Kristina Rosette is of counsel in the Washington office whose practice focuses on domain name, Internet, and trademark matters. Ms. Rosette has unique expertise in domain name issues including drafting the ICANN policy recommendations for new gTLDs, developing and implementing trademark protections in new gTLDs, drafting and advising on nearly 100 new gTLD applications for firm clients, designing new gTLD objection and acquisition strategies, recovering hundreds of domain names from cybersquatters and other registrants, and constructing and executing offensive and defensive global domain name registration, Internet monitoring, and Internet enforcement strategies. In her trademark practice, Ms. Rosette advises clients on trademark selection, clearance, prosecution, registration, and enforcement matters in the United States and many foreign countries.
- Represented Intellectual Property Constituency on ICANN GNSO Council for five years. Achievements include drafted the policy recommendations that now guide the introduction of new gTLDs; negotiated the terms and passage of an important 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; and drafted policy recommendations to curb domain tasting.
- Spearheaded the creation of the ICANN Implementation Recommendation Team and was a member of that global 18-person team charged by the ICANN Board of Directors with designing and recommending trademark protections for the introduction of new gTLDs.
- Drafted and advised on nearly 100 new gTLD applications filed by two national sports leagues, one of the world’s largest technology companies, a leading supplier of outdoor clothing, the world’s largest online retailer, and the fastest growing major hotel company.
- Designing new gTLD objection and acquisition strategies for several firm clients.
- Represent Microsoft Corporation and NBA properties in domain name disputes before the National Arbitration Forum and the World Intellectual Property Organization.
- Represented Shoebuy.com in a domain name dispute before the World Intellectual Property Organization and secured a finding of reverse domain name hijacking against the Complainant.
Honors and Rankings
- Named by World Trademark Review as of the “Top 1000 World’s Leading Trademark Professionals” (2013); national ranking for new gTLDs.
- Recognized by Legal 500 US in their "IP Trademarks: Non-contentious - Full Coverage" category (2010-2014).
- Shortlisted for “IP Lawyer of the Year” (Intellectual Property Magazine 2011).
- Recipient of the 2008 Volunteer Service Award for the Advancement of Trademark Law, International Trademark Association.
- WORLDLeaders IP Awards, shortlisted in the worldwide category "Excellence in Domain Name Policy Implementation" (2008).
- Recognized as a leading lawyer by Legal 500 US in their " IP Trademarks: Non-contentious - Full coverage" category (2007-2008).
- Recipient of the 2007 Volunteer Service Award for the Advancement of the Association, International Trademark Association.
- Trademark counsel to Children’s Defense Fund.
Memberships and Affiliations
- International Trademark Association, Internet Committee, Internet Governance and Contracts Subcommittee (2014-present)
- ICANN Intellectual Property Constituency, President (November 2012-present)
- ICANN Intellectual Property Constituency, Vice President (November 2011-October 2012)
- Intellectual Property Constituency representative, ICANN GNSO Council (December 2006-October 2011).
- International Trademark Association, U.S. Legislation and Regulation Subcommittee (2012-2013)
- International Trademark Association, Internet Committee, Special Advisor (2010-2011)
- International Trademark Association, Internet Committee, Registration Practice and DNS Administration Subcommittee, Chair (2008-2009) and Member (2004-2007)
Publications and Speeches
- Ms. Rosette was quoted in Bloomberg BNA’s E-Commerce and Tech Law Blog article "Cyberlaw Predictions: Protecting Trademark Interests in the New Domains," (1/4/2013) on predictions about the directions cyberlaw policy might take in 2013.
- Ms. Rosette was quoted in Bloomberg BNA’s E-Commerce and Tech Law Blog article "Cyberlaw Predictions: International Pressure on Internet Governance," (1/7/2013) on predictions about the directions cyberlaw policy might take in 2013.
- Ms. Rosette is quoted in "New to the Internet: .xxx," Marketplace (September 2011), which discusses how new domain for adult-oriented websites is opening and why established organizations will have to register with a blocking service to prevent cyber-squatters from branding them with .xxx.
