Author: David Michaels

imi.com Domain Hijacking case updates 2019

Irving Materials, Inc. committed domain hijacking by filing a baseless UDRP complaint against imi.com in 2017. The UDRP froze the imi.com domain name and caused Jeffrey Black huge business losses. Irving has caused significant harm to Mr. Black and to his International Monetary Investments business formed in 2016. Upon Irving’s filing of its UDRP complaint […]

Trademark Estoppel

Does trademark estoppel apply to licensees? In general, yes, but there are exceptions to trademark estoppel. Courts and the Trademark Trial and Appeal Board (“TTAB”) have held that licensee estoppel does apply to trademark licenses. For example, in A & M Wings, Inc., v. Glenn Thompson, Cancellation No. 92064044 (T.T.A.B. 2019), the TTAB applied licensee […]

ACPA Cases 2019

A domain name owner can file a lawsuit under the ACPA to stop the effect of a UDRP order that transfer domain names to the person that filed a UDRP complaint. The ACPA complaint often leads to the settlements that cover your attorneys fees some statutory damages of up to $100,000 per domain name. ACPA […]

Are Pay Per Click Sites Legitimate?

Pay per click sites are legitimate under WIPO’s Overview 3.0. However, at least two ADR Forum decisions disagree and say that “Use of a domain name to redirect Internet users to a site featuring unrelated pay-per-click hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use.” WIPO and […]

Trademark Pro Design Search App

Trademark Pro became a design trademark search app at the 2018 Global Legal Hackathon. The team formed at the Toronto location of the Global Legal Hackathon at Denton’s law offices. Trademark Pro’s video entry for round two of the Global Legal Hackathon:   David Michaels, Brand Consultant T-shaped Professional: Has deep knowledge in trademarks with broad education and […]

Viking.com Domain Name Dispute – RDNH

The viking .com domain name dispute resulted in a finding of RDNH. Office Depot, the Respondent won the domain name dispute. Key points in the Viking .com Domain Name Dispute The Complainant’s rights, however, are not global nor exclusive and do not blot out the Respondent’s current rights to certain VIKING trademarks, … The Respondent […]

How to Avoid Domain Name Disputes

Most domain name disputes are avoidable. Statistically, just over half of the domain name disputes are justified, according to the transfer vs denied panelist decisions of fair minded panelists. Many domain name disputes are unavoidable because complainants are over reaching or just trying to hijack a domain name because they want it without paying for […]

Trademark Search Tools

A survey of trademark lawyers shows that their favorite trademark search tools are: uspto.gov/Trademark Search Manual/straightforward searches on TESS Reason: To save money Nuans Trademark Search Pro: A comprehensive Canadian trademark search showing images, goods and services, and owners. At $50 per search, it is very affordable. Turnaround time is usually under a couple of […]

What is a Trademark?

The 1946 Lanham Act defines a trademark under the term “trade-mark.” A trademark includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others. Today, a mark is considered a trademark in many jurisdictions if it […]

Combination surname trademarks

The analysis of a combination surname trademark requires two inquires. First, is the term added to the surname “merely descriptive” of the applicant’s goods and services? In re Hutchinson Technology, Inc., 852 F.2d 552 (Fed. Cir. 1988). Specifically, is “collection” merely descriptive of KEI’s goods and services? Second, did adding the additional term to the […]