Posted on September 21, 2011 by Stacy K. Marcus

Protecting Your Trademarks in the World of .XXX Domain Names

As described in Reed Smith's April 22, 2011 Client Alert, to go along with .com, .net, and the other current top-level domains ("TLD's"), the formation of a new .xxx TLD has been approved for websites related to the adult entertainment industry.

Since the .xxx TLD is intended only for adult entertainment industry websites, applicants who want to set up .xxx domains will need to certify that they are in the industry; however, trademark owners may worry that cybersquatters and other entities will attempt to register .xxx domains related to well-known brands to take advantage of (and thereby damage) the brand's goodwill. Reed Smith's prior Client Alert discussed some of the initial details regarding the system set up to deal with some of those concerns. This Alert serves as an update to the most important trademark protection in the .XXX system by far: the "Sunrise B" Period.

For more information, please read Reed Smith's Client Alert, written by Brad R. Newberg, Gregory S. Shatan, John L. Hines, Jr. and Angela M. Washelesky.

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Posted on September 20, 2011 by Keri S. Bruce

Facebook and Lamebook Settle Trademark Dispute

On August 25, 2011, Facebook and Lamebook, a self-described “fun humor blog” which highlights funny, absurd and “lame” things people post on Facebook, settled their trademark dispute. The dispute began in early 2010 with Facebook sending Lamebook a cease-and-desist letter to change its name and stop using the Lamebook mark. After months of discussions between the parties, Lamebook filed a lawsuit in Texas in November 2010 seeking declaratory judgment that it was not infringing the Facebook trademark or trade dress rights. Days later, Facebook filed its own suit in California claiming trademark infringement. Facebook then dismissed its case, without prejudice, after a failed attempt to have the Lamebook suit dismissed or transferred. 

The parties released a mutual statement settling the Lamebook lawsuit, stating that, “We are pleased to arrive at an agreement that protects Facebook’s brand and trademark and allows for Lamebook’s continued operation … The parties are now satisfied that users are not likely to be confused.” As part of the settlement, Lamebook agreed to add a “prominent disclaimer” to its website and won’t seek trademark protection for its name. The disclaimer that now resides on the Lamebook website states, “This is an unofficial parody and is not affiliated with or associated with, or endorsed or approved by, Facebook.”

It’s unclear whether Facebook settled because it was concerned about the possible outcome of litigating a case in Lamebook’s hometown of Austin, Texas, or whether it wanted to avoid the potential negative publicity associated with the case. Or maybe Facebook was concerned that, given Lamebook’s argument that it was a parody website, the case would have turned out similar to the prominent Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC case (507 F.3d 252), which found that the defendant Haute Diggity Dog did not infringe or dilute the Louis Vuitton trademark with its Chewy Vuiton line of products. Regardless of the reason, the settlement is surprising considering how protective Facebook is of its intellectual property rights. Facebook currently has unresolved disputes against other “-Book” marks, including TeachBook.com, FacebookOfSex.com, and Shagbook.com. 

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Posted on April 22, 2011 by Adam Snukal

Protecting your Trademarks on the Web Is Getting Even Harder

You may want to read this Reed Smith Alert after the holidays are over, but if you can't wait this alert will shed some important light on certain important evolving dynamics that we've written on previously within the universe of domain name registrations, and how they are likely to affect your trademark on the Web.

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Posted on April 13, 2010 by Andrew R. Boortz

@Promoted Tweets: Twitter Wades into the Ad Game

For the past few months, my colleagues and I have been giving speeches regarding the legal and practical challenges inherent in social media. One of those “practical” challenges is developing a strategy to monetize social media initiatives. While this is of importance to brands using social media services, it is certainly important to the services themselves. To highlight this point, I usually mention that Twitter, which handles approximately 50 million Tweets a day, doesn’t make money off its service, yet people like Kim Kardashian may be getting paid up to $10,000 to Tweet (which any reader of this blog will note raises concerns under the Federal Trade Commission’s Endorsement and Testimonial Guides – for analysis of those concerns, see here and here).

Now I may have to change the presentation because Twitter has announced a plan to start advertising through the use of “Promoted Tweets.” Promoted Tweets are Tweets that businesses and organizations want to highlight to a wider group of users, according to Twitter’s company blog. In fact, Twitter has already signed up companies like Best Buy, Bravo, Red Bull, Sony Pictures, Starbucks, and Virgin America to participate in Promoted Tweets.

