Daily Archives: January 21, 2009

A new (.tel) TLD, a new day for cybersquatters.

Based upon this press release (pdf), Telnic, a British company, is offering a new top-level domain (TLD) “.tel”.

“.tel” is a slightly different domain– According to the Telnic website, “The value of a .tel domain lies with the ability to host personal (or corporate) contact information directly in the DNS, which can then be universally accessible. This stands in contrast to the typical use of the DNS for other TLDs, in which the DNS only provides a mapping between domain names and IP addresses.” For individuals, Telnic can host a page that if accessed, provides contact information for a multitude of devices.  For companies, Telnic provides specialized pages for contacting the business, creating an on-line voting system, etc.

“.tel” domains are supposed to be There is a very limited “sunrise” period, where businesses with registered trademarks get first shot at new domains in the “.tel” TLD. Anyone who applied for a trademark by May 30, 2008, and who has achieved a registration at the time the entity applies for the domain, may apply for domains in the new TLD.  So, trademark owners, if you want to protect yourself in yet another TLD, you have until February 2, 2009 to do so. In addition, trademark owners may also challenge another entity’s registration in the Sunrise period.

A couple of thoughts: (1) Because this top level domain is not maintained by a U.S. company, it may be more difficult to bring cybersquatting actions under U.S. law against a cybersquatter.  In other words, it will be more difficult later to challenge someone who wrongfully acquires a confusing domain name. That’s an extra incentive to register the domain now.  (2) During the “sunrise” period, Telnic uses a “verification agent” to verify that the domain applied for, and the domain name must be “identical” to the registered trademark (excepting spaces, punctuation and diacriticals).  I wonder if the trademark owner could include the “.tel” suffix as part of the claim of being “identical.”  In other words, can Microtel (the hotel chain) register “Micro.tel”? or “Microtel.tel”? or both?  This is certainly not uncommon– look at the “famous” bookmark site del.icio.us (which now redirects to delicious.com).  With my search, I found 2888 records in the USPTO’s TESS database for trademarks that end in “tel” and are currently “live” (meaning that they are valid registrations or in the process of being approved). I’m sure a number of those trademark owners would like to have a snazzy domain like ams.tel or sofi.tel, even if the point of the domain is for communicating.

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Thinking more about MISTER FLUFFY…

As with other trademark practitioners, I can’t stop thinking about MISTER FLUFFY, a trademark allowed to be registered by the Trademark Trial and Appeal Board in part because the opposer, Tootsie Roll, failed to properly make its trademark registrations of record.

Mmm. Fluffy. But dangerous?

Mmm. Fluffy. But dangerous?

–BEGIN TECHNICAL TRADEMARK DISCUSSION–

The TTAB denied Tootsie Roll’s opposition, not on “substantive” grounds (that is by comparing the likelihood of confusion under 2(d) of the Lanham Trademark Act) but rather because Tootsie Roll failed to prove priority in the mark, even though Tootsie Roll owned federal trademark registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY PUFFS for the same goods and services MISTER FLUFFY was being registered for.  Why? Because, when you put in “testimony” before the TTAB (which is just submitting documents, depositions, exhibits, and other information on paper), to make a trademark registration properly of record, the proponent must either (a) provide photocopies of printouts from the USPTO’s TESS and TARR databases (for all proceedings started after August 31, 2007) with the initial pleading (notice of opposition or petition to cancel), or (b) provide “status and title” copies of the registration, which must be ordered specially from the USPTO, or (c) provide live witness testimony as to the status and title of each registration. (Rule here (pdf).) Over and over again, trademark attorneys forget about or ignore this rule, resulting in many (pdf), many oppositions (pdf) and cancellation proceedings being dismissed.

The rule seems easy enough to read and understand, but also seems to confound trademark practitioners.  Why? Maybe because trademark practitioners are (usually) Internet savvy, and rely extensively on the USPTO’s online TESS and TARR databases.  If we use them every day and rely upon them in our practice, why can’t the USPTO?  Perhaps it’s because trademark practitioners take for granted that their clients own registrations, and the organization that grants registrations (the USPTO) is adjudicating whether this other application or registration should be allowed. Shouldn’t the left hand know what the right hand does?

But the violation of this rule is so clear, wouldn’t an attorney’s failure to either attach the TESS and TARR records on the initial pleading or procure a status and title copy of the registrations amount to malpractice?  It would seem that recklessly violating a clear rule of the TTAB, which has been subject to so many TTAB opinion, could constitute a violation of the duty of care.   I suppose there are two stumbling blocks for clients whose attorneys dropped the ball.  First, to be successful in legal malpractice, a disappointed client must prove that the attorney’s violation was the but-for and proximate cause of losing the case.  Because TTAB opposition proceedings in which the senior user’s registrations are at issue are often based upon (a) priority, and (b) a likelihood of confusion, and because likelihood of confusion is extremely fact specific, based upon a multi-factor balancing test, and is presented to a board that believes that each proceeding is decided on its own facts of record, it would be very difficult to prove that, but for the registration, the opposer would have won.  Second, a critical element of malpractice, like any negligence action, is damages. Because the TTAB does not have jurisdiction to decide whether infringement has occurred, or even whether any particular user is entitled to use a trademark in any particular situation, but rather whether an owner has the right to register the trademark, I would think it would be nearly impossible to measure damages incurred by the junior user’s subsequent registration of a confusingly similar trademark. (That’s why injunctive relief is most common in trademark infringement cases that don’t involve counterfeiting.)

—END TECHNICAL DISCUSSION—

So, trademark owners, don’t be a MISTER FLUFFY, be a Mr. Powerful, and make sure you (or your counsel) properly places in the record the apropriate registrations.

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Filed under Law, Trademarks, TTAB

What it takes to be a successful trademark blogger…

While I put my computer away yesterday, enjoying the magnificent inauguration and subsequent celebrations, John Welch was busy blogging about a recent decision of the Trademark Trial and Appeal board, denying an opposition brought by Tootsie Roll for for failure to establish priority. And instead of also enjoying the day, Ryan Gile, a/k/a Las Vegas Trademark Attorney, can only think about MISTER FLUFFY instead of the momentus events taking place.

As cool as MISTER FLUFFY is, I think I’m glad I enjoyed the day.

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Judge Gertner stays “narrowcast” hearing

In the Tenenbaum copyright infringement case, (blogged here, here, and here) Judge Gertner has stayed (pdf) the hearing on Tenenbaum’s motions (and the coordinated “narrowcast” of that oral argument) based upon the record companies’ requests for a writ of mandamus.

Because the decision to allow the “narrowcast” was highly publicized and likely to be perceived to be on the “cutting edge” of technology broadcasting of federal court proceedings, I can see how Judge Gertner would want the Court of Appeals to review this it. Plus, I have to go to a CLE tomorrow, so I’m glad that I won’t have to miss it.

Hat tip to  this post from from Wired.com, reporting the decision.

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