First published on July 19, 2013.
That’s one thing I learned at the New York Intellectual Property Law Association’s “Hot Topics in” all kinds of stuff CLE seminar last Wednesday, July 17th, from Marty Schwimmer.
I learned other hot topic stuff from other people, and I will write about them later. But endorsing the recency effect over the primacy effect, I will start with the talk by the Trademark Blogger. Marty’s PowerPoint is here.
One of the great things about Marty’s presentation was that, while fundamentally agreeing with all the snarky things I’ve had to say (here and right there in the room before he gave it) about whether domain names are worth caring about any more, he demonstrated why my conclusion — that they don’t matter any more — was trying to prove too much.
Prove too much by what? By the fact that search (read: Google) has rendered domain names so relatively unimportant. By the fact that the courts have finally caught up to the fact that the “initial interest confusion” doctrine, while initially interesting, was a turn onto the wrong exit. By the fact that the expansion of new gTLD’s, in light of what we’ve learned about how little the last round of new gTLD’s mattered in terms of trademark infringement or even search results, is if anything dilutive of the value of domain names.
Marty did a great job of addressing all these points, in his inimitable and commanding manner. The name of his talk was, “New gTLD’s Rollout — Practical Advice for Cost Effective Management” blah blah blah, the title being as long as the presentation, but less enjoyable. His practical advice: Tell your clients to register their registered marks with the Trademark Clearinghouse Sunrise Service, now, before the September deadline, or something-date (which is impossible to find on the website), and probably not to go nuts over the other gTLD business just now.
And yes, domain still do matter, not the way we thought they would, as Marty said, in 1994 (or 1998, when I was litigating about them), but the “dot-com presumption” is still meaningful.
Ah, and that was the other big takeaway from Marty’s talk for me, the trademark-registration skeptic — also something I knew, sure, but wasn’t really articulating clearly even to myself: Even if you’re really a dog, on the Internet trademark registrations matter a lot.
Why? Because you are eligible for the Sunrise Service if you’ve got one; you’re not if you don’t. You can go to Google, to eBay, to all kinds of major players to prevent misuse of your mark, on some level at least, if you’ve got a registration; without one, it’s take-a-number. Trademark registrations matter on the Internet, and that means that, like domain names — at least dot-com ones — they’ll keep mattering a lot.