Generic.com 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. Booking.com B.V. that a generic term paired with an internet designation such as “.com” (called a “generic.com” term by the Court) may be eligible for federal trademark registration.  When will a generic.com term be eligible for registration?  According to the Court, one key consideration is whether consumers associate the generic.com term with the source of the goods or services. A generic term—the name of the good or service itself—is not eligible for trademark protection because it cannot distinguish one company’s   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

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Someone Copied My Company’s Website Without Permission — What Can I Do About It?

You encounter a website that looks very similar to your company’s website. The similarities make clear that your website was copied.  Even worse, it was copied by a competitor.  Please see this article that discusses the remedies you may have under intellectual property laws.

Posted in Copyright Litigation, Internet and Domain Name Litigation, Patent Litigation, Trademark Litigation

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Split Ninth Circuit Panel Rejuvenates Doctrine of Initial Interest Confusion

Imagine you are driving to Flagstaff for the weekend and, as you approach Camp Verde, you really could go for a McDonald’s hamburger.  You see a McDonald’s sign from the highway, take the exit, and learn that the sign actually directs you to a Burger King.  “Oh well,” you think, “I guess I’ll take Burger King instead.”  You knew you weren’t getting McDonald’s when you made the purchase.  But were you the victim of trademark infringement nonetheless, since you thought you were getting McDonald’s when you took the exit, and wouldn’t have bought Burger King absent that initial confusion? Or   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

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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 considered the privacy services’ primary purpose. In Petroliam Nasional Berhad v. GoDaddy.com, Inc., the Ninth Circuit nevertheless refused to recognize a “contributory cybersquatting” liability theory under the Anticybersquatting Consumer Protection Act (“ACPA”).  The court instead affirmed the trial court’s summary judgment in favor of GoDaddy,   Read More »

Posted in Internet and Domain Name Litigation, IP and Technology Litigation, Trademark Litigation | Tagged ,

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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 the marketplace that is quickly verified among actual consumers, sometimes, evidence of consumer confusion remains elusive.  As trademark law “protects only against mistaken purchasing decisions and not against confusion generally,” trademark infringement suits without evidence of actual consumer confusion can be difficult to prosecute, even   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation

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