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18
Apr

New tool for Trademark Clearinghouse: Petition to Make Special a USPTO trademark application

Posted by ipelton on: April 18th, 2013

Want to protect a trademark in the Trademark Clearinghouse for the new gTLDs? I have found a new tool that may help brand owners.

First, the Trademark Clearinghouse allows owners of registered trademarks to get protections in the new global Top-Level Domains (gTLDs).  The protection would be in the form of the opportunity to register the domain name first during the “sunrise period” and it would provide notice if someone attempts to register a second-level domain in one of the new gTLDs, along with the opportunity to purchase the domain.

In order to use the Trademark Clearinghouse, brand owners must have a registered trademark.  In the US, trademark registration generally takes a minimum of 7 months.

But a petition to make special can expedite the USPTO process and likely save at least two months in the application timeline. And I just learned last week that the desire to use the Trademark Clearinghouse is a sufficient basis for a petition to make special.

You see, I filed to register ERIK PELTON with the USPTO on March 18, 2013. Since my primary domain name is www.erikpelton.com, it would be valuable to block anyone trying to register ERIK PELTON as a second level domain, such as erikpelton.email or erikpelton.lawyer or erikpelton.trademark. [I realize that I would very likely have other recourse against anyone using one of these second-level domain names, but such options would be much more expensive than the Trademark Clearinghouse.]

On March 21st, I filed a Petition to Make Special citing the Trademark Clearinghouse as the basis:

Special action is requested so that applicant may use the resulting registration of the mark to apply with the Tradmark Clearinghouse in order to guard against others from using the mark in registration of second-level domains in the new gTLDs (top-level domains) such as erikpelton.email, erikpelton.law, erikpelton.attorney, and more. The Trademark Clearinghouse, an “enhanced rights protection” mechanism built into the new gTLD program, is only available for registered trademarks. As the Trademark Clearinghouse is commencing this month and as the new gTLDs are set to be released by ICANN in the near future, the requested petition to mke special for expedited action is necessary and justified.

For more information regarding the Trademark Clearinghouse and the new gTLDs, see attached materials and the following websites:

http://newgtlds.icann.org/en/about/trademark-clearinghouse

http://trademark-clearinghouse.com/

On April 11th, the Petition was granted.

Brand owners who want to use the Trademark Clearinghouse, but do hot have a trademark registration, make still be able to use it by filing to register the trademark with the USPTO, followed by a Petition to Make Special.

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10
Apr

Trademark Clearinghouse for new Top-Level Domains: what brand owners need to know

Posted by ipelton on: April 10th, 2013

About 9 months ago, ICAAN announced the the list of applicants who applied to launch new .ANYTHING top-level domains (gTLDs). If .STORE or .EMAIL or .SHOES become available to domain registrants, how can brand owners protect their trademarks from the registration and use of (hypothetically, for the ACME shoe brand) ACME.STORE or ACME.SHOES?

There will be several mechanisms available once the new domains are active, but the recently launched Trademark Clearinghouse may be the most effective and affordable for owners of trademark registrations with concerns about these new domain names.

First, a little background: A top-level domain (or “TLD”) is the last word (or abbreviation) in a web address. “.com,” for instance, is probably the most familiar top-level domain among others like .gov, .org, .net, and .uk. Top level domains are preceded by the second-level domain. For example, in the web address “www.amazon.com,” “amazon” is the second-level domain, and “.com” is the top-level domain.

Last year, the Internet Corporation for Assigned Names and Numbers (“ICANN”) began accepting and processing applications for hundreds or even thousands of potential new top-level domains. Applicants must demonstrate the ability to administer the sale and assignment of second-level domains within their proposed new top-level domain. For example, if Google can convince ICANN that it has the ability to be the IT company that acts as the registrar that administers all the possible combinations of “www.whatever.google,” then ICANN may grant to Google the top-level domain “.google.” However, demonstrating the ability to maintain a new top-level domain to ICANN is not easy for common folk because applicants must prove that they have the ability to be a domain name registrar and the application fee alone costs $185,000.

