Much thanks to Kristine Dorrain, Director of Internet and IP Services at the National Arbitration Forum, who spoke with me and who has forgetten more about domain names than I will ever know!

Our presentation provided information about the impending release of new top level domain names and was called “The New Top-Level Domains: Guidance for the Business Lawyer.“

To view the PowerPoint of the presentation, including links to a lot of valuable information on the new domain name procedures and protections for brand owners, see link below:

 The New Top-Level Domains: Guidance for the Business Lawyer (PDF)

The first brand to my knowledge that did this was Kleenex years ago. Their packaging says “Kleenex brand tissues” to make it clear that Kleenex is not the name for all tissues and to help people avoid using the “Kleenex” name generically.  

These uses are good strategy for big brands risk becoming such a part of the lexicon that the brand shift towards possible genericness and the resulting loss of trademark protection. Some brands, instead of using the generic product category after the trademark use the term “Brand” for the same purpose.

Did you know that Frisbee, Jacuzzi, Jet Ski, Rollerblade, Popsicle are all registered trademarks today? But many people misuse each of them to refer to an entire category of goods. A brand name that becomes generic is less profitable, less valuable and less protected under the law.

Here are some brands that I have noticed using the generic term to make it clear that the brand name is not the generic term:

VIA from Starbucks uses the phrase “ready brew” after the mark

Play-Doh – modeling compound

Poland Spring brand

Deer Park brand

Lysol brand

Pinterest is a great name! Fun to say. Suggestive — “pin” and “interest” combined. The name it is unique, it sounds exciting and interesting. In short, I think it is an A+ name.

But one thing is missing. The mark is not registered with the USPTO. Cold Brew Labs, Inc., the owner of Pinterest, filed for trademark registration in March of 2011. But after a review by the USPTO and initial Office Action - in which no conflicts were found – no response was filed by the applicant and the application was abandoned on December 30, 2011. [Note that under some circumstances an abandoned application can be revived within 2 months.] The only thing standing between Pinterest and approval of its trademark application by the USPTO was the submission proper evidence of use.

Pinterest is a great and creative name. To date, it appears the trademark protection for it has been mismanaged. Twitter went through its own share of trademark problems, issues, and expenses after it failed to protect its brand names early on in its success. Will Pinterest have to learn the same lesson the same hard way that Twitter did?

Here are some of the key dates in the timeline:

- The phrase WHO DAT? has been a part of the lexicon in New Orleans for decades or longer

- WHO DAT? become a rallying cry of Saints fans since at least the 1980′s.

- In January 2010 at the Saints marched towards the Super Bowl, the Saints and NFL sent cease and desist letters to apparel makers using “WHO DAT?”. [NFL claims trademark infringement (ESPN.com) regarding WHO DAT? shirts]

 - In June 2011, the Saints and NFL filed Oppositions to the USPTO trademark applications of State Street Management, LLC for two logos, one of which contains the words DEUX DAT

- In July 2011 the TTAB suspended the Who Dat? Inc. Opposition proceeding pending the civil litigation New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011)

- On January 4, 2012, the Saints and the NFL filed a Notice of Opposition to the Who Dat? Inc. trademark application for TWO DAT?

- Today, the civil litigation continues while the parties are conducting discovery and the TTAB proceeding remains suspended

Where, when and how this dispute will be resolved is anyone’s guess. But it appears that if the Saints win a 2nd Super Bowl the stakes might become even higher.

[image from Charlie Melancon for Senate]

Want to learn more about Non-Traditional Trademarks? 

I am conducting a webinar next week for the Association of Intellectual Property Firms (AIPF) on January 25th at 12:30 PM EST. Anyone can register – you do not need to be a member (although there is a fee for non-members).

Registration of non-trademarks in the U.S. has increased significantly in recent years. This webinar will explore the history of non-traditional trademark registration, along with the legal and practical issues involved. We will also survey the spectrum of non-traditional trademarks that are protectable and review special considerations for the application process involving non-traditional trademarks.

For more about the WebIPHour™ or register see the full webinar listing here.

But because these solicitations in my opinion are almost entirely worthless and possibly fraudulent because they (i) are  artfully crafted to look like official government requests, many trademark applications, and (ii) the services offered are of little or no value, are not described in detail, and are not performed by an attorney.  These offers come from companies with names like “United States Trademark Registration Office.”

