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Duane Morris Launches ICANN Trademark Clearinghouse Legal Services

Wednesday, April 24, 2013

In a move to address client needs, international law firm Duane Morris LLP is now offering counseling and filing services to trademark owners seeking to navigate through the launch of more than 1,900 new generic top-level domains (gTLDs). A key element is registration with the new Trademark Clearinghouse, a centralized global database created by the Internet Corporation for Assigned Names and Numbers (ICANN). The firm, a registered Trademark Agent with the Clearinghouse, is one of a handful of law firms with offices in the United States that can register trademarks with the Clearinghouse on behalf of its clients. The new system, which began operating on March 26, allows brand owners to submit their trademark data to ICANN prior to and during the launch of new gTLDs.

“We expect to use this new service and the registry to proactively help protect clients from trademark infringement, cyber abuse and spam proliferation,” said Duane Morris partner Laurie van Löben Sels, who is spearheading the effort with other firm trademark lawyers.

Under ICANN’s new gTLD program, an expanding number of new domain extensions—e.g., .google, .bank or .fashion—will join existing top-level domains, including .com, .org and .biz. The Trademark Clearinghouse offers two services in conjunction with the new system. First, its sunrise service allows trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally made available to the public. Second, the trademark claims service offers notifications—mandated by ICANN for all new gTLDs—to warn both domain name registrants and trademark holders of possible infringement.

Four types of trademarks are eligible for entry into the database: nationally or regionally registered word marks from all jurisdictions; word marks that have been validated through a court of law or other judicial proceeding; those protected by a statute or treaty in effect at the time of submission; and other marks that constitute intellectual property, by arrangement with a registry.

Laurie Hall van Löben Sels, assisted by law clerk Daphne Minckler, both in San Francisco, led the firm’s effort to establish the new service offering, which is currently available to clients. She is supported by the 50 members of the Duane Morris Trademarks, Copyrights, Trade Secrets and Unfair Competition practice group.

Burbank, Calif.-based client Make-Up Designory (MUD), which produces its own line of professional make-up products and trains students from around the world at its schools in Los Angeles and New York for work in fashion, film, theater and television, has engaged Duane Morris to submit its trademark data to the Clearinghouse. Duane Morris attorney Michelle Hon Donovan in San Diego will work closely with MUD to further protect its trademark portfolio.

“The value and importance of protecting the Make-Up Designory and MUD brands cannot be overstated,” said Tate Holland, president and CEO of MUD. “We’re pleased to work with Michelle and Duane Morris to protect our IP rights through the Clearinghouse, and are hopeful that ICANN’s efforts will provide solutions to several vexing online issues for trademark owners in the years to come.”

Lawyers in Duane Morris’ trademark practice assist clients in establishing, enforcing and challenging trademark rights, both in the United States and abroad. They have litigated trademark claims in federal courts throughout the country, as well as before the Trademark Trial and Appeal Board and the International Trade Commission. They handle an array of trademark, trade dress and unfair competition disputes, including those concerning consumer product trademarks; business names; trademark dilution; trademark counterfeiting; false advertising; and clothing and accessory designs and other forms of trade dress. Duane Morris attorneys have recovered thousands of domain names from cybersquatters and have counseled clients on domain name strategies, domain name acquisition and the protection of IP rights on the Internet, including through international proceedings of ICANN and the World Intellectual Property Organization.

About Duane Morris

Duane Morris LLP, a global law firm with more than 700 attorneys in offices across the United States and around the world, is asked by a broad array of clients to provide innovative solutions to today’s legal and business challenges.

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