams’ account was reinstated after NBC retracted its complaint, but Twitter’s PR nightmare is likely to linger long past the 48 hours that Adams was out of circulation. Twitter’s General Counsel, Alexander Macgillivray, apologized to Adams, while maintaining that Twitter “should not and cannot be in the business of proactively monitoring and flagging content, no matter who the user is – whether a business partner, celebrity or friend.”

However, as stated above, there are no easy answers. Critics of Twitter’s actions argue that it should not be allowed to hide behind a policy because it is individuals who make the decisions and they are capable of understanding the nuances involved. Alexis Madrigal, journalist for the Atlantic, points out that these individuals “knew the email address was publicly available and a business address. They knew they were banning a journalist. And they did it anyway.”

Adams had about 4,500 followers before Twitter suspended his account. Now that Twitter has reinstated his account, he has more than 16,300.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

In early June 2012, LinkedIn suffered a security breach resulting in the disclosure of 6.4 million hashed passwords and corresponding account names to the service. LinkedIn confirmed the breach and implemented measures to limit the exposure of its users by disabling impacted accounts and salting its password databases. Further, LinkedIn disclosed details about the breach and LinkedIn’s efforts to protect its members.

The breached disclosed a subset of LinkedIn’s password database which included passwords that have been passed through SHA-1, a one-way, cryptographic hash function. Specifically, the SHA-1 algorithm takes any plaintext input and produces a 160-bit output that contains no reference or ability to reproduce the plaintext input. Upon a user inputting a password onto a website, the password may be passed through the SHA-1 algorithm and then compared to the stored hash in the password database, thereby authenticating the user.

A list of hashed passwords provides a layer of security by allowing a business to not store a plaintext password for a user. Nevertheless, in the event that an attacker obtains a list of hashed passwords, the attacker may sequentially provide plaintext inputs to the SHA-1 algorithm until matches are found within the list of hashed passwords, thereby obtaining a correct plaintext value for a corresponding hashed password.

This disclosure may present a unique privacy problem for LinkedIn under various state breach notification laws. Most states have enacted state breach notification laws that require a company that maintains personal information of its customers to notify impacted customers in the event that information has been disclosed to an unauthorized third party. The National Conference of State Legislatures maintains a list of various state breach notification laws here. As an example of a company attempting to abide by these state statutes, most consumers may remember the Sony Playstation Network data breach that resulted in an immense disclosure on April 28, 2011.

Although each state breach notification law is different, a few common elements are prevalent that are on point to LinkedIn’s breach. First, most state breach notification laws only require notification in the event that personal information has been disclosed or may have been disclosed to an unauthorized third party. See, for example, Indiana Code 24-4.9-3-1. LinkedIn could take the position that the disclosure did not include personal information because all that was disclosed was potentially the opportunity for an attacker to obtain personal information through misuse of a LinkedIn account, not personal information itself.

Further, LinkedIn in its analysis may need to take the extra step of determining whether information potentially able to be obtained by an attacker would even constitute personal information. Each state defines personal information differently. In Indiana, personal information may include a first name and last name in combination with financial information. In North Carolina, personal information may include a person’s first name and last name in combination with an email address. 

Second, most state breach notification laws do not require disclosure in the event that the personal information disclosed is encrypted. Indiana, for example, defines encrypted data to include data that ” (1) [has] been transformed through the use of an algorithmic process into a form in which there is a low probability of assigning meaning without use of a confidential process or key; or (2) are secured by another method that renders the data unreadable or unusable.” Indiana Code 24-4.9-2-5.

As discussed above, the disclosure includes a list of hashed passwords. LinkedIn could argue that, even if account names and hashed password constitute personal information, hashed passwords fall under the definition of encrypted data and, therefore, disclosure is not required. Specifically, hashed passwords are secured in a one-way hash that renders the data unusable.

A counter-argument would be that attackers are crowd sourcing computing power to try to obtain plaintext passwords from the disclosed list. Moreover, LinkedIn did not use additional security measures to protect the password database even in the event that disclosure occurred, such as, for example, salting the passwords in addition to hashing.

