Posts Tagged ‘Facebook’

A Facebook friend of client (a non-attorney) posted a question on Facebook regarding a potential trademark dispute, asking her friends to weigh in with their opinions as to whether it might be an infringement. The summary of the facts (no doubt missing some of the details) concluded with a request: Appreciate your thoughts and want to explore before I call my own attorney.

Here was my response:

I am a trademark attorney. And while I won’t comment here on the particulars, I would note that seeking input from others about a potential legal situation on FB is probably not the best idea. In a worst case scenario you could say or learn something via the post that could come back to harm any potential claims down the road.

I didn’t even get into other issues, like attorney-client privilege that could be waived if the poster’s attorney actually commented on it, or laches/acquiescence that could begin to toll more now that it has been made public that the poster is aware of the issues.

This is not the first time I have exhorted someone on Facebook not to share their potential trademark issue. Sharing it has a lot of potential downside, and little potential upside. What if dozens of people comment and almost all think that there is no infringement. And what if the alleged infringer sees that post or finds it later!? If they receive a “cease and desist” letter, I can only imagine the reaction.

And could a Facebook post be the basis for a declaratory judgment action? Probably not, but worth considering.

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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.

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“Want” trademark issues?

Posted by ipelton on: December 11th, 2012

Guest post by (recently sworn-in attorney and former Erik M. Pelton & Associates intern) W. Reid Morris:

Social media websites are a dime a dozen these days. A lot of them  include imbedded links that allow users to quickly share an article, product, or image on your preferred social media platform. While some websites imbed only a few of the most familiar channels for sharing their content, others provide hundreds of different social media channels for sharing content. I came across one site which provided 328 different options for sharing the site’s content on various social media platforms that span the globe, with everything from AmenMe! and Baang to Yuuby and ZingMe.

There are the platforms that most Americans have heard of like Facebook, Twitter, and Pintrest which allow you to “Like”, “Tweet”, or “Pin It” when you find something that interests you. Of course, there are other options like Tumblr and Reddit where you can share your finds with the respective online communities. These social media sites share some similar features while striving to deliver things a little bit differently in an effort to distinguish themselves and gain market share. One feature that they all share is strong brands built around great trademarks and brand names.

Last month, Facebook lawyers filed a response to a trademark infringement suit filed in the US District Court for the Eastern District of Michigan by an undoubtedly smaller social media competitor, Want, as found at It seems that Want’s service is naturally based around a “Want” button, and Facebook recently tested a new feature allowing their users to “Want” something by clicking a link. This service goes in addition to the existing actions Facebook let users digitally engage in like “Share”, “Comment”, “Like”, or “Promote”.

[a “Want” button from]

Want’s complaint included information about a number of federal trademark registrations that the company owns for the term WANT. Facebook’s response to the claims made by Want in relation to their registered trademarks was that Want does not own any rights in the term “want.” How could this be if Want has valid federal trademark registrations for WANT?

I am of the opinion that the lawyers at Facebook are not too worried about this one because Want is skating on pretty thin ice with their registered trademarks. For Want’s registered trademarks to do them any good in court, the court will have to find that 1) that the registrations cover the type of use that Want claims Facebook infringed, and 2) Facebook did, in fact, infringe on the mark in their use of their own “Want” button.

Unfortunately, Want has built their brand, as it currently appears to exist, around a terrible trademark. Want must have been either swinging for the infield when they went about developing their brand or they failed to consult a trademark attorney. In terms of the way that social media operates, a “Want” button, is extremely descriptive of the function it performs. To try to build a brand around an unquestionably descriptive and arguably generic term is almost always going to be bad for business.

The lesson to take away is that one of the keys to building a strong brand in a national and often global marketplace is having a unique and identifiable brand name that you can exclusively own. The best way to go about doing this is to consult a licensed trademark attorney who can help you identify, develop, and protect your brand name so that you can be on the path to becoming the next Facebook®.

[Editor’s note: Facebook has itself registered “Like” as a trademark for a feature that allows users to share the fact that they like something online, which makes it ironic that part of Facebook’s defense against “Want” is to note just how prevalent the term is.

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Erik M. Pelton & Associates has 1,000+ “Likes” on Facebook!

Posted by ipelton on: November 14th, 2012

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