This affects brand owners in several ways. If you own a brand, you obviously don’t want someone else owning the web address www.yourbrand.com. This problem is partially assuaged by the facts that each new top-level domain application is expensive, is posted online, processed slowly over the course of months if not years, and is even subject to public comment. But there is a second problem which is likely much greater: the possibility that a third-party registers your brand at the second level under one or more of the new top-level domains, e.g. “yourbrand.newTLD.” For instance, perhaps Comcast® should be worried that once the .email domain name is live, someone would attempt to register comcast.email, which could be used for spam or other purposes. And comcast.email, comcast.television, and others could also be used to cause confusion, or could block Comcast® from using the second level domains itself. Note that if someone does register and use a second level domain in an infringing or cyber squatting manner, there are possible causes of action against them – but they are expensive and cumbersome.

As a result, ICANN has come up with a way to quell some of the fears of brand owners, called the Trademark Clearinghouse. The Trademark Clearinghouse is a regime under which trademark owners can prevent, for example, “theirbrand.whatever” from being purchased, parked, or used. For a fee of about $150/year, beginning March 26, 2013, owners of valid trademarks will be able to submit their mark to the Clearinghouse in order to take advantage of two basic protective services: “Sunrise” services, and “Trademark Claims” services. The “Sunrise” services entitle Clearinghouse participants the opportunity to register “theirTM.newTLD” for at least 30 days before the general public has the opportunity to register “anything.newTLD.” If a Trademark Clearinghouse participant chooses not to secure “theirTM.newTLD” within the 30 day grace period, the Trademark Claims services will alert a potential registrant when they attempt to register “someoneelse’sTM.newTLD.” If the potential registrant chooses to proceed to registration after being notified of the conflict, the Trademark Claims services will notify the trademark holder of the domain name registration so they can take any appropriate action if they see fit.

It’s a little bit complex, so here is an example. Assume you own the valid U.S. trademark “AWESOME SAUCE,” and assume you registered into the Trademark Clearinghouse. Now, assume somebody else is granted the new top-level domain “.tshirts.” Under the “Sunrise” services, you have 30 days to register “AWESOMESAUCE.tshirts” before anybody else can. And if  you choose not to take advantage of the 30 day “Sunrise” period, when anybody else tries to register “AWESOMESAUCE.tshirts,” they will receive a notification of the possible conflict with your “AWESOME SAUCE” trademark. If they choose to ignore the notification and proceed to register the domain, you will be notified that somebody else has registered a domain that conflicts with your trademark.

Trademark owners considering the Clearinghouse should note the limited protection it offers. First, it is likely that the protections of the Clearinghouse only cover an exact match to a participating trademark, so that in our example ‘awesomesauce’ is protected but ‘awesomesauces’ is not. Second, the Clearinghouse will only recognize registered trademarks, marks protected by statute or treaty, and court validated marks. Note also that the clearinghouse fee is about $150 per year per mark.

In summary, the Trademark Clearinghouse provides trademark owners the opportunity to register their trademark as the second-level domain in any new top-level domain before anybody else gets the same opportunity (note that those registrations may be much more expensive than dot-coms since the price will be controlled by the party that paid the large application fee to ICAAN). Also, in the event that a trademark owner chooses not to take advantage of that opportunity, the Clearinghouse will notify that trademark owner if and when their trademark is being used as a second-level domain in any one of many possible new top-level domains.

Should brand-owners invest in the Trademark Clearinghouse? Possibly. One thing is for certain: $150 per year may add up over time, but it could prevent one or more even more costly and unpredictable lawsuits in the future. If your brand is strong and already been a part of infringements or disputes with social media user names or other domain names, the Trademark Clearinghouse is likely a valuable piece of insurance to help control the brand and reduce trademark enforcement and legal fees.

