28
Sep/16

The ‘BACK’ in the .FEEDBACK TLD Refers To The Trademark Owner


TLS is the registry behind the .FEEDBACK top level domain.

The CEO of TS has stated that .FEEDBACK is UDRP-proof, because, as I understand the claim, criticism is a good faith use under the second prong of the UDRP.

The CEO backed up that claim by promising that TLS will pay up to $5k in lawyers fees to defend against UDRPs.

Additionally, the CEO of TLS had previously stated:

“No trademark infringement will occur though, the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.”

Two observations on the trademark infringement point. TLS itself registered FOX.FEEDBACK as a demonstration. There is a disclaimer in mousetype. (1) If you Google ‘Fox feedback’ as a search term then the first hit looks like this:

FOX feedback
www.fox.feedback/
The Fox Broadcasting Company, is an American commercial broadcast television network that is owned by the Fox Entertainment Group division of 21st Century …

So people searching on Google could think that this is official.

(2) Also, the six most recent reviews, as of today, are all addressed directly to Fox (as in, “Geraldo Rivera is a cancer on your show”).

So the users erroneously think that Fox maintains the site.

As for being UDRP-proof:

A recent UDRP decision, written by friend of the blog, Warwick Rothnie, granted a complaint bought by DeBeers, which established that DEBEERS.FEEDBACK had been registered in bad faith. The website appeared to have had no original content, but had copied existing reviews from Yelp after receiving a demand letter from DeBeers.

The CEO of TLS has now tempered his ‘UDRP-proof’ remark, indicating that the use of a proxy service appears to have been a material fact in the result.

One thought occurs: .FEEDBACK is semantically different from, for example, .SUCKS or .REVIEWS or .CHAT in communicating a relationship to a source, in that the .SUCKS element in MICROSOFT.SUCKS would appear to suggest the opposite of origin (why would Microsoft sponsor such a site?) and .REVIEWS and .CHAT would be, for the most part, neutral in that regard.

In contrast, however, generally speaking, because you communicate feedback to the source, there is a greater likelihood that a .FEEDBACK TLD will be associated with the trademark owner. I think that’s what the ‘back’ in ‘feedback’ means.

This TLD can be used lawfully in many, if not most instances, especially if the unofficial nature of the site is PROMINENT SO THAT YOU CAN’T MISS IT.

But the .FEEDBACK TLD is not UDRP-proof and not trademark infringement-proof.



2
May/09

Text of Complaint in Android Data v Google Android


Plaintiff filed for ANDROID DATA and registered it in 2002. Google filed for ANDROID covering software and hardware. I’m assuming it filed that broadly for Paris Convention reasons. It later narrwed its identification to cover more closely the mobile communications operating system that it distributes under the ANDORID mark.
Plaintiff’s prior reg for ANDROID DATA covering ecommerce software was cited against Google. Evidence suggested that plaintiff was no longer using the mark and Google choose to wait it out as Plaintiff’s registration was in the Section 8 grace period without having filed (a Section 8 affidavit of continued use must be filed by the end of the sixth year of registration followed by a six month grace period).
However, alas, plaintiff has reappeared and filed a Section 8 (note – no Section 15) on the last day of the grace period, April 20, and eight days later sued Google and 47 other corporations that are using the ANDROID open source system.
Practice pointer: In attempting to overcome the citation, Google argued that prior registrant was dissolved. As the examining attorney correctly noted, the PTO will not remove a 2(D) citation on that basis if the Section 8 period has not expired (it will suspend the application if the period has lapsed but the registration has not yet been cancelled).
A common strategy in a situation where the prior registrant has presumably abandoned its mark but is not close to cancellation, is for applicant to file a petition to cancel, in the hopes that the dissolved prior registrant will default. The filing of a petition ‘cuts off’ the ability of the registrant’s ‘resumed use to cure the defect.’ In other words, if the prior registrant wishes to maintain its registration (if for no other reason than to sell out to the junior user), it can’t simply rush to resume use – it will likely have to prove that it hasn’t previously abandoned the mark. You may want to go to the Wayback Machine and check out android-data.com.
On the other hand. Google, being Google, attracts trouble. It may have chosen to wait out prior registrant’s Section 8 grace period without petitioning to cancel in the hopes of letting sleeping dissolved dogs lie.
Bonus points: Here is the Android SDK license. The reps and warranties and all that begin at para. 10.
Complaint Google Android



21
Mar/07

Zombie Brands


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Slate: Attack Of the Zombie Brands I
Attack of the Zombie Brands II
Finnegan Henderson: US Courts in Quandary Over “Abandoned” Trademarks: Is an Ex-Trademark Protected If It Remains Known and Loved By Consumers?”