As the program is currently described, Promoted Tweets will be rolled out in two phases. The first phase, which should launch today, will insert Promoted Tweets into Twitter search results, and will be seen by between 2 and 10 percent of Twitter users. The second phase will extend advertising practices to user-feeds both on Twitter.com and to third-party clients who access the service, including Tweetie (which was acquired by Twitter just a few days ago).

As is to be expected, the Promoted Tweets are themselves Tweets, meaning that Twitter users can “re-Tweet” the ad to share it with their followers, can make the ad a favorite, or can comment on/reply to it. Interestingly, though, Twitter has factored this ability into the metrics for Promoted Tweets, which may ultimately be used to determine how much an advertiser pays for the keyword. The key metric, at this stage, is something Twitter is calling “resonance,” which measures how Twitter users interact with a particular Promoted Tweet. If users don’t interact with a Promoted Tweet (replying to it, favoriting it, or re-Tweeting it), the Promoted Tweet will disappear. This is not the case for regular Tweets.

What does this mean for advertisers? Well, let’s say you’re a movie studio. You know that people use Twitter to search for reviews, thoughts, and criticisms of currently released and soon-to-be-released movies, often to help them decide what movie they should see tonight. You want them to see your movie, and you happen to have surprise “midnight screenings” scheduled in locations across the country. While you could use a regular Tweet to advertise those locations and generate both interest in and buzz about your movie, that Tweet would only be read by your followers. If you used Promoted Tweets, however, you could reach Twitter users who are not (currently) your followers, but who are interested in movies and are likely to engage whole groups of other similarly situated people. In short, Promoted Tweets can offer you a whole new means of reaching consumers.

Why This Matters: For users, this matters because you will soon see advertising on Twitter spaces that wasn’t there before. For advertisers, this matters because you will now be able to buy keywords to get your Tweets higher placement in search results (and ultimately, placement in user feeds, if Twitter follows its plan). This can be both good and bad – good for increasing exposure to your Tweets (as described above), but bad because your competitors will be able to do the same. Moreover, this raises interesting trademark law questions, especially regarding sales of trademarked words and phrases as Twitter keywords. Even now this is an area of law that is still evolving in the world of search engines like Google, so rest assured that the same issues will apply here.

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Posted on January 21, 2010 by Steven M. Getzoff

The Study That Never Was - A Lesson in Comparative Advertising

This post was written by Steven Getzoff and Adam Snukal.

On Jan. 19, 2010, Weight Watchers International Inc. of New York sued its rival, Jenny Craig, Inc., in the U.S. District Court for the Southern District of New York. The suit alleged that the latter's ads were misleading and deceptive, claiming they reference a comparison study carried out by Jenny Craig between the two companies' competing products--Weight Watchers' current weight-loss program and Jenny Craig's pre-packaged meals system. Apparently, no such study was ever conducted. Weight Watchers' suit asked for injunctive relief and damages. The next day, Jan. 20, 2010, Weight Watchers announced that the court had issued a Temporary Restraining Order (TRO) against Jenny Craig. TROs are generally issued when the court believes the plaintiff's claims would likely succeed on their merits in a preliminary injunction proceeding, and that to do nothing in the interim would unfairly prejudice the plaintiff. The TRO forbids Jenny Craig from broadcasting, publishing or disseminating claims of superiority over the Weight Watchers program. In other words, they cannot use the ads at issue or any other ads containing these claims.

The comparative advertising doctrine allows one party to use the trademarks of another without permission if truthful and verifiable facts presented provide a valid factual comparison that helps consumers decide which product is better. On the other hand, a comparative advertisement that falls short of substantiation and validation, as in the foregoing case, could very well give the harmed party a claim of trademark tarnishment, in addition to deceptive advertising.

One e-columnist claims the lawsuit was and is a waste of time. We wonder, if it were that columnist's trademarks or those of his e-journal that were being exploited by a competitor, would he be so philosophical.

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Posted on October 7, 2009 by Adam Snukal

Don't Worry, Be Informed!

On Friday, October 23, 2009, from 12 – 1 p.m. (Eastern US Time), Joseph I. (“Joe”) Rosenbaum, Partner at Reed Smith and General Counsel of the IAB, assisted by Adam Snukal, Senior Associate at Reed Smith, will be presenting an educational webinar, sponsored by the Long Tail Alliance Program of the Interactive Advertising Bureau (IAB), entitled: What Me Worry? Legal Best Practices for Small Publishers.

During the webinar, Joe and Adam will be discussing and fielding questions in each of the following areas:

Trademarks: Buying someone else’s key words? Displaying advertising? Sponsoring or hosting contests, sweepstakes, co-branded promotions? Using social media or virtual worlds? Trademarks are everywhere. When should you worry?

