Accepting Guest Blog Posts

I have accepted a position that will not allow me to write in 2016. However, I want to continue to provide information on cyber, intellectual property (IP), social media, security, privacy, and technology law and policy to you all.  So…. I am accepting  submissions from guest bloggers!

Please send me your best cyber, IP and tech law and policy posts. Many of this blog’s followers are entrepreneurs, technophiles, tech novices, bloggers, social media user and those intrigued by tech, so please cater your posts to that audience. Please send posts to thedigitalcounselor@gmail.com. I will notify you if your post is selected.

Thank you for your submission, in advance, and more importantly, THANK YOU FOR READING!

I hope the readers find previous posts and any information others are able to provide in my absence helpful! And I look forward to returning in 2017!!

Trademark Holders Beware of the Generic Curse

Trademarks are wonderful means for protecting your brand. You want your trademark to be pervasive and resonate in the minds of consumers. You want it to be apart of their everyday life! However, when a trademark becomes so common that it is used at the term for the item or service rather that the brand you run the risk of loosing your trademark because it is generic. Under the Trademark Act generic terms cannot be trademarks.  A generic term is a word that the relevant purchasing public understands primarily as the common name for a particular product or service.

What is kleenex?  If you said tissue, you’re incorrect it is actually a brand of tissue that has become so common it is often used as a generic term. Kleenex is lucky because the company fought and won to keep its trademark alive. However, there are a whole host of others that were not as lucky.  For example, escalator, originally a trademark of the Otis Elevator Company, or aspirin which is still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, but declared generic in the U.S.

Recently the word “skew-ball” also came under scrutiny. Full Circle United, LLC (Full Circle) claims the word “skee-ball” is the common name for the game of skee-ball, which has been an American boardwalk and arcade pastime for over a century.  Full Circle, which organizes skee-ball competitions across the country, was sued by SBI, Inc., a manufacturer of skee-ball machines, and owner of the federal trademark registration of “skee-ball,” for infringement of the term “skee-ball.” Full Circle countered by filing its own complaint alleging that SBI has no rights in the word “skee-ball” because, just like many other marks that have come and gone, such as yo-yo, trampoline, and pilates, skee-ball is generic. This case is still being decided.

This phenomenon is hard to control because you want your brand to be popular but some ways to prevent genericizing a brand are:

A sign in a supermarket using "Jell-O" generically - Image from Wikipedia
A sign in a supermarket using “Jell-O” generically – Image from Wikipedia
  • Use the proper name for the good or service in conjunction with the trademark or brand name. For example, you’ll notice that Kleenex’s brand now reads “Kleenex brand Tissue”
  • Let the world know you have a registered trademark by using the appropriate symbols. Use the letter R enclosed within a circle, ® for federally registered marks and for an unregistered mark, use TM.
  • DO NOT use your trademark as a noun. For example: Put on a BAND-AID – NO! Put on a BAND-AID brand bandage – YES!
  • DO NOT use trademark as a verb or plural. Go XEROX the document – NO! Make a copy with the XEROX copier – YES! I need two Kleenexes – NO! I need two Kleenex tissues. – YES!
  • Police your trademark. Correct others misuse of your trademark
  • Educate the public especially authorized users, distributors, and anyone else consumers will believe have authority or knowledge about the brand.

Be proactive about preventing your brand from becoming a generic term. Although this phenomenon is a symptom of your success you want to avoid loosing your trademark

New gTLDs as a Branding Tool for Entrepreneurs

The launch of new gTLDs (generic top-level domains) provide an amazing opportunity for entrepreneurs and small to medium businesses to further brand their business in their domain name. A gTLD is the part of you domain after the “.”.  Having fun with you website domain can help you stand out as you market yourself and establish your brand. Emphasize your company’s mission, expertise, experience, niche, etc through the top-level domain you use. Also if your company name or other domain you sought to register is taken on .com there are new and exciting options! Don’t miss out on companyname.rocks or company name.consulting.

You can register these new top-level domains just like you register a “.com” domain head to goDaddy, Namecheap, Name.com or your favorite registrar. This is something your should consider early in establishing your company. You don’t want to lose out on the perfect domain name.

This is an opportunity to accent your personal brand as well. As you establish your expertise and want to develop a website that showcases your skills you no longer are limited to firstnamelastname.com you can register firstnamelastname.esq, firstnamelastname.photography, or firstnamelastname.guru.  Grab your new domains as soon as they roll out!

Over 175 new domains have been released or delegated to date, with hundreds more on the horizon. You can view the available domains by visiting this page: http://newgtlds.icann.org/en/program-status/delegated-strings . This page lists the delegated domains, which means they are available for registration. This site will be updated as others are available.

Take advantage of this branding opportunity before others catch on!!
Examples of some new gTLDs that can make for a creative domain name:

.guru
.consulting
.cooking
.ventures
.photography
.active 
.expert 
.coach
.lifestyle
.shopping
.bar 
.pub
.events
.buzz
.solutions
.careers
.company
.management
.enterprises
.technology
.holdings
.rocks
 
Visit my older posts for more information on this launch: What do you know about the new top level domains?Will You Be Confused When The New Generic Top Level Domains (gTLDs) Launch?​; &​ Five things you should know as the new gTLDs launch.  And as always ask questions in the comments and share your successes and observations re: new gTLDs!​
 

Five things you should know as the new gTLDs launch

What is a gTLD? gTLD stands for generic top-level domain and is an Internet extension such as “.COM,” “.NET” or “.ORG.” Right now there are a little over two dozen gTLDs, but soon, there could be hundreds. The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the coordination of the global Internet’s systems of unique identifiers and, in particular, ensuring its stable and secure operation. According to ICANN the new gTLD program was developed to increase competition and choice in the domain name space. As the new gTLDs launch and threaten to change the Internet as we know it there are a lot of things you should know but here are five to start. For additional background information about new gTLDs, please visit some of my previous posts “What do you know about the new top level domains?” & “Will You Be Confused When The New Generic Top Level Domains (gTLDs) Launch?”

