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Re:Marks on Copyright and Trademark

THE LAUNCH OF .SEX TLDS

As forecasted in a previous entry on this blog, on April 18, 2015, the Internet Corporation for Assigned Names and Numbers (“ICANN”) delegated a new adult entertainment generic top-level domain (“gTLD”) to the ICM Registry, “.SEX.” Now, brand owners who have registered their trademarks with the Trademark Clearinghouse (“TMCH”) will have the opportunity to block cyber-squatters from registering their trademarks on the “.SEX” gTLD during the “sunrise period” from September 1, 2015-October 1, 2015, for a registration fee of $200. The sunrise period is a priority registration phase which allows brand owners to be the first to register their domain names. During this sunrise period, only those entities and individuals who have registered trademarks with the TMCH will be able to register domain names on the new .SEX gTLD registry.

ICM Registry will also afford current .XXX registrants the opportunity to obtain identical domain name registrations .SEX gTLDs from October 5, 2015-October 30, 2015, also for a registration fee of $200.  For example, if a brand owns the domain name COMPANY.XXX, the brand would also be able to obtain registrations for COMPANY.SEX during this period.

On November 4, 2015, the .SEX gTLD registry will open to the general public.  As such, any individual or entity will be able to obtain domain name registrations for this gTLD on a first come, first serve basis.  The general registration fee will cost brand owners $125, however, ICM Registry will also be keeping a list of premium domain names that may be priced higher than the regular general registration fee.  Brand owners who wish to avoid the potential association of their brand with unsavory content should take advantage of either the sunrise period with the TMCH or, if eligible, the domain name matching program to secure their core marks on the .SEX registry

If a brand has not yet registered its trademarks with the TMCH, it is still possible to do so during the sunrise period for .SEX.  Registration of a brand’s trademarks with the TMCH provides brand owners priority in registration for not only the .SEX gTLD, but for all new gTLDs.

Over the coming years, this explosion of new gTLDs is only expected to continue to grow.  As such, brands seeking to maintain control over their online identity should maximize use of the available tools to protect their brand in the ever-changing landscape that is the Internet.

For questions about new gTLDs or to register your brand with the Trademark Clearinghouse, please contact Ryan Compton (ryan.compton@dlapiper.com), David Kramer (david.kramer@dlapiper.com), or  James Stewart (james.stewart@dlapiper.com).

INTEGRATING TECHNOLOGY INTO FASHION STORES BEYOND THE BRICKS AND MORTAR

By Ann Ford and Naomi Abraham (Washington, DC)

Fashion retailers are integrating cutting-edge technology into their bricks and mortar locations to create a branded and effortless shopping experience to consumers. There are numerous legal issues that brands should consider before embracing such technology. These issues include consumer data privacy and the rights of publicity. Continue Reading

THE INTERNET OF THINGS WILL ROCK THE EUROPEAN RETAIL SECTOR

By Giulio Coraggio (Milan)

According to an SAP report, The Internet of Things (IoT) will generate US$329 billion of revenue in the retail sector by 2018. But such massive growth comes along with legal issues concerning privacy and cybersecurity, as well as product liability. Continue Reading

KEY CONSIDERATIONS FOR NEGOTIATING ELECTRONIC POINT OF SALE SOLUTION AGREEMENTS

By Amanda Pilkington (Sheffield)

An electronic point of sale (EPOS) solution provides direct interface with the end consumer, processing the payment made at the cash register, and it therefore is of critical importance to a retailer. This article examines some of the key legal issues pertinent to EPOS solution agreements. Continue Reading

FEDERAL CIRCUIT VACATES TTAB REGISTRATION REFUSAL: WHERE’S THE LOVE (AND THE PEACE) IN THE TTAB’S ANALYSIS?

By Tamar Duvdevani and Gina Durham

Love and Peace apparently abound in the restaurant industry (at least when it comes to establishment names using the two words in combination), but the Trademark Trial and Appeal Board had neither love nor peace for Juice Generation, Inc. (“JG”) when it refused registration of its trademark, PEACE LOVE AND JUICE, in light of pre-existing registrations for PEACE AND LOVE in the same class held by GS Enterprises LLC (“GS”).  According to the Board, the marks were likely to create consumer confusion pursuant to In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).  However, on July 20, 2015, the Federal Circuit vacated and remanded TTAB’s refusal to register.  Continue Reading

DLA PIPER ATTENDS THE MCCA 2015 AWARDS

The Minority Corporate Counsel Association (“MCCA”) held its 2015 Diversity Gala on June 30, 2015 at the John F. Kennedy Center for the Performing Arts in Washington, DC.  The MCCA is an association committed to diversity and inclusion in the legal profession.  The annual Diversity Gala recognizes the companies, law firms, and individuals that champion diversity practices, whether in recruitment and retention, LGBT initiatives, or mentoring programs.

Traditionally, the MCCA Diversity Gala is an opportunity to recognize the leaders in the legal profession.  This year’s awards and honorees were as follows:

•           Lifetime Achievement Award: The Honorable Deval L. Patrick

•           Employer of Choice Award Recipients: New York Life Insurance Company, Fannie Mae, Darden Restaurants, BMO Financial Group, and Southern California Edison Company

DLA Piper was a proud sponsor of the event, and several diverse attorneys of the firm were in attendance.

Once again, DLA Piper would like to congratulate the honorees of the MCCA Diversity Gala!

AUSTRALIA: THE END OF THE PIRATE BAY AND VPNS IN AUSTRALIA? NEW CENSORSHIP LAWS PASSED TO BLOCK PIRACY WEBSITES

By Matthew Evans

The Australian Government has introduced new laws to block websites at an internet service provider (ISP) level if they have the primary purposes of infringing or facilitating the infringement of copyright. On June 22 the Copyright Amendment (Online Infringement) Bill 2015 was passed in parliament, amending the Copyright Act to introduce the new provisions.

 

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SPAIN: TV MARKET'S HEAT BEFORE THE SUMMER

By Gonzalo Santos

After some turmoil last year regarding the granting of television channel licenses (which resulted in the repeal of nine of them by a decision of the Spanish Supreme Court), the Spanish Government recently issued a new call for tender for six of these licenses. Three of the television channel licenses are for high definition digital television channels, whilst the other three are for standard definition digital television channels. Each applicant is allowed to opt for a maximum of two licenses, one of each type (high and standard definition).

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