CLE

Continuing Legal Education (CLE)

The URS, UDRP and Beyond: Domain Name Enforcement in the New gTLD Era

December 1 @ 1:00pm EST

The Uniform Rapid Suspension (URS) system is a rights protection mechanism introduced in connection with ICANN’s new generic top-level domain (gTLD) program that provides trademark owners with an alternative in domain name disputes to the Uniform Domain Name Resolution Policy (UDRP). Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should have trademark owners carefully considering which system to use.

For example, seven days after filing a complaint, a major brand owner successfully challenged domain names registered using new gTLDs, and those names were suspended. A disadvantage of the URS is that is does not provide for the transfer of the domain name in question, and the brand owner cannot use the domain name during the suspension period.

Trademark owners and their counsel must understand the benefits and limitations of the URS, UDRP, and other enforcement options to ensure that they are adequately protecting their trademarks online in the evolving domain name space.

Sara B. Blotner, Associate General Counsel at Citigroup; Sarah B. Deutsch, Vice President & Deputy General Counsel at Verizon Communications and Brian J. Winterfeldt, Partner at Mayer Brown, will provide guidance to trademark counsel on the advantages and disadvantages of various rights protection mechanisms and strategies, including the URS and UDRP. The panel will examine the considerations in determining how to develop and implement a successful domain name enforcement strategy, how to select the best dispute resolution mechanism, and how to manage a domain name portfolio as new gTLDs continue to be added to the domain name landscape.

The panel will review these and other key issues:

  • How has the domain name space evolved since the launch of the new gTLD program, and how do these changes affect overall enforcement concerns?
  • What are the advantages and disadvantages of the URS? The UDRP?
  • What factors should counsel consider when determining how to address an infringing domain name?
  • What strategies should counsel employ to navigate the URS, UDRP, and other rights protection mechanisms successfully?

Trademark Infringement on #SocialMedia

May 21, 11:45 a.m. – 1 p.m.

The presentation will cover: (a) unique issues brand owners face in connection with social media; (b) social media sites reluctance to get involved in trademark disputes; (c) username squatting, as compared to cybersquatting; (d) trademark enforcement considerations that are unique to social media disputes; (e) use of social media posts/pages as evidence against defendants in infringement suits; (f) third party fair uses, including uses by fans, licensees, critics, unauthorized distributors, resellers, parodists, pranksters, and competitors; and (g) lessons that can be learned from copyright law with respect to contributory trademark infringement.  The presentation will include examples of the various topics from the media and from case law.  And in connection with the fair use discussion, the presentation will consider any parallels that can be drawn from cases involving domain name disputes from the 90s and 00s.

8/25/2014 Evaluating the New URS vs. UDRP: Navigating the Alternatives for Trademark Enforcement of Domain Names

The Uniform Rapid Suspension (URS) system provides trademark owners with an alternative in domain name disputes to the Uniform Domain Name Resolution Policy (UDRP). Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should have trademark owners carefully considering which system to use.

In Feb. 2014, seven days after filing a complaint, a major brand owner successfully challenged domain names registered using new gTLDs, and those names are suspended. A disadvantage of the URS is that is does not provide for the transfer of the domain name in question, and the brand owner cannot use the domain name during the suspension period.

Trademark owners and their counsel must understand the benefits and limitations of both the URS and the UDRP to be able to make the most strategic decision when going after infringing domain names.

Sara B. Blotner at Citigroup; Sarah B. Deutsch at Verizon Communications and Brian Winterfeldt at Katten Muchin Rosenman, will provide guidance to trademark counsel on the advantages and disadvantages of the URS system and the UDRP. The panel will examine the considerations in determining which dispute resolution mechanism makes sense to use when challenging infringing domains and offer strategies to navigate the systems.

The panel will review these and other key questions:

  • What are the advantages and disadvantages of the URS? The UDRP?
  • What factors should counsel consider when determining which system to use?
  • What strategies should counsel employ to navigate the URS or UDRP effectively?

