Skip to main content Terms May Be Eligible for Federal Trademark Protection

By Jessica D. Kemper and David G. Barker Today, the Supreme Court held in U.S. Patent & Trademark Office v. B.V. that a generic term paired with an internet designation such as “.com” (called a “” term by the Court) may be eligible for federal trademark registration.  When will a term be eligible […]

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Former Associate

Domain Name Private Registration Services Rejoice: Ninth Circuit Rejects Secondary ACPA Liability

Privacy services like GoDaddy’s DomainsByProxy service earn money by enabling domain name registrants to obscure their identities.  Any trademark owner whose mark has been used in an infringing domain name may confront substantial difficulty in ascertaining the infringer’s identity if the infringer has utilized such a privacy service.  Indeed, creating such difficulty might reasonably be […]

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Ninth Circuit Clarifies the Role of Non-Consumer Confusion in Rearden LLC v. Rearden Commerce, Inc.

Trademark owners sometimes learn of potential infringers indirectly, such as when people mistakenly call or email the trademark owner when attempting to contact the infringer.  Often, these confused calls come from the trademark owner’s own vendors or potential investors and strategic partners.  While this “non-consumer confusion” is frequently just the first exposure to confusion in […]

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ICANN Reveals Applied-For gTLD Strings

June 13 marked “Reveal Day” — the day on which the Internet Corporation for Assigned Names and Numbers (“ICANN”) released the list of applied-for generic top-level domains (“gTLD”).  These new gTLDs, which follow the “.” in a domain name, expand the number of available options beyond the familiar “.com,” “.org,”  “.edu,” and other existing gTLDs. […]

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Supreme Court Denies Certiorari in Expansive Ninth Circuit Personal Jurisdiction Case

Last summer, we reported that the Ninth Circuit expanded the “effects test” of personal jurisdiction against foreign copyright infringers in Mavrix Photo v. Brand Technologies.  As we noted then, the Mavrix Photo decision represented an expansion of the Ninth Circuit’s (seemingly ever-changing) willingness to permit its district courts to exercise jurisdiction over out-of-state defendants, holding […]

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Ninth Circuit Bolsters Internet Service Providers’ Defense Against Copyright Infringement Claims

The Ninth Circuit recently bolstered the legal defenses available to Internet service providers in copyright infringement claims based upon users loading copyrighted material on the service provider’s website, in UMG Recordings, Inc. v. Shelter Capital Partners LLC, No. 09-55902, decided on December 20, 2011.  The court rejected the plaintiff’s argument that an Internet service provider […]

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GoDaddy’s Forum Selection Clause Binds Domain Registrant In Third Party Lawsuit

A recent decision by the United States District Court for the District of Arizona held, albeit in a default context, that a domain registrar’s forum selection clause in its registration agreement bound the domain registrant not just in a dispute with the registrar, but with a third party.  In LimoStars, Inc. v. New Jersey Car […]

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