ALS Association Files and Withdraws Trademark Application for “Ice Bucket Challenge”

If you have been on any type of social media in the last couple of months, you have undoubtedly seen or been called out for the “ice bucket challenge”. The rules of the challenge require a person challenged to either get doused with ice water and pay $10 to charity or refuse the ice shower and make a $100 charitable donation. Over the summer, the challenge became strongly associated with support for the disease ALS (amyotrophic lateral sclerosis). As the popularity of the challenge surged, the ALS Association considered whether a trademark application to protect the challenge was appropriate. After first deciding that the group should protect the mark, it has since reconsidered and withdrawn its trademark application.

On August 22, 2014, the ALS Association filed trademark applications on “Ice Bucket Challenge” and “ALS Ice Bucket Challenge”. Both trademark applications were filed in the class covering charitable fundraising. Reaction to these trademark applications was mixed. Several commentators compared the filing to those who sought trademark registration on “Boston Strong” after the Boston marathon bombing. They claimed that ALS wasn’t the first charity to use the ice bucket challenge and that it should be left to all rather than controlled by one group. In response, the ALS Association made a statement saying that it was seeking trademark registration to protect the term from unscrupulous individuals who were looking to profit off of the popularity of the challenge. T-shirts and similar merchandise are a quick buck for someone looking to capitalize on a popular trend.

After further consideration, however, the ALS Association decided it was in the best interest to abandon the applications. It is unlikely that registrations for Ice Bucket Challenge would have been allowed. The use of the phrase is widespread by individuals that its use has become ‘ubiquitous.’ Whether a term or slogan functions as a trademark or service mark depends on how it would be perceived by the public. The Ice Bucket Challenge mark really just conveys an informational social or similar kind of message and does not function as a trademark or service mark. In any event, it appears the term will be open for all to use. While this may lead to some unprincipled individuals cashing in on commercial opportunities around the challenge as the ALS Association suggested, hopefully that will be outweighed by other charities piggy backing on the success that the ALS Association enjoyed from the viral nature of the challenge and raising money for a good cause.

As highlighted by this situation, trademarks can be tricky. When and how a trademark should be used or whether trademark registration should be sought is not always cut and dried. If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let their experience protect your valuable brand.

USC Football Coach Sarkisian Seeks Trademark Registration on His Name

The business of college football is big. At a time when the upper level conferences are seeking to break away from the NCAA to consolidate TV revenue and power, the money surrounding college football has never been greater. And unlike professional sports where the elite players are the stars, in college football the most identifiable representative of a particular university is often the coach.

Coaches at the big universities sign contracts for millions of dollars. The coach becomes the face of the program. This notoriety is prompting coaches to cash in on their image. One way they are seeking to do this is by protecting their names through trademark registration.

One such program where this opportunity exists is the University of Southern California. The school has a storied football program. Being the head football coach at USC thrusts you right in one of the brightest spotlights of all of college football. This fall, Steve Sarkisian enters his first season as head coach at USC. Taking on such a high profile gig, Sarkisian will be highly visible and if he’s successful, will have the opportunity to cash in on his name. That’s why his company, Sark Enterprises, recently filed a trademark application on “Sark” in the classes covering clothing and sports and entertainment related websites.

Sark’s trademark application was filed at the end of 2013. It was filed as an “intent-to-use” application. This means that the actual mark, “Sark”, had not yet been used in commerce. In order for a trademark application to register, an applicant has to show that he has actually used the mark in interstate commerce. Sarkisian’s application was examined by the Trademark Office and no conflicting marks were found. This led to a Notice of Allowance and upon a showing of actual use in commerce, the trademark application will mature into a trademark registration.

Armed with a trademark registration, Sarkisian will be able to prevent others from using his name commercially without his permission – at least with respect to the goods and services identified in any registration. If he’s a winner at USC, he stands to make significant money licensing his brand. And Sarkisian isn’t the only high profile head coach looking to do this. Urban Meyer and Dabo Swinney are a few of the coaches that have also filed trademark applications to protect their name. As the money around college football increases, you can be sure that more of the recognizable faces will seek to protect their personal brand through trademark registration.

