Joe Carrafiello

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Joe Carrafiello helps clients protect and expand their intellectual property portfolios and advises on legal issues relating to marketing and advertising matters. Joe provides strategic guidance to assist clients in defending their global assets — he has represented clients of all sizes in the life sciences, pharmaceutical, consumer retail, consumer electronics and appliances, insurance, fashion, beverage and financial industries.

View the full bio for Joe Carrafiello at the Faegre Drinker website.

Posts by Joe Carrafiello


The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?

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Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and Trademark Office’s (“USPTO”) recent decision1 to grant federal trademark registration No. 6,763,118 to Ohio State for the most popular word in the English language2 has garnered much mainstream media attention and confusion. This blog post provides a brief overview of the background and potential implications of this registration.

How did Ohio State register such a common word?

Ohio State first applied to register the word THE in 2019 in connection with Clothing, namely, t-shirts, baseball caps and hats3. The application was initially refused4 by the USPTO because: (1) a third-party clothing company had already filed an application for the word THE beforehand; and (2) because the mark was “merely ornamental” (in other words, the USPTO believed that THE did not function to indicate the source of Ohio State’s clothing goods). Ohio State eventually overcame those issues by submitting evidence and images to demonstrate that THE had source-indicating function, and by entering into a consent agreement with the third-party clothing company5. With these issues both resolved, and no additional refusals or challenges being raised, the USPTO granted a federal registration to Ohio State for THE on June 21, 2022, to many commentators’ surprise.

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Considerations for Applying to Register Trademarks in Connection with Virtual Goods and Services ‒ An Overview on Protecting Your Brand in the Metaverse

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Due to the sheer volume of recent media coverage, readers of this blog are likely familiar with the “metaverse,” or the idea of a virtual world where users can interact with an immersive computer-generated environment, objects, and other users. But why does anyone care about trademarks in the metaverse? Put simply, trademarks are almost certain to insert themselves in several scenarios in these immersive environments that are designed to be an extension or replica of the real world, such as:

  • Creation of virtual shops to buy branded “virtual” goods;
  • Branded virtual services, such as fitness classes, concerts, performances, or sporting events;
  • Product placement, such as virtual characters wearing branded virtual goods or display of virtual advertisements within the metaverse; and
  • Real and virtual combination marketing, where buying a real-world product allows the user to obtain a copy of the product in the virtual world as well for use in the metaverse.

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Launching a Sweepstakes or Contest on Social Media – What You Should Know

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As discussed on our blog previously, here and here, a promotion sponsor must finalize Official Rules before a promotion begins. But using a third-party social media platform to administer your promotion or accept entries raises additional issues that must be considered, particularly when the promotion involves the submission of user-generated content (“UGC”).

Using a social media platform to administer your promotion raises two additional issues: (1) ensuring compliance with the platform’s specific promotion requirements; and (2) ensuring that the sponsor is protected from liability if the promotion involves UGC. This blog provides a high-level overview of issues to consider before administering your promotion on a third-party social media platform, and in particular when your promotion involves submission of UGC.

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Trademark Modernization Act of 2020: Part 4

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The fourth blog post in our continuing series on The Trademark Modernization Act of 2020 (TMA) comes on the heels of the July 19, 2021, deadline for the public to submit comments on the proposed rules. As discussed by our TCAM blog here, here, and here, the majority of the TMA is to take effect on December 27, 2021, with the flexible response period provisions following in 2022. This blog post highlights some of the proposed rules relating to attorney recognition, revocation, and withdrawal.

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