8/25/2014  Trademark Registration 101: How to File a Trademark Application with the USPTO

This updated 2014 program is a 60-Minute CLE program intended to provide attorneys with a brief introduction to the Federal Trademark Registration Process. Participants will learn how to prepare and file an online application with the United States Trademark and Patent Office (USPTO) using the Trademark Electronic Application System (TEAS).

The presentation will cover trademark basics such as : (I) What is a Trademark; (ii) What is the difference between a Federal and State Trademark Registration; (iii) What Goods and Services definitions mean and how to use them; (iv) how to search the USPTO database as a first step in a Mark search; (v) identifying the proper “Basis” for filing a trademark application and how to monitor the progress of your application.

8/13/2014 – Trademark Registration 101: How to File a Trademark Application with the USPTO.

This updated 2014 program is a 60-Minute CLE program intended to provide attorneys with a brief introduction to the Federal Trademark Registration Process. Participants will learn how to prepare and file an online application with the United States Trademark and Patent Office (USPTO) using the Trademark Electronic Application System (TEAS).

The presentation will cover trademark basics such as : (I) What is a Trademark; (ii) What is the difference between a Federal and State Trademark Registration; (iii) What Goods and Services definitions mean and how to use them; (iv) how to search the USPTO database as a first step in a Mark search; (v) identifying the proper “Basis” for filing a trademark application and how to monitor the progress of your application.

8/27/2014  Evaluating the New URS vs. UDRP: Navigating the Alternatives for Trademark Enforcement of Domain Names

The Uniform Rapid Suspension (URS) system provides trademark owners with an alternative in domain name disputes to the Uniform Domain Name Resolution Policy (UDRP). Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should have trademark owners carefully considering which system to use.

In Feb. 2014, seven days after filing a complaint, a major brand owner successfully challenged domain names registered using new gTLDs, and those names are suspended. A disadvantage of the URS is that is does not provide for the transfer of the domain name in question, and the brand owner cannot use the domain name during the suspension period.

Trademark owners and their counsel must understand the benefits and limitations of both the URS and the UDRP to be able to make the most strategic decision when going after infringing domain names.

Our panel will provide guidance to trademark counsel on the advantages and disadvantages of the URS system and the UDRP. The panel will examine the considerations in determining which dispute resolution mechanism makes sense to use when challenging infringing domains and offer strategies to navigate the systems.

We will review these and other key questions:

  • What are the advantages and disadvantages of the URS? The UDRP?
  • What factors should counsel consider when determining which system to use?
  • What strategies should counsel employ to navigate the URS or UDRP effectively?

After our presentations, we will engage in a live question and answer session with participants so we can answer your questions about these important issues directly.

I hope you’ll join us.

For more information or to register >

Or call 1-800-926-7926 ext. 10
Ask for URS/UDRP Trademark Enforcement Alternatives on 8/27/2014
Mention code: PL1T23-URO2ZY

Sincerely,

Sara B. Blotner, Associate GC
Citigroup, Inc.
Long Island City, N.Y.

 

8/27/2014 Evaluating the New URS vs. UDRP: Navigating the Alternatives for Trademark Enforcement of Domain Names

This CLE live web seminar will provide guidance to trademark counsel on the advantages and disadvantages of the Uniform Rapid Suspension (URS) system and the Uniform Domain Name Resolution Policy (UDRP). The panel will examine the considerations in determining which dispute resolution mechanism makes sense to use when challenging infringing domains and offer strategies to navigate the systems.

Our faculty includes: Sara B. Blotner, Associate General Counsel at Citigroup; Sarah B. Deutsch, Vice President & Deputy General Counsel at Verizon Communications and Brian Winterfeldt, Partner at Katten Muchin Rosenman.

