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Top Trademark Trends from 2013

Posted by ipelton on: January 13th, 2014

The world of trademarks in 2013 once again reflected the overall culture and economy of the United States. Trademark application filings increased slightly by just over 1%. The year’s most popular terms made it into many trademark applications, and the biggest news stories of the year were also reflected in the trademark records.

  • BOSTON STRONG. The Boston Marathon bombing in April was a major news story. Regrettably, within days multiple parties had filed to register BOSTON STRONG trademarks. Most of these applications have been refused initially by the USPTO for failing to function as an indicator of the source of goods or services.
  • REDSKINS. The Trademark Trial and Appeal Board at the USPTO heard oral arguments in a case seeking to cancel the registered trademark rights of the Washington Redskins football team. The plaintiffs alleged that the term ‘Redskins’ is disparaging and thus cannot be registered. While the hearing before the Board was held in March, a decision is still forthcoming. The controversy over the ‘Redskins’ name continued throughout the year as players, celebrities, the President, and the NFL Commissioner all provided comments about their position on the name.

  • Top pop culture terms of 2013. The most popular words and phenomena in pop culture made their way into many trademark filings. Such applications included TWERKING, TWERK TEAM, TWERK FOR TROOPS, HASHTAG LABS, HASHTAG LUNCHBAG, HASHTAG CLOTHING, YOLO HOTEL, YOLONOTES, YOLO KIDS, YOLO DONUTS, MUSTACHE SMASH, MUSTACHE PRETZELS, MOUSTACHE BREWING CO.
  • #HASHTAGS. Dozens of trademark applications were filed with the USPTO in 2013 for marks featuring hashtags, including: #DREAMJOB, #RUNTHISTOWN, #WECANDOTHAT, and #TAGMEBRO.
  • Non-traditional marks. Brands in 2013 continued to expand their use and registration of non-traditional trademarks. Sounds, shapes, colors, moving graphics, and other non-traditional trademarks continue to be effective ways for brands to connect with consumers in a world where it is increasingly difficult to stand out among the myriad of advertisements. For example, Facebook applied to register the design of part of its mobile app menu, Lego applied to register the configuration of is yellow head piece, Pepperidge  Farm applied to register the three-dimensional configuration of its Goldfish cracker, and the University of Arkansas applied to register the sound of its “Woooooooo. Pig. Sooie!” cheer.
  • gTLDs. New “dot anything” top level domain names finally began going live late in 2013. To date, their impact on the internet and on brand owners has been less than most feared.
  • Trademark scams continue. Solicitations offering negligible or questionable services continue to get sent by a variety of companies, often with government-looking notices, to US trademark applicants and registrants. At the end of 2013, The U.K. intellectual property office began to crack down on such entities, partnering with the Advertising Standards Authority (ASA) to handle complaints and consider legal sanctions. Perhaps the USPTO will follow suit in 2014?

What to look for in 2014. As the economy continues to grow slowly, it is likely that the number of new trademark applications will continue to rise. Expect even more trademark disputes to go viral via social media.

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 1,900 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2013, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association, Catholic University School of Law, and two high school classes.

When considering new names for a business, or for new  products or services – or even when filing to protect a existing name – it is always a good idea to review your domain names first.

Once an application is filed with the USPTO, the information is publicly available. Someone, or some computer crawler, may find the new brand name within a matter of hours or days and register any corresponding domain names. They do this because you may want the domain names in the future. And it may be easier to pay them rather than to fight them. Or it may be difficult to challenge their ownership of the domain name(s) if they are not really in use. And if even if do not use the domain names, you won’t have to worry about the risk of someone else using them.

You should register the domains first – before filing with the USPTO – to block them (at least the .com’s but maybe others too). Even if you are unlikely to ever want to use the domain names, the cost of registering them – a few dollars a year – far outweighs the costs of buying them from someone else, filing a dispute against someone else, or losing web traffic to someone else.

Bonus Tip: if applicable, also register the corresponding social media usernames for Twitter, Pinterest, Facebook, etc. if only to make sure that no one else uses them.

ERIK PELTON® is now a registered trademark

Posted by ipelton on: September 17th, 2013

As I have written many times here before, I believe it is very important to practice what you preach. So our firm owns multiple trademark registrations for our brands – our logo, slogans, newsletter name, this blog name, our app name, and more.

Our most recent registration is for ERIK PELTON®. I registered this name because it correlates to the erikpelton.com domain name, which is our primary online home. And because as new top-level-domains are introduced in the next year, I want to be able to protect “erikpelton.whatever”.  What I mean by this is that I don’t want anyone to be able to register erikpelton.email or erikpelton.app or erikpelton.wiki or erikpelton.blog or anything else along those lines. Of course, even without a USPTO registration for ERIK PELTON® I probably could have sued or blocked someone trying to use one of the domains. But now that I have trademark registration I can submit the trademark to the Trademark Clearinghouse which will make it easier, quicker, and cheaper to block any such attempts. Stay tuned for updated on the Clearinghouse process as I go through it for ERIK PELTON®.

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This registration brings my count to 11!

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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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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]