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It’s Kickoff Time! Protecting Your Trademarks in the New Generic Top-Level Domain Names


Product Code - LGN193
Speaker(s): Keith A. Barritt, Fish & Richardson P.C.; Jerre B. Swann, Jr., Fish & Richardson P.C.; Scott Gamel, Thomson Reuters CompuMark
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Several years ago the Internet Corporation for Assigned Names and Numbers (ICANN), the entity that manages the Internet domain name system, began the process of greatly expanding the “top level” domain space to co-exist with the familiar .com, .net and .org extensions. Applications for new extensions were accepted in 2012, and more than 1900 applications were filed for more than 1400 new extensions. Several of those extensions, including .app and .web, had multiple applicants.

Trademark owners have an opportunity to obtain priority “Sunrise” domain names based on their existing registered trademarks, but they must take certain steps in order to be eligible. At the same time, the expansion of the domain name space greatly increases the challenges of protecting these trademarks on the Internet. Rather than worrying about cyber squatting only in the .com, .net and .org domains, brand owners are now facing over 1000 new extensions in which bad actors can obtain domain names that mimic a trademark and cause all kinds of headaches for a legitimate trademark owner.

Educational Objectives:

• Understand what the new gTLD program is and what it means to existing businesses.
• Learn how to obtain priority Sunrise domain name registrations.
• Discover steps to take to protect trademarks.
• Find out how to best monitor for potential abuse.

Who would benefit most from attending?

Intellectual property practitioners; corporate counsel and business owners interested in protecting their trademarks online; I.P. personnel involved in the management of domain names; and online marketing professionals.

Program Level: Intermediate

Keith A. Barritt, Fish & Richardson P.C.; Jerre B. Swann, Jr., Fish & Richardson P.C.; Scott Gamel, Thomson Reuters CompuMark

Keith A. Barritt, Fish & Richardson P.C.
Keith Barritt is a Principal with Fish & Richardson, where he specializes in all aspects of trademark law and domain name issues. He has served several terms as a member of the Internet Committee of the International Trademark Association, including as Chairman of the Who is committee. He is currently on the INTA new gTLD subcommittee and was also a member of the Implementation Assistance Group for the Trademark Clearinghouse.

Mr. Barritt has obtained numerous federal trademark registrations, overcoming PTO initial rejections, for various marks applied to a wide range of goods and services. He has successfully petitioned the PTO to cancel existing registrations to allow issuance of registrations for clients' trademark applications and successfully opposed applications for marks confusingly similar to clients' marks. Mr. Barritt has also written and responded to numerous cease and desist letters regarding alleged trademark infringement. Negotiated and drafted numerous license agreements.

Mr. Barritt earned a J.D. from the University of Virginia and a B.A., cum laude, also from the University of Virginia. He is admitted to practice in Virginia and the District of Columbia.

Jerre B. Swann, Jr., Fish & Richardson P.C.
Jerre Swann’s practice includes all aspects of trademark law, including global portfolio prosecution and counseling, enforcement, and litigation. He has extensive experience handling opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) and has appeared in state and federal court on trademark and copyright infringement actions.

Mr. Swann earned a J.D. from the University of Georgia, where he was Editor-in-Chief of the Journal of Intellectual Property Law; an M.B.A. from the University of Georgia; and a B.S., cum laude, from Presbyterian College. He is admitted to practice in Georgia.

Scott Gamel, Thomson Reuters CompuMark
Scott Gamel is Senior Global Product Manager at Thomson Reuters CompuMark. He manages Thomson Reuters’ global portfolio of trademark watching information services and web-based solutions within the company’s Intellectual Property Solutions division. Mr. Gamel creates and executes product road maps and strategy, leveraging market and financial analysis, product development, packaging, pricing, and product line extensions. He engages and leads Sales, Marketing, Finance, Operations and IT executives and stakeholders in North America and EMEA to deliver portfolio growth.

Mr. Gamel earned an M.B.A. with high honors from Boston University School of Management and a B.A. in Economics from the University of California, Los Angeles. Before joining Thomson Reuters, Mr. Gamel worked for Kronos and Automatic Data Processing in product management and operations capacities.

This program’s CLE-credit eligibility varies by state. Bloomberg BNA is an accredited provider in the states of New York*, California, Pennsylvania, Texas and Virginia, and most other jurisdictions grant CLE credit on a per-program basis. At this time, Bloomberg BNA does not apply directly to the states of Florida, Rhode Island, Montana and Hawaii although credit is usually available for attorneys who wish to apply individually. Additionally, the following states currently do not grant credit for Bloomberg BNA OnDemand programming: Arkansas, Ohio, Nebraska, and Delaware. All requests are subject to approval once the live webinar has taken place or the customer has viewed the OnDemand version. Please contact the Bloomberg BNA accreditations desk if you have specific questions that have not been addressed.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the CLE Accreditation Coordinator.

Hardship Policy
For information regarding Bloomberg BNA’s Hardship Policy, please visit the Continuing Education Information page.

Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.

*Bloomberg BNA is an accredited provider in New York for experienced attorneys only.