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Updates in Trademark Law

on Thursday, 21 April 2016 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

2015: The Boom of New Generic Top-Level Domains

In 2015, domain name real estate exploded, with several hundred new top-level generic domain names (gTLDs) approved and introduced by the Internet Corporation for Assigned Names and Numbers (ICANN), the agency that coordinates and maintains the worldwide web. New domain names were introduced on a daily basis with little or no fanfare. Many of the new generic top level domains are brand-specific, while many others are for generic domains, e.g., .family, .online and .chat. The release of hundreds of new gTLDs represents the biggest change to the Internet since the first set of top-level domains (.com, .org, .net, .edu, .gov) were launched in 1984.

What is a generic top level domain (gTLD)?

New generic top level domains are similar to the .com and .org suffixes that have been present for years, but now marketers, companies and entrepreneurs can grab their own industry suffix and put up as many new websites as possible. For example, Gold’s Gym might register or, and a practicing lawyer can register his name in the .attorney domain.

What does this mean for your business?

If a new business is looking to expand, the good news is that these new top level domains offer an opportunity to own online real estate where such a company could not own it before. These opportunities may level the playing field for a new business because the opportunities to register a domain in a new gTLD are practically endless. For example, a new dental practice named United can now register since United Airlines owns

For established businesses, many marketers believe that moving away from a .com domain and branding a site on a new extension will require double the effort. The market needs to warm to the idea of the new gTLDs, and consumers will need to remember your brand (Baird Holm, for example), as well as the correct extension (.lawfirm). This begs the question: What’s to stop them from getting confused and typing in, or, all of which are new gTLDs that have been approved?

What does this mean for consumers?

Unfortunately, some consumers may not completely understand how these new domains work and who owns them, especially for the brands and products that many know and love. There are many people taking advantage of this new real estate boom and purchasing websites in the .bank, .insure, or .credit that may be very confusing or misleading to consumers.

According to reports from two different Internet security news websites, a .support domain was recently used in a phishing scam by fraudsters trying to get Bank of America clients to provide their banking account information so that they could then take over their bank accounts. They registered a domain that attempted to leverage consumer confusion around the new gTLDs. This is an example of one of the ways in which fraudsters are going to try to leverage the new gTLDs to their advantage.

Trademark Considerations in Cuba for U.S. Brand Owners

The Cuban embargo has not been lifted, but in 2015, President Obama eased some restrictions that affect commerce in and between the United States and Cuba. What followed are new marketing and sales opportunities for brand owners and also unfortunately their dishonest counterparts.

Cuba is a “first to file” country, which means the first applicant to apply for trademark protection in Cuba has the right to obtain a registration. Brand owners in the U.S. should be assessing the Cuban market in the same way they would assess any potential foreign market. In particular, the prevailing theory is that businesses that operate in certain industries – financial, construction, hospitality, transportation or any other previously-prohibited sectors – should consider filing Cuban trademark applications.

Preventing infringing counterfeit products from entering the U.S. marketplace should also be a top priority. If your company is doing business in Cuba or if Cuba is in your business plan, do not delay in filing trademark applications in Cuba.

Registration of Disparaging Marks

A football franchise and a rock band: both bring sensitive issues of race in America to the forefront of trademark law with dueling constitutional rights to challenge a decades-old statute. These are the trademark battles being waged by the Washington Redskins and The Slants.

The central issue in each case is the Lanham Act’s Section 2(a), which bars the Trademark Office from registering any marks that “disparage” people. Both the NFL team and rock band were denied registrations for “Redskins” and “The Slants” because of the provision, and both are now making the same argument against it – that the rule violates the First Amendment by discriminating against unpopular speech.

A circuit split is brewing over the question. In the team’s case, a federal judge ruled in July 2015 that trademark registrations are “government speech,” meaning how the Trademark Office chooses to issue them is not subject to First Amendment scrutiny. But in the band’s case, in December 2015 the full Federal Circuit ruled that the provision is an unconstitutional penalty against speech.

On Monday, April 25th, the team filed a petition with the United States Supreme Court, asking the Court to hear the case before the Fourth Circuit has an opportunity to hear the case. This is an unusual petition, which the Supreme Court will rule on in the next couple months.

Grayson J. Derrick

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