As shown above, most state breach notification laws present a gray area to this fairly routine security breach from LinkedIn. Although LinkedIn saw a lot of press on this issue, many businesses go through a security breach requiring a similar analysis without such press. Businesses may want to consider evaluating their strategies regarding security breaches to determine the appropriate response in this type of situation.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

On June 13, 2012, ICANN released key details of the 1,930 applications received from applicants who each paid $185,000 (for a total payment of over $357 million) to attempt to register various keywords, trademarks, geographical indications, community groups, generic industry names, and other terms designed to drive or protect business as Internet domain names.  The list of applications is available at http://newgtlds.icann.org/en/program-status/application-results. If you are a trademark owner, this is important news that could affect the strength of your mark and your ability to use it freely on the Internet.  If you know what to look for in this list and how to navigate the process if you find something problematic, then you can protect yourself from larger headaches in the future.

It was no surprise to see multiple applications for such popular terms as MOVIE, BLOG,  CLOUD, BOOK, SALE, STORE, and BUY.  The fact that SUCKS is going to be a contested gTLD will surely make for some interesting reading as the applicants battle for control.  It is expected that auctions will be used to assign ownership of contested terms, but there are many opportunities for an applicant to lose before that occurs.

Specifically, the publication of this list opened a 60 day period during which the public may comment on the applications (to assist ICANN in reviewing the applications for possible approval) and a seven month window during which formal objections may be lodged.  The formal objections process is the most relevant avenue for trademark owners to pursue if they believe that a particular gTLD could infringe or dilute the distinctive quality of their mark.

ICANN expects to receive comments and objections on the gTLDs in a number of defined areas.  These include community objections, objections based on the objector’s legal rights (this is the one of most interest to trademark owners concerned about confusion), “string” confusion (the gTLD is confusingly similar to another existing or proposed gTLD), and limited public interest objections.  The legal rights objection may be made by any party that can prove valid rights to the string of characters that make up the gTLD.  A successful objection will terminate the infringing application.

Trademark owners and their counsel should not review this list solely for infringement issues, of which there are likely few.  The registration procedure with its sizable application fee ($185,000) and the open threat of trademark infringement litigation kept blatant infringers away, and, consequently, many brand owners.  If you thought that .cocacola and .facebook were sure bets for new gTLDs, it appears that these companies’ trademark counsel are content to rely on traditional enforcement mechanisms to keep infringers at bay.

Instead, this is an opportunity to nip business problems in the bud by consulting with counsel before he or she starts to evaluate the list.  Identifying all relevant business issues, such as those important to marketing and sales personnel and potentially even product developers, will generate a preliminary list for discussion and allow owners to prioritize their concerns.

For example, there are a number of geographical designations for which applicants are seeking registration.  Do you do business in those areas?  There are a number of industry names on the list.  Do you do business in that industry?  Are there any gTLD proposals that could dilute the goodwill in your mark or create the need for defensive registrations?

If a trademark owner finds no direct issues with the gTLDs themselves, what about the applicants?  There may be applicants on the list who are serial cybersquatters.  Do you have an applicant or contact name for someone you have encountered with previous cease-and-desist letters or cybersquatting lawsuits?  If so, that name should be checked to ensure that that person or entity is not trying to secure a gTLD for illegitimate purposes.  A trademark owner may also want to investigate a .generic applicant’s registration policies and comment on any potential problems raised thereby.  The gTLD applicants’ proposals concerning how cybersquatting and infringement complaints will be dealt with may also merit comment if those policies could be improved.

            On a related topic, comment is invited on the draft implementation program for the new trademark data clearinghouse that is contemplated for use across all gTLD registries.  The clearinghouse is designed to be available globally and be capable of providing validation for trademark data originating from any global region.  Use of the clearinghouse is expected to cost $150 or less per submission, and trademark owners and gTLD owners will rely on it for support of the new gTLD rights protection schemes.  Administration of the authentication and validation of rights claims is to be handled by Deloitte.  IBM has been selected to operate the databases and handle technical issues relating thereto.  Stay tuned to IceLoop for the sunrise period when trademark owners will need to consider which of their marks to submit to the clearinghouse.

For further reading, detailed information on the Legal Rights Objection (LRO) procedure and other mechanisms to protect trademarks is available from the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) through its website at http://www.wipo.int/amc/en/domains/lro/.  ICANN’s dedicated webpage at http://newgtlds.icann.org/en/program-status/objection-dispute-resolution provides details on the Objection and Dispute Resolution procedures.

Ice Miller LLP’s experienced trademark counsel can assist you in protecting your market share through your valuable brands no matter where the threat arises.  As we say, It Is A Complex World, Be Advised.^SM  Please feel free to contact Holiday Banta at h.banta@icemiller.com with any questions.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.