1. Be careful of services “guaranteeing” to get a domain name for you

Cyrus Namazi, Vice President of DNS Industry Engagement for ICANN, published a blog post today titled “Pre-Reserve a Domain Name, or Not? ICANN Answers the QuestionNamazi warns against services that “guarantee” they’ll get the domain name for you:
 
 
As responsible Registrars are advising, successful pre-registration of a domain cannot be guaranteed. ICANN seconds that advice, cautioning that registrants should be wary of anyone who claims to be able to guarantee a domain registration on a new gTLD. There are several situations that can impact the availability of a domain name and some domain names may never be available for purchase.”
 
 
Namazi points out that competition between registrars for a single domain, domains claimed in sunrise, reserved domains, premium domains, and name collision domains make it impossible to guarantee. He also notes that some TLDs may not even end up being delegated.

 

2. The first non-Latin character new gTLDs were delegated 

What does delegated mean? This means that the gTLDs or strings have successfully completed the new gTLD Program and has officially been selected as a new gTLD that will go live for use. This will be the first time non-Latin characters can be used in a TLD and not just in the second level domain. Click here for more information from ICANN. 

One is شبكة, the Arabic word for “web” or “network”, while another is 游戏, which means “game” in Chinese.The other two – онлайн and сайт – are both Russian words, meaning “online” and “website” respectively

3. First nine LATIN new gTLDs​ were delegated

The first nine new gTLDs delegated last week were:

  • .CAMERA
  • .CLOTHING
  • .EQUIPMENT
  • .GURU
  • .HOLDINGS
  • .LIGHTING
  • .SINGLES
  • .VENTURES
  • .VOYAGE

The “sunrise period” for registration of the first seven gTLDs is “.BIKE,” “.CLOTHING,” “.GURU,” “.HOLDINGS,” “.PLUMBING,” “.SINGLES,” “.VENTURES.” will begin November 26 and general availability to anyone will begin January 29, 2014.  Keep any eye out for new gTLDs as they are delegated. Consider whether you or your company wants to purchase a domain. And monitor the official launch of these new gTLDs starting in January. Monitor how your brand and ineffectual property are being used on this new gTLDs. To keep up with delegated strings click here.

4. The launch of new gTLDs multiplies the size of the Internet and presents increased security and intellectual property infringement risks.

  • Pay attention to the gTLD in the address bar. New gTLDs give malicious actors more platforms to attack the unsuspecting. Pay attention to the address you are trying to get to and make sure all parts of the address are correct.  Also if you search for a website make sure the site that comes up is the legitimate website.
  • Companies must monitor the use of their intellectual property on new gTLDs. Companies should currently have a plan in place to protect their IP investments through motoring, preemptive registrations, the Trademark Clearinghouse and other rights protection mechanisms provided by ICANN. Be proactive!

5. Launch of new gTLDs presents a number of opportunities to market your brand or yourself. This will present business and consumers with a new and unique user experience and online footprint. There will be a lot more room for customization online and opportunities for marketers to be creative with how to reach consumers. I am excited to see the innovative means of reaching the public that are birthed from the new gTLD launch.Please ask any questions you have about new gTLDs, protecting yourself, rights mechanisms, IP protection, security concerns etc. Start the discussion!

New Cause Marketing Standards

Susan G. Komen for the Cure® leaders joined with New York Attorney General  Eric T. Schneiderman to implement new charitable cause marketing standards for National Breast Cancer Awareness Month. “Cause marketing” campaigns are promotions where it is advertised that the purchase or use of the advertiser’s product will benefit a charity and usually involve fund-raising partnerships between charities and businesses that generate donations based on the purchase of a product or participation in a business partner’s cause marketing program. These best practices call for clear and conspicuous disclosure of any material terms before the consumer makes a purchase, including the name of the charity, the amount of the donation per purchase that will go to charity, the maximum donation (if applicable), whether any consumer action is required to trigger a donation, and the start and end dates of the promotion. This disclosure should be clear and obvious to consumers.

The best practices aim to increase the quality and consistency of disclosure to consumers, requiring participating companies to:

  • Clearly describe the promotion. Companies are encouraged to use a “donor information label,” including information about the name of the charity, the specific dollar amount per purchase that will go to charity, and any caps on the donation, among other things.
  • Allow consumers to easily determine the donation amount. Rather than generic phrases like “a portion of proceeds” will go to charity, companies should state a fixed dollar amount.
  • Be transparent about what is not apparent. If there are contractual limits, if charitable contributions will not be made in cash, or if a fixed amount has been promised to the charity regardless of the number of units sold, companies should disclose those details.
  • Ensure transparency in social media. Likewise, companies should disclose key terms in online marketing.
  • Tell the public how much was raised, clearly disclosing the amount online at the conclusion of each campaign.

The attorney general’s best practices make it clear that they apply not only to promotions conducted through traditional media, but also promotions conducted through social media such as a “like” or “follow” campaign where consumers trigger donations by liking the advertiser on Facebook or following the company on Twitter.

These practices should be considered in conjunction with laws governing cause campaigns. Such campaigns are regulated under the laws of various states, several of which require a company to register the promotion and file a bond and/or a written contract with the charity that contains mandated contractual terms. Transparency is the responsibility of all companies engaging in cause marketing.

The Attorney General’s Best Practices, as well as other guidance and tips for charities and consumers, are available at http://www.charitiesnys.com/cause_marketing.jsp?