Compliance: What’s new at the FTC and FCC? Industry groups want self-regulation. Privacy and consumer advocacy groups want more regulation. Congress is poised to “do something.” What you need to know about marketing to children, adults, compliance with sectoral advertising regulations, from finance and health care to product safety. The new FTC guidelines for Endorsements and Testimonials, and the slow death of diet commercials.

Privacy: Behavioral targeting has everyone up in arms. What should a small publisher do if she feels her privacy policy has been violated?

Social Media: Blogs, splogs and vlogs. Virtual worlds, avatars and pseudonyms. Profiles and networks, friends and fans. Testimonials and endorsements – from celebrities to consumers, paid and unpaid. Buzz, viral and word of mouth. Defamation, libel, copyright and personalized URLs. Sound confusing? It is. But ignorance won’t insulate you from liability. Don’t want to become a regulatory target? What you should know.

Q&A: IAB and Reed Smith to answer questions from participants.

The webinar is open to IAB members, to Reed Smith clients, and to the general public on a first-come, first-served basis. Register now. You can get more information and register right here for What Me Worry? Legal Best Practices for Small Publishers. 

About the Long Tail Alliance Program

The IAB formed the Long Tail Alliance program in summer 2008 to encourage involvement with individuals and small businesses who, powered by interactive advertising, have turned their interests and passions into a media revolution. The Alliance is the beginning of something the IAB envisions as a much larger portrait of American entrepreneurs who are pursuing and achieving the American dream, even as they row hard against strong economic currents. The IAB hopes to expand its Long Tail Membership in order to encourage advocacy, training, and a coming-together of smaller publishers across America as their businesses grow, all while the dynamic of technology and media continues to change.

For more information, click here.

About the IAB

The Interactive Advertising Bureau is comprised of more than 375 leading media and technology companies that are responsible for selling 86 percent of online advertising in the United States. On behalf of its members, the IAB is dedicated to the growth of the interactive advertising marketplace, of interactive's share of total marketing spend, and of its members' share of total marketing spend. The IAB educates marketers, agencies, media companies and the wider business community about the value of interactive advertising. Working with its member companies, the IAB evaluates and recommends standards and practices, and fields critical research on interactive advertising. Founded in 1996, the IAB is headquartered in New York City, with a Public Policy office in Washington, D.C.

About Reed Smith

Reed Smith is a global, full-service law firm with nearly 1600 lawyers in 23 offices around the world. Joseph I. (“Joe”) Rosenbaum, a partner in the New York office, chairs the firm’s global Advertising Technology & Media law practice; is the editor and publisher of Legal Bytes; is Corporate Secretary & General Counsel to the IAB; and is an ex-officio member of the IAB Board. Adam Snukal is a Senior Associate who works with Joe in the Advertising Technology & Media law group and is editor of Adlaw by Request, the gold standard in advertising legal publications in the industry.

Join us for this exciting and timely IAB Long Tail Alliance webinar presented by Reed Smith. We look forward to your participation.

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Posted on June 19, 2009 by Adam Snukal

Reed Smith's Advertising, Technology, & Media Teleseminar: Facebook Personalized URLs - A Titanic Opportunity for Brands, or the Tip of an Iceberg?

Facebook announced last week the availability of a personalized Facebook URLs for individual profiles, e.g., www.facebook.com/[your name].

As discussed in our June 12 Client Alert, "Just When You Thought You Were Too Old for Facebook," this latest offering from Facebook raises serious issues—issues that are typically encountered when technology collides with traditional intellectual property laws intended to protect trademarks and brand names.

Much like the confusion and abuse that proliferated when cybersquatting became rampant over the ownership and administration of domain names, we now have social networks and service providers allowing users to generate content and offering customized http://www.thecompany.com/YOURNAMEHERE URLs within their own domains in a digital and borderless world.

Significantly, the promotional momentum created by Facebook's offer has caused every astute brand and trademark owner to ponder whether they should be in a rush to register their personalized URL on Facebook, or let it ride and deal with potential infringements when—and if—they occur!

While it can be stimulating to consider whether the intellectual property laws have kept up with the Internet, you need practical guidance and insightful approaches to these problems today. The Media & Entertainment Industry Team and the Advertising Technology & Media Law Group at Reed Smith have put together a teleseminar to help you understand the issues, formulate an approach, and make informed decisions. Join us for this informative one-hour teleseminar on Tuesday, June 23 at 12 p.m. EDT with partners Doug Wood and Joe Rosenbaum. 

