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Taking Trademarks to the Top Domain: Opportunities and risks in the new gTLD space – Recordings Now Available

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February 5, 2009

ICANN’s forthcoming roll-out of new generic top-level domains (gTLDs) generates both excitement and fear in the trademark community. Mark owners, who have heretofore competed in a world restricted to .com, .biz, and .org, are enthusiastic about the seemingly limitless opportunities for brand recognition and online security in a domain of their own. At the same time, however, their enthusiasm is tempered by fears that current practices for trademark enforcement will be inadequate to cover these new namespaces.

Pike & Fischer, in a Webinar co-sponsored by the ABA Section of Intellectual Property Law, has assembled top legal experts to help trademark owners weigh these opportunities and risks in advance of the new gTLD expansion.

Purchase our 90-minute interactive Webinar recording to learn:

What Was Covered:

Brand management in light of the domain expansion
Repercussions relevant to both large and small trademark holders
Whether a new era of cybersquatting is on the horizon
Factors to consider before applying for a gTLD
Requirements and restrictions for potential applicants and domain strings
Strategies to protect marks and web presence against competitors who enter the gTLD space
Venues to keep abreast of—and voice objections to—potentially infringing domains
The effect of the expansion on existing TLDs and search engine results
Procedures for dispute resolution
Applicability of Lanham Act and ACPA; Hidden costs

Who Attended:

Trademark owners
Domain name registrants
IP litigators
In-house counsel
Online media companies
E-commerce companies
Advertisers
Marketing affiliates
Online vendors
Consulting firms

About the Speakers:

MODERATOR: Anthony J. Biller, Member, Coats & Bennett PLLC - A member of one of the oldest IP boutiques in the Southeast, Mr. Biller leads the firm's litigation practice, representing and counseling his clients in patent, trademark, and copyright litigation. He also spends a significant amount of his practice advising and assisting clients with intellectual property management and licensing. In addition to conflict and IP asset management, he advises clients on licensing, franchising, and entertainment law issues. Mr. Biller is admitted to the practice of law in the State of North Carolina, before the United States District Courts for the Eastern, Middle and Western Districts of North Carolina, the United States Court of Claims, and before the Federal Courts of Appeal for the Federal, Fourth and Sixth Circuits, and the United States Supreme Court. He currently chairs the ABA's Intellectual Property Law committee on trademarks and the Internet, and was named to the North Carolina Business “Legal Elite” for Intellectual Property in 2008 and 2009.

J. Scott Evans, Senior Legal Director-Global Brand and Trademark, Yahoo! Inc. - Mr. Evans received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. J. Scott served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc. In November 1996, J. Scott joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law. In November 2007, J. Scott joined the legal team at Yahoo! Inc. where he serves as a Senior Legal Director – Global Brand and Trademark. J. Scott served on the five member drafting committee that assisted the staff at the Internet Corporation for Assigned Names and Number (ICANN) with the drafting of the Uniform Dispute Resolution Policy (UDRP) and the Rules of Procedure for the UDRP. J. Scott is an active member of the International Trademark Association, where he served as a member of the Board of Directors and the Executive Committee. J. Scott currently serves as a U. S. Legislation subcommittee. J. Scott frequently lectures on trademark and Internet policy issues as well as domain name dispute resolution.

Jeffrey J. Neuman, Vice President, Law & Policy, NeuStar, Inc. - Mr. Neuman has over 10 years of Internet, technology and telecommunication law and policy experience with domain expertise in ecommerce, e‐business, service and technology licensing, M&A, joint ventures, strategic alliances and reseller arrangements. He is responsible for all legal services and policy for NeuStar’s Internet, Registry and Advanced Services Lines of Business. In addition to leading the legal team for these organizations, he is responsible for the oversight of intellectual property law and policy matters, information technology licensing as well as legal issues (including litigation) related to employment and insurance matters for the company. Mr. Neuman is a frequent speaker on issues involving intellectual property, domain names, online dispute resolution and the introduction of new generic top‐level domain names. He previously served as Chairman of the gTLD Registries Constituency of ICANN and has participated in numerous task forces and working groups within ICANN’s Generic Names Supporting Organization. Before joining NeuStar, he served as Information Technology Associate at Greenberg Traurig, LLP/ Akin, Gump, Strauss, Hauer & Feld, LLP, and as an associate at the law firm of Arter & Hadden, LLP. Mr. Neuman holds a J.D. from The George Washington University Law School.

Tamara Reznik, Senior Corporate Counsel, Expedia, Inc. - Ms. Reznik is Senior Corporate Counsel at Expedia, Inc. where she oversees global trademark, domain name, and copyright matters and licensing work for all Expedia, Inc. companies, including Hotels.com, TripAdvisor and Hotwire. Ms. Reznik is actively involved with the International Trademark Association (INTA) and currently serves on the Registration Practice and DNS Administration Subcommittee of the Internet Committee. Ms. Reznik also served on ICANN's Reserved Names Working Group within the Generic Names Supporting Organization Council which made recommendations on how to handle a wide range of reserved name issues in connection with new TLDs. Ms. Reznik was previously an associate at Perkins Coie and received her undergraduate degree from Cornell University and holds a J.D. from the University of Michigan.

Kristina Rosette, Special Counsel, Covington & Burling, LLP - Ms. Rosette counsels a wide array of clients on a broad range of Internet, trademark, and intellectual property matters, with extensive expertise in domain name matters. She is the Intellectual Property Constituency (IPC) (North America) representative to the ICANN Generic Names Supporting Organization Council, which develops and recommends to the ICANN Board of Directors the substantive policies relating to the domain name system, including such matters as generic top level domains (gTLDs) and Whois. Ms. Rosette is deeply involved in ICANN policy development relating to Whois, domain tasting, and the introduction of new gTLDs. She negotiated the terms and passage of the recent GNSO Council motion that ended the policy development process on Whois and avoided radical change to it; wrote and implemented the IPC Supplemental Request for Information on Domain Tasting that provided trademark owners with the opportunity to articulate to ICANN the harms caused by domain tasting; drafted policy recommendations on the introduction of new gTLDs and to curb domain tasting; and chaired the ICANN Protecting the Rights of Others Working Group, which was charged with identifying and recommending “best practices” for the protection of trademark rights in the launch of new gTLDs. Ms. Rosette prepared comments on an ICANN Preliminary Task Force Report on Whois to which 12 firm clients became signatories.

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Taking Trademarks to the Top Domain: Opportunities and risks in the new gTLD space – Recordings Now Available Audio recording on CD-ROM -- $279
Internet Law & Regulation subscriber discount!