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Earlier this week, I blogged about how the ALS Association has recently filed to register the ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE trademarks with the USPTO. In my opinion, this decision by ALSA was a poor one: the mark may not be protectable and even if it were, asserting any exclusive claim to the phrase is in poor taste. In an interview yesterday, I call it “shameful.”

Within 24 hours, the ICE BUCKET CHALLENGE trademark story went viral. Not nearly to the extent that the challenge itself has, of course. Nearly $100 million dollars have been raised by ALSA in the last month!

I was interviewed by a reporter from the Washington Post yesterday for an article. And many websites have picked up the story from my blog. Articles on TechDirt and arstechnica have dozens of comments. My original post has been “liked” on Facebook more than 160 times. The Washington Post article’s Facebook link has over 100 shares and over 100 comments.

ALSA has issued a comment on the trademark filings. See the Washington Post article for details.

Washington Post: The ALS Association wants to trademark ‘ice bucket challenge.’ An attorney says that’s ‘shameful.’

TechDirt: ALS Association Tries To Trademark Ice Bucket Challenge, Despite Having Nothing To Do With It Originally

boingboing: Not Cool: ALS Association files trademark for Ice Bucket Challenge, but didn’t create campaign

arstechica: ALS group moves to trademark “ice bucket challenge” viral sensation

Fortune: ALS Association looks to trademark the term ‘ice bucket challenge”

I have no idea where this will lead. It has at least reached the attention of ALSA, since they have commented on it. Let’s hope they come to their senses and drop the application before they damage all the goodwill the summer’s viral craze gave them.

 

The “ice bucket challenge” has become the viral sensation of the summer of 2014. From former presidents, to athletes, to your neighbor and your cousins, everywhere you look online someone is posting a video of their challenge and then challenging others.  (If you have been under a rock and need more background on the ice bucket challenge, see Wikipedia.)

Of course, it is great to see so much energy – and funds – going to a charitable cause. The ALS Association announced this morning that donations exceed $94 million dollars over the last few weeks — far more than they raised in all of 2013.

#IceBucketChallenge donations exceed $94 million. Thank you for your support! http://t.co/vLkQPG2lmH

— The ALS Association (@alsassociation) August 27, 2014

But who owns the name “ICE BUCKET CHALLENGE”?  It is a viral movement. Its origin is disputed, and likely was used for other charitable causes first.

Yet by filing with the USPTO, the ALS Association now alleges that it owns rights to the phrase “Ice Bucket Challenge” in connection with charitable fundraising. Two trademark applications were filed by the association with the USPTO last Friday for ICE BUCKET CHALLENGE (Serial No. 86375292) and for ALS ICE BUCKET (Serial No. 86375305) CHALLENGE for use in connection with charitable fundraising services. The association claims that its first use of the phrases in commerce was August 4, 2014

I don’t think this claim by the ALS Association is appropriate for several reasons:

  • Is ALS Association the true owner of the phrase? I don’t believe that the Association created it or was the first to use it. Not sure they can claim real ownership.
  • Is the phrase “ICE BUCKET CHALLENGE” associated exclusively with fundraising for the ALS Association? I don’t think so.
  • The phrase may already be generic. It is widely used, by many, in ways that don’t only related to the ALS Association.
  • Is the phrase likely to be viewed by the public as indicating the source of the charitable fundraising services? Again, since many others have taken the challenge in the name of (and/or contributed to) other charities, I’m not sure that they will.
  • If ALS Association successfully registers the phrase, it could seek to restrict use of it for other charitable causes. That would be the biggest shame in all of this.

ALS Association captured a viral wave this summer. And it raised lots of money and attention for the ALS disease and the struggle to find a cure and to assist those diagnosed with it. An effort to register the ICE BUCKET CHALLENGE strikes me as a bit akin to those who sought register BOSTON STRONG after the marathon bombings in 2013. Even if it were permissible under the law to register the phrase (again that is not clear here), it is in poor taste. If others want to use the phrase to raise money for their causes, why would ALS Association want to stop them?

For more background on the ICE BUCK CHALLENGE and how it started, here is a Slate investigation: Who Invented the Ice Bucket Challenge?

FireShot Screen Capture #172 - 'Homepage - ALS Association' - www_alsa_org

for more about ALS and the ALS Association, see www.alsa.org

PS – Yours truly took the ice bucket challenge on vacation last week:

Erik Pelton #icebucketchallenge

To my knowledge, the USPTO and FTC have not yet taken any action against scammers in the US preying on trademark applicants and registrants. See for example:

However,  the UK IPO is not sitting idly. They have taken against against at least two of these outfits to protect consumers and punish the entities for “passing off.” According to a report on gov.uk from August 18, 2014,

“Two of the most blatant offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’ – and the persons behind these organisations, Mr Aleksandrs Radcuks and Mr Igors Villers, have admitted and settled our claims and agreed to be bound by an Order of the Intellectual Property Enterprise Court prohibiting them from further acts of passing off.”

Furthermore, the report indicates that the parties were required to make a substantial payment to cover some of IPO’s legal costs.

I sure hope the USPTO takes note of these actions and successes and considers taking steps to stop these scams and to protect US consumers.

For more reporting on this story, see:

 

The Dead IP Law Blog Roll

Posted by ipelton on: August 25th, 2014

As I have noted before, the hardest thing about blogging…. is to keep blogging. Writing. Consistently. On relevant and interest topics.

Ron Coleman over at Likelihood of Confusion® has said it as well, and said it before I did.

To demonstrate my point, I present the first “DEAD IP LAW BLOG ROLL”. Many of these were excellent blogs — that is why I bookmarked them at some point in the past. Of course, I am much more familiar with trademark blogs than patent ones. There are many blogs I have missed on this list. And to be fair, some of the authors/bloggers have probably gone on to start new blogs. But maybe, due to attrition, my blog will someday make a list of the best IP blogs!

Feel free to leave a note in the comments for any I have missed!

Hottest trademark term in 2014? _____ STRONG

Posted by ipelton on: August 22nd, 2014

Thus far in 2014, about 2/3 of the way through the year, the hottest term in trademarks continues to be STRONG.  Note that SELFIE and DRONE are also quite popular by my count. (I’m not away of an easy way to search the USPTO TESS Records to find the most popular terms, so there is some guesswork involved.)

But _____ STRONG is dominating. Dozens of such trademark applications have been filed already this year.  Here is a small sampling [click marks and logos for USPTO records]: