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It’s the Internet, stupid!

New gTLDs, social media, keyword advertising… it is impossible to avoid the trademark issues raised by the Internet. James Nurton explores the latest developments.

As ICANN revealed on Friday night, the Internet is set for an unprecedented expansion with potentially 2,000 new generic top-level domains to be added to the existing 21 within the next few years. It is likely to be at least a month before we know which strings have been applied for, but in the meantime trademark owners need to put their strategies in place.

“The Internet is something that’s omnipresent in everyone’s life. For that reason it’s sexy. There are a lot of IP owners that don’t know it as well as they wish they did and private practitioners want to know it better to inform their clients,” says J. Scott Evans of Yahoo, who is moderating today’s industry breakout on cyberspace issues. “If you’re trademark counsel at a big retailer for instance, you’ve got a whole lot going on. It’s difficult to feel as if you’ve got 100% coverage on all the Internet issues.”

Eyes open

That’s particularly the case given the pace of developments with new gTLDs, one of three items on today’s agenda. After ICANN’s Board approved the new gTLD program in June last year, the application period opened in January and should have closed in April. However, it was suspended following a software glitch that enabled some users to see others’ file names. ICANN is expected to provide an update tomorrow on when the program will reopen, but has already revealed that the 839 registered applicants have applied to own and operate more than 2,000 domain strings.

It’s too late now to apply for a gTLD if you’re not already registered in the program, but that doesn’t mean trademark owners can afford to ignore it. On the contrary. In today’s session Brian J. Winterfeldt of Steptoe & Johnson will explain what measures are in place to help trademark owners deal with the expected cases of potential cybersquatting or other conflicts. The number of applications, which is higher than many predicted, has prompted concerns among IP lawyers. “A whole lot of people have only been paying attention with one eye until now,” says Evans. “Brian will remind them what they can do in these staged periods.”There remains a great deal of uncertainty about both the timing and the impact of the new gTLD program. It is likely that there will be litigation at some point, perhaps resulting from a dispute over a particular domain string or the outcome of an auction. If that happens, it could have an impact on the expected second round of gTLD applications. “It could be very far away,” says Evans.

Do you have a gTLD strategy?

The first part of your strategy should be to have a clear idea about why you did or did not apply. “Somebody in your field is going to do it. When your CEO picks up the paper, and sees that, they’re going to be asking questions. You don’t need to do it [apply], but you need to make sure the decision is made at the right level,” says Evans. Second, there is the question of how you respond to potentially thousands of new gTLD strings, and the threat they bring—something that today’s second speaker, Stacey King of Richemont, will address. “People are feeling overwhelmed and under-budgeted,” says Evans. That means brand owners are likely to have to develop more targeted and focused strategies than they have before: marketing people are going to have to get their head around the fact that they’re not going to be able to own every iteration of their mark in every domain. “Rather than going in with a scattergun, and trying to hit everything, you’re going to have be more laser-focused,” says Evans. Look for an INTA webinar in early summer on how to deal with potentially infringing new gTLD strings.

The third topic to be discussed today is somewhat different and something that is close to Evans’s heart: socially responsible social networking. The growth of online interaction, particularly among young people, has led to greater concerns about bullying online. While raising awareness about such issues may not seem to be a core part of the trademark attorney’s role, Evans says everyone in this area has a responsibility: “This is a plea to people to say: you’re more than just a trademark attorney. You’re someone who understands this stuff: are you explaining it to people? What are you doing to be a better citizen?” Ellen B. Shankman of Ellen Shankman & Associates will discuss these questions during the session.

Be smart and creative

With the constant emergence of new Internet-related issues, including online counterfeiting and keyword advertising (see box), there are often calls for new laws. But Evans disputes that: “Just because it’s the Internet doesn’t mean it’s a different ecosystem, with different laws. I think the laws that exist today are adequate to handle 90% of the issues arising on the Internet.” Brian Isaac of Smart & Biggar/Fetherstonhaugh agrees: “You always get these questions about how the laws are changing to meet the Internet. It’s kind of the other way around. There’s not necessarily that much need for amendment. The law is intended to be technology-neutral.” So grab your textbooks, get online, and start learning. As Evans says: “It’s a red herring to say we don’t have an adequate law. You’re just not a smart attorney. You need to be creative and you need to sit and think about something.”

Search engines: friends or foes?

One Internet topic that continues to provide employment for litigators and professors is keyword advertising online. Recent cases in jurisdictions including Australia, Europe and the United States have helped to clarify issues including both the liability of search engine providers such as Google and what constitutes infringement online.

A practical session tomorrow will examine the strategies that advertisers use in search engine advertising, and what trademark owners can do where they feel their marks are being infringed. Brian Isaac of Smart & Biggar/Fetherstonhaugh, who is moderating the panel, says the recent cases have been helpful in moving the debate on from brand owner-versus-search engine to looking at how you actually address a competitor’s use of a trademark: “It’s turning more towards the manner of use online as opposed to the old question of whether you could nail someone just for the fact that they bought the keyword. It’s not settled, but it’s coming back towards the more typical analysis you do in any trademark case.”

Tomorrow’s speakers Howard Hogan of Gibson Dunn & Crutcher and John Ramsey of Rosetta Stone will address issues such as how to prove confusion and damages, and how you can enforce your trademark rights, not just against search engine advertisements but also other uses online. They will also explore the “tricks of the trade” that marketers use to get to the top of the search lists, including by using others’ brands.

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