Those who have received or been subject to such scams in the U.S. can file complaints with the Federal Trade Commission (FTC) and leave comments here with details so that we can warn others.

Below are some of the recent solicitations received by my office or my clients:

Trademark Scam Letters

Related Posts:

• Tip: Avoiding trademark and domain name scams
• More trademark scams
• Beware of new trademark scam
• Trademark scams: Update

Here are some of the registration owned by his business, Muhammad Ali Enterprises, LLC (click trademark or image to open USPTO records):

THE GREATEST

THRILLA IN MANILLA

FLOAT LIKE A BUTTERFLY, STING LIKE A BEE

RUMBLE IN THE JUNGLE

MUHAMMAD ALI

ALI

CASSIUS CLAY

GREATEST OF ALL TIME

For several of these marks, there is more than one registration covering a variety of good and services.

It is common today for celebrities and athletes to be wise businesspeople and to protect their names with trademarks, but it hasn’t always been that way. Ali was on top of his “trademark” game in this manner since at least since the mid 1990′s. 

TIP: A brand name used with licensing or endorsements, it is even more important to protect. The name – and the brand built around it –  is certainly the number one factor that someone would want to do business with Muhammad Ali or to buy something with his name on it.

CBP has many duties. One is to deal with counterfeits and intellectual property violations in international trade. Trademark owners can record their registered trademarks with Customs who will then help monitor imports at the border.

I was fortunate to receive a tour in December of the National Intellectual Property Rights Coordination Center in Arlington, Virgina, along with Associate Mark Donahey and intern Dwight Greene.  See photos below. The Center coordinates communications and action between a number of government agencies and departments that have an interest in intellectual property protection, counterfeiting, and securing our borders. And the IPR Center has a great slogan: Protection is Our Trademark.

Here are some of the interesting details from the 2011 report:

The total number of IPR seizures in FY 2011 increased by 24% compared to FY 2010, which is a 325% increase over the past decade.
• The domestic value of all IPR seizures in FY 2011 decreased by 5.2% compared to FY 2010.
• The number of low-value (under $1,000) IPR seizures in FY 2011 increased by 3,872 over FY 2010. This increase in low-value seizures accounts for 80% of the overall increase in seizures for FY 2011.
• The average domestic value for an IPR seizure dropped to $7,193 in FY 2011 from $9,425 in FY 2010.

• In FY 2011, the number of seizures at mail and express courier facilities increased by 16% compared to FY 2010,

 To read the full report, see here.

Related posts:

• Anatomy of a U.S. Customs Recordation

EMP&A will donate its time and services pro bono to those partners chosen for the initiative. ¹

EMP&A has extensive experience working with charitable organizations, associations, and other non-profit groups on trademark matters. Non-profits wishing to apply for consideration to take part in this program should complete the information request below and email or fax it back.²

For more details, see below.

1 – Participating companies will be responsible for any government filing fees.
2 – All decisions regarding participation shall be at the sole discretion of EMP&A. No attorney-client relationship shall exist prior to the signing of a retainer agreement.

Pro Bono trademark services for non-profits

Guess what happened? Tebow’s Denver Broncos made the playoffs. And they won their Wild Card game against the Steeler last weekend even though few prognosticators gave them any chance. Before the game, sports talk shows were speculating about whether Tebow might be benched during the game or whether, if the Broncos lost, he might start next season as a back up quarterback again.

But Tebow defied the odds, played incredible, and led the Broncos to an upset victory on the first play of overtime.

And in the weeks since my last post, as his legend has grown, so too has the number of trademark filings! Here are the latest filings by others [click mark for link to USPTO records]:

