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Professor Lisa Ramsey Leads "Hot Topics" Presentation at Cal. Bar Annual Meeting

On Saturday, September 17th, Professor Lisa Ramsey presented, “Hot Topics in Trademark Law for Non-IP attorneys,” at the California State Bar’s Annual Meeting in Long Beach, Calif. She discussed three topics concerning today’s trademark holders: brandjacking, the effect of new generic top-level domains (gTLDs) on trademark, and the social implications of the gTLD “.xxx.”

Professor Ramsey’s presentation focused on brandjacking, the unauthorized use of trademarks online in social networks. For markholders, social networking technology has developed so fast that existing policies and definitions are inadequate to protect trademarks. In her article, “Brandjacking on Social Networks: Trademark Infringement by Impersonation of Markholders,” 58 Buffalo Law Review 851 (2010), Ramsey proposes changes in infringement law to better address the situation.

Secondly, Ramsey explained the new policy allowing anyone to apply to become a registrar of a gTLD consisting of any word or phrase, including trademarks. Starting January 2012, brands must decide whether they want to apply to register their mark or other industry-specific words as a new gTLD (think .cocacola or .cola) and prevent third parties from registering these terms. Trademark disputes may increase under the new system if third parties register second level domains containing the marks of others without authorization (for example, if a competitor of Coca Cola registers cocacola.cola).

Professor Ramsey concluded her session with a look at the controversial new gTLD .xxx. There is a limited window (September 7 – October 28, 2011) during which markholders can block registration of their trademarks with the .xxx domain or, if they are in the adult entertainment industry, register their mark. Ramsey recommends companies and institutions balance the cost of future trademark litigation against the price of controlling these new gTLDs.

Learn more about brandjacking and protecting trademarks in her recently published law journal articles: “Brandjacking on Social Networks: Trademark Infringement by Impersonation of Markholders,” 58 Buffalo Law Review 851 (2010) and "Free Speech and International Obligations to Protect Trademarks," 35 Yale Journal of International Law 405 (2010).

About Lisa Ramsey

USD School of Law Professor Lisa Ramsey teaches and writes in the areas of intellectual property and international intellectual property. Before joining the faculty in 2004, she was an intellectual property litigation associate for four years at Gray Cary Ware & Freidenrich (now DLA Piper) in San Diego. She graduated Order of the Coif from the University of California, Los Angeles School of Law and was a judicial law clerk for Judge Rebecca Beach Smith of the United States District Court in the Eastern District of Virginia. Professor Ramsey’s current scholarship and research focuses on the potential conflict between trademark and free speech rights in national and international laws.

About the University of San Diego School of Law

The University of San Diego School of Law is a center of academic excellence focused on preparing its students for legal practice in the new century. One of the most selective law schools in the country, the School of Law’s nationally recognized faculty create a demanding, yet welcoming environment that emphasizes individualized education. USD law school graduates go on to practice law throughout the country and abroad, forming an influential network of alumni. The USD School of Law is one of only 81 law schools in the country to have a chapter of the Order of the Coif, the most distinguished rank of American law schools. The school is accredited by the American Bar Association and is a member of the Association of American Law Schools. Founded in 1954, the law school is part of the University of San Diego, a private, nonprofit, independent, Roman Catholic university chartered in 1949. Visit the law school’s website at law.sandiego.edu for more information.