- Ms. Rosette is quoted in "Your Step-By-Step Guide to IP Lobbying," Managing Intellectual Property (September 2009), which offers insight on how IP owners and their lawyers have their biggest opportunity yet to influence the policy making process as IP issues move up the political agenda.
- "Protecting Your Trademark in New gTLDs: What You Need to Know Now," Covington E-Alert (8/30/2013), Co-Author
- "Protecting Your Marks Against Abuse in .xxx," Covington E-Alert (8/3/2011), Co-Author
- "The sun rises on a new gTLD landscape," Intellectual Property (July/August 2011), Author
- "Program to Expand Internet Name Space Approved," Covington E-Alert (6/20/2011), Co-Author
- "ICANN and Trademark Protection in New GTLDs," Trademark World (December 2009/January 2010), Author
- "Second Circuit Rules That Use Of Trademarks In Internet Keyword Advertising Constitutes Actionable Trademark Use," Covington E-Alert (4/15/2009), Co-Author
- "The Impending Introduction Of New GTLDs," Law360 (11/4/2008), Author
- "Should We Apply to Obtain a New gTLD?," Managing Intellectual Property (September 2008), Author
- "New gTLD's: An Opportunity or a Problem?," Trademark World (September 2008), Author
- "Landmark Decisions from Paris ICANN Conference," Thomson CompuMark Client Times Online (7/21/2008)
- "New Opportunities and Potential Pitfalls of the New TTAB Rules," Trademark World (April 2008), Co-Author
- "Virtual Reality, Real Infringement," Copyright World (December 2007), Co-Author
- "Registration Guidelines For New .ASIA Internet Domain Names," Covington E-Alert (10/19/2007), Co-Author
- "Be Careful What You Wish For...or What A Court Finds You Wished For," Trademark World (June 2007), Co-Author
- "Registration Guidelines for New .Mobi Internet Domain Names," Covington E-Alert (2/15/2006), Co-Author
- "Registration Guidelines for New .eu Internet Domain Names," Covington E-Alert (10/7/2005), Co-Author
- "Dressing for Trade: What You Can (And Can't) Protect in Cosmetic Package Design," Cosmetic/Personal Care Packaging (March/April 2004), Author
- "Dressing for Trade: What You Can (And Can't) Protect in Pharmaceutical Packaging Design," Pharmaceutical & Medical Packaging News (March 2004), Author
- ""Trademarks"," E-Commerce Law & Business (January 2003), Co-Author
- "U.S. Trademark Law Used Against "Cyberpirate"," Lawmoney (12/5/1998), Author
- "Back to the Future: How Federal Courts Create a Federal Common-law Copyright Through Permanent Injunctions Protecting Future Works," 2 J. Intell. Prop. L. 325 (1994), Author
Presentations and Speeches
- "The Expansion of Internet Top Level Domains," APABA-DC In-House Counsel Breakfast Update (4/4/2014)
- "Update - ICANN’s New gTLD Program," PLI Advanced Trademark Law Annual Review 2014 (1/31/2014)
- "New gTLDs: Latest Updates, Insight, and Strategies Webinar," Thomson Reuters (10/30/2013)
- "Protecting Your Brand Across The Digital Channels," CSC Digital Brand Forum (9/26/2013)
- "New gTLDs: Where We Are And What You Need to Know Now," IPO Annual Meeting (9/17/2013)
- "New gTLDs: Brand Strategies in Cyberspace," International Trademark Association Annual Meeting (5/7/2013)
- "New gTLDs," United States Patent & Trademark Office (4/23/2013)
- "ICANN and New gTLDs: What You Need to Know Now," PLI Advanced Trademark Law Annual Review 2013 (4/18/2013)
- "Trademark Clearinghouse and Rights Protection Mechanisms in New gTLDs: What You Need to Know Now," Webinar (3/21/2013)
- "The Unreconciled Tensions in the New gTLD Program," The USF School of Law McCarthy Institute and Microsoft Corporation Symposium: Trademark Law and its Challenges 2013 (2/28/2013)
- "New gTLDs: Beyond Reveal Day -- Public Comments, Early Warnings, and Objections," Webinar (4/19/2012)