 

[Note: Thank you to law clerk Nicholas Santucci for contributions to this article]

14
Jan

Top Trademark Trends of 2012 (Scams, gTLDs, Celebrities, and more)

Posted by ipelton on: January 14th, 2013

The top trademark trends in 2012 continued several themes from recent years including celebrity brand names and domain name developments. Other big news stories, like the election, also affected the trademark world. Here is a summary of the year’s major trademark related developments:

Celebrity trademarks – and problems – continue to increase. What do Tim Tebow, Jeremy Lin, Psy, and the Kardashians have in common? All made news with trademark issues in 2012. On the field, Tebow led a playoff run and was traded to the New York Jets; off the field he registered the word TEBOWING for use with shirts and hats. The Kardashians own many trademarks but they found themselves defending infringement allegations on their Kardashian Khroma name and Kardashian Kollection logo. Blue Ivy Carter, born to Beyonce and Jay-Z in January, instantly made trademark news as her parents filed to register her name as a trademark with the USPTO just days after the birth. The video for “Gangnam Style” by Psy was viewed more than one billion times, and both the singer and song name are the subjects of pending trademark applications with the USPTO. As even more sports and entertainment stars become marketing powers, these celebrity trademark trends are bound to continue.

Disney acquires Star Wars. In October, Disney announced a $4 billion purchase of Lucasfilm, makers of the Star Wars movies and franchise. Disney already owned more than one thousand registered trademarks, but the Star Wars® marks will become some of its most valuable properties. Dozens of Star Wars trademarks are registered, including DROID®, the sound of a light saber, and the configuration of Darth Vader’s costume.

Scams. Service providers sending dubious solicitations to trademark owners received attention from trademark attorneys, the USPTO, and courts. The USPTO issued several warnings to its users and took the unprecedented step of sending a cease and desist letter to “United States Trademark Registration Office,” whose solicitations particularly mimicked government correspondence. As the USPTO’s trademark data becomes more accessible online, scams and overpriced offers continue to reach unsuspecting trademark owners. Perhaps additional efforts from the USPTO, the FTC or law enforcement agencies in 2013 will help curtail their growth.

Updated logos. Many brands refreshed their logo designs in 2012, including Microsoft, JC Penney, Cisco, State Farm, Kraft, Domino’s, ebay, the Brooklyn Nets, and Best Buy. As brands continue to increase become more online, social, and mobile, and as big brands look to expand into new product and service markets, I predict that many more will reinvent their logos in the next few years.

                                     

gTLDs. Last year continued the long slow march toward new ‘dot anything’ top level domains. The first phase – expensive applications to register .nfl, .shop, .google, .bank and the like – has been completed, and it is likely that the next objection phases and pre-registrations available to trademark owners will begin in 2013. Brand owners concerned about use of their trademarks in such top level domain names – or even in second level ones such as nike.shop – must continue to monitor the ICANN process.

Louboutin’s red sole trademark gets restricted. The most watched trademark case of 2012 was an appellate court decision from the Second Circuit Court of Appeals in the matter of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. Louboutin, which makes expensive women’s high heel shoes recognized by their red lacquered sole, had sued YSL for trademark infringement after YSL made a monochrome shoe that was all red, including the sole. The Circuit Court found that Louboutin’s trademark rights, though registered with the USPTO, extend only to shoes where the red sole contrasts with the remainder of the shoe. Thus,  Louboutin’s claims against YSL were struck down, and the Court further directed the USPTO to amend Louboutin’s registration and limit its scope to shoes featuring such a contrast.

President Obama, re-elected in November, has a brand that is among the most well known for any politician in recent memory. The Obama campaign filed to register several of its trademarks in 2012, including the slogan GREATER TOGETHER and the logo below.

 What to look for in 2013.As the economy continues to grow slowly, it is likely that the number of new trademark applications will grow as well. Expect even more trademark issues involving celebrity brands in the news and continuing concerns – and delays – with the launch of new top level domains.

