Congratulations! Your company just acquired a batch of trademarks from a third party. There are a lot of minutiae to manage, so how do you decide what to do first? Here are some suggestions for actions you may want to prioritize.
It is an all-too-common occurrence: The phone rings and a panicked client on the other end of the line has been impacted by an online fraud. Fraud on the internet is carried out daily, with new and inventive methods of attack being put into practice to mask and conceal the crime at hand until it is “too late.” While we have all learned to identify and avoid certain suspicious behaviors, bad actors continue to develop new and inventive ways to procure sensitive data, receive payments under fraudulent pretexts and otherwise perpetrate crimes with the benefit of the relative anonymity and obscurity that is afforded by the internet.
According to the 2021 report from the FBI’s Internet Crime Complaint Center (IC3), the IC3 alone received more than 2.75 million complaints and reported losses of $18.7 billion from 2017 to 2021. See Federal Bureau of Investigation, Internet Crime Report 2021. Broader studies seeking to understand the global impact of such activities suggest total losses actually range in the hundreds of billions per year, depending on the study. Regardless of the source, one thing is clear: The cost of frauds resulting from spoofed websites designed to collect sensitive consumer data, email account compromise designed to extract payments from unwitting customers by sending apparently legitimate requests for invoice payment, and even more involved frauds are impacting clients by costing them real dollars, damaging their reputation and customer relationships, and otherwise putting a strain on their ability to conduct business.
As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.
What is ornamental use?
Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.
We all know a picture is worth a thousand words, but did you know a trademark can be worth BILLIONS of dollars? In fact, some of the top trademarks in the world are worth hundreds of billions. What’s the secret to this branding success? A strong trademark!
A trademark serves many purposes. Two of the more important purposes are: (1) identifying the source of a company’s or individual’s goods or services; and (2) indicating to consumers the quality or type of goods or services identified by the mark. Consumers rely on trademarks to make informed decisions about the goods and services they purchase or use.
Since Halloween candy is already in stores (why…?), we‘re here to tell you some trademark tales that are sure to make you shiver – if you care about your pocketbook, that is. We’ve encountered these spooky situations – with worldwide implications — when we’ve been brought in to clean up. (Who you gonna call? Faegre Drinker!)
This time last year, we introduced a series of blog posts in which we provided an overview of the new ex parte examination and expungement proceedings introduced by the Trademark Modernization Act (“TMA”) and pondered a question sure to be on the minds of many a practitioner – will these proceedings truly be a faster and more efficient vehicle for removing improper trademark registrations from the registrar? While the answer to this question is yet to be seen, the first six months of proceedings have provided some insights to consider when assessing whether an expungement or reexamination proceeding is the right option for you.
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.
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.
So you’re launching a new product line worldwide. Or maybe you’re rebranding a division of your global business. Or perhaps you’ve recently conducted an audit of your trademark portfolio and noticed several gaps in coverage.
Regardless, you’re ready to file new trademark applications around the world ‒ and we’re sure you want to make these filings as efficient and cost-effective as possible.
One way to keep costs down is to take advantage of trademark application filing systems that cover multiple jurisdictions. These systems allow you to register a trademark in more than one country by filing only a single application.
Western companies with trademark rights in Russia are feeling the ripple effects of the Ukrainian conflict. In response to the economic sanctions and boycotts imposed by the U.S. and other Western countries, Russia has threatened to suspend the intellectual property rights of companies that have ceased operations in Russia. Additionally, there has recently been an increase in bad faith trademark filings for various brands across a wide range of industries from Chanel to Audi. Moreover, it appears that Russian courts may allow the infringement and misappropriation of trademarks owned by Western companies in light of a recent decision involving the character Peppa Pig, where the court cited sanctions as a basis for refusing to recognize the Western-based company’s intellectual property rights in the popular cartoon character.
Even those businesses with longstanding ties within Russia don’t appear to be safe. Certain companies closing locations in the country in response to the conflict in Ukraine are finding that third parties are filing trademark applications for blatant replicas of their brands. Even more disturbing is that should the Russian government decide to remove trademark protections for Western companies altogether, then a third party could step in and offer goods and services under identical marks. Depending upon how things play out in Russia, Western brand owners are in serious danger of losing their intellectual property investments in the country. Exacerbating the problem for these brands is that finding local counsel willing to assist them may be extremely difficult. Fear for personal safety and the threat of retribution may encourage many trademark attorneys in Russia to steer clear of matters involving companies from “unfriendly” countries.