UPDATE:  To view the seminar's PowerPoint presentation, please click here.

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Posted on June 12, 2009 by Douglas J. Wood

Just When You Thought You're Too Old for Facebook

Earlier today, you may have received numerous memos from law firms and bloggers anxious to respond to the announcement by Facebook that Facebook is allowing trademark owners to notify Facebook of their IP rights through use of a special electronic form. The purpose is to allow trademark owners to record their IP rights in advance of Facebook allowing its users to register personalized Facebook URLs. While we applaud advising clients and friends of issues, we think the matter is considerably more complicated than previous briefs and hasty reports may indicate. As is so often the case, the devil is in the detail and this memorandum provides a deeper look at the process and related issues before undertaking Facebook’s new program to record trademark.

Facebook Announcement

On Tuesday, June 9, Facebook, Inc., the popular social networking website, announced that on Saturday, June 13th at 12:01 a.m. U.S. EDT, it will allow Facebook users, subject to certain criteria and qualifications, to create personalized URLs for their pages on Facebook. By way of example, John Smith will be able to register "Facebook.com/johnsmith." Currently, a user’s Facebook URL consists of the Facebook.com URL followed by a random series of numbers, e.g., facebook.com/profiles.Php?349485).

Whenever users can register any name on the Internet, however, it raises infringement issues under federal and state trademark and related intellectual property laws, particularly for owners of well know brands. Any registration process creates fears of cybersquatting or other attempts to hijack trademarks and brand names. Sometimes these fears are real; other times they are not.

What Trademark Owners Need to Know

Facebook has responded to concerns trademark owners in several ways. Here’s what you need to know:

  • Facebook has created an online form for use by registered trademark owners (whether Facebook users or not) to record their trademarks and thereby notify Facebook of their IP rights, at least in the first instance, to prevent others from using their trademarks in their personalized URL. For example, if a company had a registered trademark for, e.g., Robert Hall for shoes, by registering the mark with Facebook, it could prevent someone else from registering Facebook.com/roberthall, although it is unclear whether a registration protects only the exact trademark as opposed to variations. While the FAQs indicate user names are not case sensitive, that does not necessarily mean every variation of a trademark is protected by recording a claim.
  • Regrettably, Facebook has given trademark owners only a couple of days to notify Facebook of their IP rights. If a trademark owner has not done so by end of day, Friday, June 12, anyone else can potentially register a personalized Facebook URL using the brand owner's trademark.
  • The new form can be found here.
  • Facebook has also provided FAQs here.
  • The notification process applies only to registered trademarks. At present, it appears that a trademark owner can only submit a registration based on a United States registration, as that number is used for the account number. While state and foreign registrations and pending applications have not been specifically addressed, presumably any registration number in the field of the form will suffice. But there must be an official registration number. Common law claims are not covered. A trademark owner must also complete a separate form for each trademark, which could prove to be a significant undertaking for a company that has a significant portfolio of trademarks. And what if other social networking sites adopt similar provisions?
  • Facebook is limiting the June 13 URL registration to individual users who already had a user profile page prior to the June 9th announcement and to Facebook Pages (these are the Facebook pages owned by businesses, public figures, brands and artists) that were live prior to May 31, 2009 that had at least 1,000 fans at that time. If your Facebook account does not meet these requirements, you have to wait until June 28th to register a personalized URL using a trademark or brand name.
  • Facebook also has a procedure and a form for notifying Facebook of alleged infringements of a non-copyright nature such as trademark infringement or rights of publicity. Presumably, this form can be used in lieu of the new form but will apply only after an infringement has occurred. This form is available at here.
  • Note that copyright infringement allegations are directed to a separate Digital Millennium Copyright Act form for users to complete.
  • Facebook users can sign up for only one username for their Facebook page and profile. Once selected, the username cannot be changed or transferred to third parties. If a user cancels an account, the associated URL will not be available as a new Facebook URL. Users will also not be permitted to register generic terms as usernames. Facebook reserves the right to remove or reclaim a username at any time and for any reason. Facebook hopes these restrictions will help to prevent the trafficking in usernames and leaves a remedy open even where a trademark owner has failed to record its claim with the new form.

The $64,000 Question

If you are a trademark owner, should you record your trademark claim through use of the new form or wait to assert claims as alleged infringements occur? This is not an easy question to answer.

By failing to record its claim, a trademark owner does not waive any rights to its intellectual property otherwise provided by law. Failing to record a claim simply means that a trademark owner may have to enforce its intellectual property rights after an infringement has occurred as opposed to preventing it prior to use.

