Adrienne J. Kosak

Works with clients to implement effective intellectual property management and enforcement strategies. Assists clients with trademark portfolio management including clearance, prosecution, maintenance, and counseling. Represents clients in all phases of intellectual property litigation, from pre-suit investigation through appeal. Argues motions and trial briefing before federal district courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Assists clients in recovering stolen domain names and curtailing cybersquatting through various means including the Anti-cybersquatting Consumer Protection Act and Uniform Domain-Name Dispute-Resolution Policy.

Cybersquatting remains a major threat to trademark owners, especially those with strong brand recognition, as bad actors use fraudulent domain names to mislead consumers and damage brand reputations. While the UDRP (Uniform Domain-Name Dispute-Resolution Policy) offers a streamlined process to recover individual domain names, it becomes inefficient and costly when dealing with large numbers of cybersquatted domains due to strict rules about proving common ownership. As an alternative, the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) offers more flexibility, particularly in in rem actions (lawsuits against the domain name itself) in the Eastern District of Virginia, where many domain registries are based. Courts there have recently shown a willingness to allow multi-domain actions even when the domains are not clearly linked, using Rule 21 of Civil Procedure to overcome procedural barriers. This evolving case law makes the ACPA a powerful tool for brand owners facing widespread cybersquatting, as long as actions are well-managed and not overly broad.

Statutes of limitations are potentially applicable in cybersquatting claims under the ACPA, but the times, places, and circumstances under which they would bar a claim appear quite rare. This is not to say that a plaintiff can indefinitely delay bringing an ACPA claim—the doctrine of laches is very much in play, as the Southern Grouts & Mortars case demonstrates. However, a defendant would typically face an uphill battle in convincing a court that an ACPA claim is statutorily barred.

The Fourth Circuit’s decision yesterday in The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd., No. 21-1823, F.4th (4th Cir. Jan. 24, 2023), provides important clarification on the application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (ACPA)—with the Fourth Circuit joining the majority of federal circuits in ruling that “re-registrations” of domain names are subject to the ACPA. The decision provides guidance on many elements of a cybersquatting claim, but two elements stand out as particularly consequential: (1) whether the relevant “registration” of a domain, for the purpose of establishing registration in bad faith, is only the initial domain registration or can also include subsequent re-registrations; and (2) the timing of assessing the propriety of in rem jurisdiction against a domain (as opposed to in personam jurisdiction against the domain’s registrant). With the Fourth Circuit’s recent decision.

The Federal Circuit’s recent rulings in Hoffmann-La Roche Inc. v. Apotex Inc., No. 2013-1128 (April 11, 2014) and Sanofi-Aventis Deutschland Gmbh v. Glenmark Pharms. Inc., No. 2012-1489 (April 21, 2014) highlight a challenge for practitioners addressing claims of invalidity based on the theory that a combination of prior art would be obvious to try: While the obvious-to-try analysis takes place at the time of invention, secondary considerations of nonobviousness may be relevant no matter when they arise.