• WHAT WOULD TEBOW DO - Short-sleeved or long-sleeved t-shirts
• TEBOWING - Cloth flags; Fabric flags; Fabrics that may or may not have printed patterns and designs thereon for use in textile applications, namely, the manufacture of apparel, upholstery, signage, flags, banners and wallpaper; Nylon flags
• TEBOWING - Insulating sleeve holder for beverage cups; Insulating sleeve holder for bottles; Insulating sleeve holders for beverage cans
• TEBOWING - Online and website-based education and entertainment in the field of training, sports, and cultural activities; personal appearances
• TEBOWING - Sporting goods, toys, and games; bobble head dolls, gymnastic and sporting articles, target games, kites, toy action figures, board games and card games, disc-type toss toys, bows and arrows, balls of all kinds, dolls, doll playsets, plush toys, toy vehicles, toy cars, toy trucks, toy bucket and shovel sets, roller skates, hobby craft kits to produce toy model airplanes, toy rockets, toy guns, toy holsters, musical toys, jigsaw puzzles, badminton sets, bubble making wands and solution sets, toy figurines, toy banks, puppets, toy balloons, yo-yos, skateboards, surfboards, snowboards, wakeboards, skiis, scooters and costume masks; and hand-held units for playing electronic and video games
• TEBOWING - Men’s, women’s, and children’s clothing, footwear and headwear, namely, t-shirts, shirts, sweat shirts, jerseys, shorts, sweat pants, jackets, skirts, dresses, visors, hats, caps, scarves, gloves, infant onesies, infant bibs, hosiery, neckties, pajamas, robes, night shirts, night gowns, underwear, head bands, wrist bands, swim suits, tank tops, pants, coats, sweaters, leotards, leg warmers, stockings, socks, panty hose, tights, belts, shoes, athletic shoes, slippers, boots, sandals and rainwear
• TEBOWING - Paper goods, namely, posters, school supplies, books, magazines, party goods, playing cards, stationery, mounted and/or unmounted photographs, comic books, calendars, notebooks, memo pads, pens, pencils, stickers, erasers, pencil sharpeners, pencil cases, staplers, writing paper, envelopes, paper weights, paper coasters, paper mats, giftwrap paper, drawing rulers, postcards and trading cards
• TEBOWING - Jewelry, clocks, watches; cuff links, belt buckles, tie pins, ornamental pins, holiday ornaments, money clips
• TEBOWING - DVDs, CDs, CD-ROMs, sunglasses, sound recordings, video recordings, USB sticks, computer games, mobile phone applications
• Winning is INeviTEBOW - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
• TEBOW TOWEL - Football towels; Hand towels
• There is no I in Tebow - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
• TEBOWNED - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
• TEBOWN3D - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
• you’ve been tebowized - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Clothing for athletic use, namely, padded shirts; Collared shirts; Hooded sweat shirts; Long-sleeved shirts; Night shirts; Sport shirts; T-shirts

 And here are the trademark applications recently filed  XV Enterprises LLC, the marketing and talent agency that represents Tebow and is run by his brother:

• TIM TEBOW - DVDs, CDs, CD-ROMs, sunglasses, sound recordings, video recordings, USB sticks, computer games, mobile phone applications
• TIM TEBOW - Jewelry, clocks, watches; cuff links, belt buckles, tie pins, ornamental pins, holiday ornaments, money clips
• TIM TEBOW - Paper goods, namely, posters, school supplies, books, magazines, party goods, playing cards, stationery, mounted and/or unmounted photographs, comic books, calendars, notebooks, memo pads, pens, pencils, stickers, erasers, pencil sharpeners, pencil cases, staplers, writing paper, envelopes, paper weights, paper coasters, paper mats, giftwrap paper, drawing rulers, postcards and trading cards
• TIM TEBOW - Men’s, women’s, and children’s clothing, footwear and headwear, namely, t-shirts, shirts, sweat shirts, jerseys, shorts, sweat pants, jackets, skirts, dresses, visors, hats, caps, scarves, gloves, infant onesies, infant bibs, hosiery, neckties, pajamas, robes, night shirts, night gowns, underwear, head bands, wrist bands, swim suits, tank tops, pants, coats, sweaters, leotards, leg warmers, stockings, socks, panty hose, tights, belts, shoes, athletic shoes, slippers, boots, sandals and rainwear
• TIM TEBOW - Sporting goods, toys, and games; bobble head dolls, gymnastic and sporting articles, target games, kites, toy action figures, board games and card games, disc-type toss toys, bows and arrows, balls of all kinds, dolls, doll playsets, plush toys, toy vehicles, toy cars, toy trucks, toy bucket and shovel sets, roller skates, hobby craft kits to produce toy model airplanes, toy rockets, toy guns, toy holsters, musical toys, jigsaw puzzles, badminton sets, bubble making wands and solution sets, toy figurines, toy banks, puppets, toy balloons, yo-yos, skateboards, surfboards, snowboards, wakeboards, skiis, scooters and costume masks; and hand-held units for playing electronic and video games
•  TIM TEBOW - Online and website-based education and entertainment in the field of training, sports, and cultural activities; personal appearances

photo from Denver Post