However, it is unclear whether using the new form to notify Facebook of IP rights subjects the trademark owner to the Facebook general terms of use (referred to by Facebook as the “Statement of Rights and Responsibilities”) should the trademark owner have any issues with Facebook regarding to the processing and enforcement of its claim to a trademark.

For example, the Facebook terms of use provide that venue for any claims or disputes against Facebook are vested exclusively in the courts in Santa Clara County, California. Absent consent to such venue, a trademark owner could proceed against Facebook in virtually any jurisdiction in the United States, including the trademark owner’s home state. Whether that is an advantage or not is debatable, but it is an unresolved issue. Other provisions in Facebook's terms of use may also be problematic for some trademark owners.

Before deciding to undertake notifying Facebook of IP rights, however, a trademark owner should also consider the likelihood of someone hijacking its marks. Moreover, while the initial notification (and even later registration of a personalized URL) is free, it remains unclear whether Facebook will seek to monetize the offering in the future.

On the other hand, if a brand already has a Facebook Page (or knows that it will soon create one), then it is already (or will be) subject to the Facebook terms of use. Under such circumstances, notifying Facebook of IP rights through the new form may be the easiest means of avoiding a needless intellectual property battle that will most certainly cost more than the time spent completing a form.

The Evolution of Social Media

Facebook is adding another dimension to social networking -- allowing personalization of pages while seeking to develop mechanisms to deal with brands and brand owners. But Facebook users interact with brands as well as people. The personalized URL launch is another example of the collision of social media interaction and intellectual property protection. While Facebook’s latest offering may be the next evolutionary step forward, it may also be a passing fad. Time will tell. But one thing is certain:

If you are a brand owner with trademark registrations, you need to consider all of the issues before blindly jumping on anything that appears simple and easy but may be more costly than first meets the eye.
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Posted on December 2, 2008 by John L. Hines, Jr.

Move Over Dot Coms - Get Ready to Dot Your Brand!

The Internet as we know it is changing dramatically. Instead of using domain names ending in “.com”—the most popular of the “top level domains” or “TLDs”—organizations located anywhere in the world may soon be able to purchase a TLD that corresponds to just about any word or phrase, including an organization’s name or brand.

What Will All of This Mean to Your Business?

Consider these examples:

  • A financial services trade association might try to buy the domain “ ?? .bank” with the idea of servicing a financial community and selling second-level domains (the name to the left of the “dot”) to eligible financial institutions. A financial services company may then decide to purchase and do business from “firstnational.bank”.
  • On the other hand, First National might simply buy the TLD domain corresponding to its brand:  “.firstnational”. John Smith, a trust officer, might then be located at jsmith@trusts.firstnational; Susan Jones, mortgage banker, might be located at sjones@mortgage.firstnational, and so on.
  • A consumer goods company might consider a TLD corresponding to its brand as an opportunity to create customer confidence in the shopping experience—a kind of web authentication that distinguishes the company’s site from the many other sites and general “noise” and “static” on the web. Thus, a powerful retail clothing brand might buy the corresponding domain—and organize second-level domains according to categories such as “menswear,” “shoes,” “coats,” etc.
  • On the other hand, a company might use its valuable brand in the form of a TLD to reward its valued suppliers with the opportunity to use the TLD brand extension with the second-level domain. A global fast food chain (call it “goodchicken”) might allow its approved contractors to use “supplier.goodchicken”.

Given the hierarchical structure of the domain name system generally, there are a variety of ways in which the new TLDs might facilitate unique business/organizational objectives, while potentially enhancing the customer experience and increasing brand loyalty and awareness.

Currently, the domain name system is limited to 21 “generic” TLDs (.com, .org, .net, .info, .biz, etc.) and about 240 “country code” domains (e.g., .us, .uk, .fr, etc.). According to Paul Twomey, President and CEO of the International Corporation for Assigned Names and Numbers (“ICANN”)—the international not-for-profit organization responsible for coordinating the Internet addressing system—the expansion of the generic top-level domain space is “driven by the demand for more innovation, choice and change to the Internet’s addressing system…[and] has the potential to be one of the biggest influences on the future of the Internet.” Others disagree about the potential impact—at least as the initiative applies to existing businesses—and see little reason to spend the money for another top level domain other than, perhaps, very reluctantly as a defensive measure to keep others out of their space. Some in this camp resent the introduction of the new TLDs as creating complexities and costs that far outweigh any benefits.

Click here to read the full alert.

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