- "ICANN: The Next Big .thing: New Top-Level Domains," Fora.tv Conference Channel (1/11/2012)
- "ICANN and Trademarks: Why Can’t We Be Friends," INTA Trademarks and the Internet (9/22/2011)
- "21st Century Issues and Developments Relating to the Enforcement and Protection of Your Trademark Portfolio," IPO 2011 Annual Meeting (9/12/2011)
- "Dot-brands: A Rights Owner Perspective," dot nxt (8/25/2011)
- "Trademark Rights and the Launch of the .XXX Top Level Domain," International Trademark Association Webinar (8/3/2011)
- "ICANN's Proposed gTLD Expansion: What's in Store for Trademark Holders and Others," BNA Webinar (6/7/2011)
- "ICANN and the New Wild West of the Internet," THE MCCARTHY INSTITUTE GOES TO REDMOND: Trademark Law and its Challenges in 2011 (2/3/2011)
- "Domain Names. Where Do We Go From Here? Critical Takeaways from ICANN," Thomson CompuMark Webinar (1/13/2011)
- "Brands as Strings," ICANN Commercial and Business Users Constituency (10/12/2010)
- "ICANN and new gTLDs: Imminent Reality and Implications for Trademark Owners," Intellectual Property Owners Association Annual Meeting (9/13/2010)
- "New gTLD Developments," ICANN Meeting Webinar (7/7/2010)
- "Brand Management in the Age of New gTLDs," ICANN Meeting (6/23/2010)
- "Domain Names: How To Protect Your .Assets," International Trademark Association Annual Meeting (5/25/2010)
- "New gTLD Developments," ICANN Board Meeting Webinar (3/17/2010)
- "ICANN's New Generic Top Level Domains: Strategies for Domain Name Registration and Brand Protection," Stafford Publications Webinar (2/24/2010)
- "The Upcoming Roll-out of New Generic Top Level Domains (gTLDs): Trademark Rights and Brand Owner Concerns in a Global Perspective," McCarthy Institute for Intellectual Property and Technology Law, Brand as Property: Trademark Law and Its Challenges in a New Era (11/4/2009)
- "ICANN Update," Aerospace Industries Association, Intellectual Property Committee (10/19/2009)
- "New Generic Top-Level Domains Are .Coming - Are You .Ready?," (10/14/2009)
- "Expansion of the Domain Space: The New gTLDs," University of Limerick School of Law, Advertising Law in the United States and Europe: The Challenges Ahead (7/25/2009)
- "Expected Expansion of the Domain Name System: Consumer Protection Issues," Federal Trade Commission (4/22/2009)
- "Expected Expansion of the Domain Name System," Aerospace Industries Association, Intellectual Property Committee meeting (4/21/2009)
- "ICANN Update," International Trademark Association, Trademark Law and the Internet Forum (2/10/2009)
- "Taking Trademarks to the Top Domain: Opportunities and risks in the new gTLD space," Pike & Fischer (2/5/2009)
- "Internet Hot Topics," International Trademark Association, Trademark Administrators Conference (10/13/2008)
- "Website Resources," International Trademark Association, Trademark Administrators Conference (10/13/2008)
- "New gTLDs," Webinar, International Trademark Association (9/11/2008)
- "Expected Expansion of the Domain Name Space," Webinar (8/4/2008)
- "ICANN Update Webinar: Introduction of New gTLDs," (7/8/2008)
- "INTA 2008: Recap," Webinar, MarkMonitor (5/30/2008)
- "Internet Hot Topics: Changes to the WHOIS System and Other Hot Issues," International Trademark Association, Annual Meeting (5/21/2008)
- "Internet Hot Topics," U.S. Patent & Trademark Office, Trademark Trial and Appeal Board (3/6/2008)
- "ICANN Update Webinar," (2/21/2008)
- "ICANN Update Webinar," (11/6/2007)
- "Whois: What, Where, and Why," The International AntiCounterfeiting Coalition, Annual Autumn Conference (October 2007)
- "ICANN Update Webinar," (7/11/2007)
- "ICANN Update," (4/5/2007)
- "ICANN Update," (12/15/2006)