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Interesting play-on-word trademarks: _____ Happens

Posted by ipelton on: October 5th, 2013

Here are some great variations on the phrase”Sh__ Happens” filed as trademarks with the USPTO:

[click mark for USPTO records]

  • STITT HAPPENS – pending application for clothing filed by Robert Stitt. According to Wikipedia, “Robert “Bob” Allen Stitt is the head football coach for the Colorado School of Mines. He is nationally known as the innovator of the Fly-Sweep play and his unique offensive mind.”
  • IT HAPPENS – pending application for “Plastic and paper bags for disposing of pet waste”
  • SIT HAPPENS – pending application for “wheelchair cushions, wheelchair pads, headrests for use with wheelchairs, amputee support devices for use with wheelchairs, lap trays for use with wheelchairs, backrests for use with wheelchairs, lateral supports for use with wheelchairs, hardware for use in attaching accessories to wheelchairs”
  • lit-happens – registered for “Legal consulting services in the field of litigations and legal trials”
  • SHIFT HAPPENS – registered for “Dental services, namely, orthodontic services”
  • split happens – registered for “Shampoos, conditioners, non-medicated hair serums, hair care preparations, styling gels, hair styling mousses and hair styling preparations”
  • FIT HAPPENS – registered for ‘Providing recreational facilities and health club facilities, namely weight and aerobic training, cardiovascular fitness training, yoga and martial arts training”
  • SPIT HAPPENS - registered for “baby bibs”

Tip: Using puns and plays on words are great ways to create catchy, memorable brands!

 

How a great slogan works: “Your Nine Inning Vacation”

Posted by ipelton on: October 1st, 2013

Over the summer, I found this terrific slogan at a minor league baseball game:

"Your Nine Inning Vacation"

“Your Nine Inning Vacation”

Why it works:

  • It is short and simple.
  • It creates a visual in my mind: sitting at a baseball game and enjoying it.
  • In a few short words, it communicates a message: come here for a ball game it is like a miniature vacation — away from work and all the other stresses in your life.
  • It is connected to primary services offered: minor league baseball.

The only drawback is that the Portland Sea Dogs have not filed to register the slogan yet!

Great pun trademarks

Posted by ipelton on: April 24th, 2013

Puns make great playful suggestive trademarks.

A recent piece on MSN Now features photos of some great such names. For example:

- MERCHANT OF TENNIS

- BACK TO THE FUTON

- BREWED AWAKENING (coffee shop)

- CURL UP A DYE (hair salon)

- PLANET OF THE GRAPES (wine shop)  

- SPEX IN THE CITY (glasses?)

- TEQUILA MOCKINGBIRD

- WOK THIS WAY

- THE LEANING TOWER OF PIZZA

And how about the Vietnamse noodle shop, PHO SHO! In fact there are a lot of great PHO puns, including 9021PHO:

90210PHO photo from https://www.facebook.com/9021PHO

 

 

 

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.

Home

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]