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

For more information or to register >

Or call 1-800-926-7926 ext. 10
Ask for URS/UDRP Trademark Enforcement Alternatives on 8/27/2014
Mention code: PL1T2X-URH2ZZ

 

8/13/2014 Oppositions at the TTAB: Strategies for Inter Partes Proceedings 

I am pleased to announce that I will be speaking in an upcoming Strafford live webinar, “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB” scheduled for Wednesday, August 13, 1:00pm-2:30pm EDT.

Inter partes proceedings before the TTAB are proving to be worthwhile tools and a valuable part of a brand owner’s overall trademark enforcement and protection strategy. Despite the TTAB’s limited jurisdiction in only determining the right to register, as opposed to the right to use, and its inability to determine infringement, issue injunctive relief, or monetary awards, trademark oppositions and cancellation proceedings can be a less aggressive and cost effective venue for resolving existing and avoiding future trademark concerns between the parties.

Both counsel for the opposer or petitioner, and for the applicant or registrant, must be able to navigate the opposition or cancellation proceeding to succeed, whether or not the case concludes with a final trial on the merits or a negotiated coexistence agreement. Counsel must understand the differences between the TTAB proceeding and civil litigation in the federal courts, how the TTAB is managing the process, and the evidentiary requirements.

The U.S. Supreme Court recently recognized the importance of TTAB proceedings when it granted cert in the B&B Hardware decision from the Eight Circuit Court of Appeals. The Court will determine the effect of the TTAB’s decisions on likelihood of confusion, and the extent to which federal district courts in later infringement actions are bound by them.

Filing an opposition or cancellation action can be a cost-effective approach for challenging a trademark application or registration, and initiating a possible settlement dialogue with opposing counsel, particularly compared to litigating the matter in federal court. Before doing so, however, counsel must be prepared to properly handle these specialized proceedings.

Our panel will provide trademark counsel with guidance to navigate opposition proceedings at the TTAB, whether opposing the application or responding to the opposition. The panel will examine issues related to and offer strategies for filing the opposition, discovery and the trial phase.

We will review these and other key questions:

  • What are the grounds for opposing a trademark application or cancelling a trademark registration?
  • What strategies should counsel for the party responding to the opposition or cancellation action employ during discovery?
  • What strategies should counsel for the party opposing the application or petitioning to cancel the registration use during the trial phase?

After our presentations, we will engage in a live question and answer session with participants so we can answer your questions about these important issues directly.

I hope you’ll join us.

For more information or to register >

Or call 1-800-926-7926 ext. 10
Ask for Trademark Oppositions on 8/13/2014
Mention code: PL1T24-URO2ZE

Sincerely,

Stephen R. Baird, Shareholder
Winthrop & Weinstine
Minneapolis

 

5/9/2014  Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner

Some problems causing a trademark application to be rejected or raise issues for the applicant may be avoided by doing the work up front. However, that’s not always the case and the U.S. Patent and Trademark Office will issue an office action listing grounds for refusal.

When responding to a Trademark Office Action, counsel must consider several factors, including the impact of statements submitted, the evidence available to support the mark, grounds for refusal, and the impact of clarifying or limiting the mark.

Counsel must then plan and carefully implement well-thought-out strategies for overcoming the PTO’s objections, e.g., getting consents or filing cancellation actions, in an effort to get the mark registered.

John N. Jennison at Jennison & Shultz and Lisa M. Willis, Department Atty. at Kilpatrick Townsend, will provide guidance to trademark counsel on responding to Trademark Office Actions, understanding key considerations and assessing the alternative responses. The panel will offer strategies to overcome pitfalls that arise in the trademark application.

The panel will review these and other key questions:

  • What are the key considerations for trademark counsel when responding to an office action?
  • What are the areas that have proven to be red flags for the PTO?
  • What other strategies should counsel implement to increase the likelihood of mark registration after the office action is issued?

For more information >

Or call 1-800-926-7926 ext. 10
Ask for Responding to Trademark Office Actions on 5/28/2014
Mention code: ZKZZZU-URBZZS