 

About Erik M. Pelton: Erik Pelton has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 1,700 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2012, Erik presented on trademark and social media issues to a variety of audiences, including Howard University, the Association of Intellectual Property Firms, the New York State Bar Association, and the National Veteran Small Business Conference.

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30
Oct

Even trademark attorneys receive scam domain name notices

Posted by ipelton on: October 30th, 2012

This week, I received the email below. I’m willing to bet that the facts claimed are not true and that the services they claim to offer are unnecessary.

Dear President,

We are the department of Asian Domain Registration Service in China. Here I have something to confirm with you. We formally received an application on Oct 17, 2012 that a company claimed Eluid investment Co. Ltd were applying to register “erikpelton” as their Net Brand and some domain names through our firm.

Now we are handling this registration, and after our initial checking, we found the name were similar to your company’s, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we would finish the registration at once. If you did not authorize, please let us know within 7 workdays, so that we could handle this issue better. After the deadline we will unconditionally finish the registration for Eluid investment Co. Ltd.Looking forward to your prompt reply.

Best Regards,

Tom Yan    

Tel: +0086-28-8591-5586 || Fax: +0086-28-8591-2116

9/F Libao building No,62 Kehua North Road,Wuhou District,Chengdu City,China

A quick search for the information provided in the email reveals that many other have reported on this same hoax (the wording, of course, changes slightly from time to time).

If you ever have doubts about such a solicitation, (a) search only for the information using a sentence from the questionable email, and (2) contact an attorney.

2
Jul

Trademark owners beware of .CN and other Asian domain name scams

Posted by ipelton on: July 2nd, 2012

In recent weeks, I have received many emails from clients asking about an email they received regarding registration of a domain name – which corresponds to their trademark – in China. Every single one I have been forwarded is a scam.

The email looks something like this:

Dear CEO/President,

We are the department of Asian Domain Registration Service in China. Here I have something to confirm with you. We formally received an application on June 28, 2012 that a company claimed “XXXXX” were applying to register “YYYYYYYY” as their Net Brand and some YYYYYY Asian countries top-level domain names.

Now we are handling this registration, and after our initial checking, we found the name were similar to your company’s, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we would finish the registration at once. If you didn’t authorize, please let us know within 7 workdays, so that we could handle this issue better. After the deadline we will unconditionally finish the registration for “XXXXXXXX”. Looking forward to your prompt reply.

or 

(If you are not in charge of this please transfer this email to your President or appropriate person, thanks)

Dear President,

We are the department of Asian Domain registration service in china, have something to confirm with you. We formally received an application on May 3, 2012. one company which self-styled “XXXXX” were applying to register “YYYYY” as Network Brand and following domain names:

[list of domain names ending in .cn, .asia, .hk, etc.]

After our initial checking, we found the name were similar to your company’s, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we will finish the registration at once. If you did not authorize, please let us know within 7 workdays, so that we will handle this issue better. Out of the time limit we will unconditionally finish the registration for “XXXXXX”.

Best Regards,

DO NOT RESPOND TO THESE EMAILS. They are a total scam as far as I know, and as far as every single report I have ever read about them.. No client of mine (more than 1,500 US trademark registrations) has ever had to shut down a .CN website to do infringement. If someone did registered a .CN domain name that corresponded with your trademark, it would only be a concern if the domain owner used the domain, and used it in a way that competed with your business/trademark.  And if they did so, you would likely have rights under the UDRP to file a complaint and seek a transfer of the domain name.

If you are actively doing business in China or have plans to do so, you of course may want to register the .cn domain corresponding to your trademark or your .com domain. But don’t respond to the email, and seek a different and legitimate channel for registering the .cn.

These scams have been circulating for years. But some unsuspecting recipients must fall prey to them (or they wouldn’t keep bothering to send them). If you have any questions about a similar email either consult an attorney, or do an internet search for a sentence from the letter and see if it pops up in scam alert websites – odds are it does.

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