If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let their experience protect your name.

Louis Vuitton Accused of Infringing Atlanta Based Shoe Designer’s Toe Plate Trademark

When you think of Louis Vuitton, you probably think of a trend-setter, a brand that is on the forefront of fashion. In most cases this is probably true, but recently the fashion behemoth may have been just a little late to the party. The French company is being sued for trademark infringement by an emerging Atlanta based shoe designer, Antonio Brown, who claims that Louis Vuitton has been copying his unique toe plate design and causing consumers to be confused about which design is which.

Brown, a one-time accountant, launched a luxury line of shoes under the brand name LVL XIII in 2013. The shoes have been a tremendous success, boosted in large part by several celebrities sporting Brown’s footwear. LVL XII shoes are distinguished by a metal plate fastened to the toe with the brand name engraved on it. Within the first two months of launch, LVL XIII sold over $500,000 worth of merchandise.

With such quick success, Brown wisely filed a trademark application on the distinctive toe plate design by which his shoes have come to be identified. Brown’s trademark application claims use in commerce of the toe plate design back to August 2013. His toe plate trademark application has not yet matured into a trademark registration, but it seems to only be hung up on a technicality with the Trademark Office. If Brown can overcome the issues raised in the latest office action issued by the USPTO, he should receive a trademark registration on his toe plate.

Trademark registration may mean trouble for Louis Vuitton. The degree of trouble will depend on whether the mark registers on the Principal or Supplemental Register. Registration on the Principal Register means a legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration. Even without a completed trademark registration, through use of the identifying mark in commerce, Brown may have secured some enforceable common law trademark rights. And with an upcoming federal trademark registration pending, Brown’s case may be further bolstered. Of course, Louis Vuitton could file a Notice of Opposition once the application publishes and oppose the registration.

Brown has filed a federal trademark infringement lawsuit against Louis Vuitton claiming that its “On the Road” sneaker violates LVL XIII’s trademark by using a metal toe plate. Brown claims that this use causes consumer confusion leading consumers to believe that LVL XIII is actually the copycat and that Louis Vuitton must have had it first. This is known as reverse confusion – when consumers are likely to be confused that the smaller company that was actually first to use the mark copied the larger, more well-known company when in fact the opposite may be true. Brown is seeking an injunction to stop Louis Vuitton from selling any more shoes with the toe plate and for damages based off of the profits that Louis Vuitton has earned through sales of the alleged infringing shoes.

Setting yourself apart and creating a strong brand that identifies your company is critical in business. Protecting that brand through trademark registration is just as important. An upstart business like LVL XIII can get wiped out without the protection that trademark registration provides. If you have questions about the trademark process or are ready to file a trademark application, please contact the trademark attorneys at Trademark Access. Let their experience protect your valuable brand.

No “Zilla” Confusion: Zillow Loses Opposition to LoanZilla Trademark Application

No “Zilla” Confusion: Zillow Loses Opposition to LoanZilla Trademark Application

The online real estate database Zillow flexed its muscle recently with the announcement that it will acquire its competitor Trulia for $3.5 billion, giving it about 61% of total home listing internet searches. With such power Zillow is established as a force to be reckoned with. Unfortunately for Zillow, its might doesn’t hold much influence over the U.S. Patent and Trademark Office (USPTO), which recently rejected Zillow’s opposition to LoanZilla’s trademark application. The Office determined that there is no likelihood of confusion between Zillow’s registered trademark and the LoanZilla mark that LoanZilla applied to register.

The dispute began when LoanZilla filed a trademark application on its name in 2011 in the class covering mortgage brokerages. It claimed use in commerce back to May of 2010. The mark was examined and no conflicting marks were found by the trademark examiner. But before a trademark application can mature into a trademark registration, the mark must be published. This provides notice and an opportunity for anyone to oppose registration of the trademark. LoanZilla’s trademark application published in October of 2011. During the publication period, Zillow filed a Notice of Opposition claiming that the similarity of the names would cause confusion between the real estate database and the mortgage broker.

An opposition proceeding is adjudicated by the USPTO’s Trademark Trial and Appeal Board (“TTAB”). In an opposition, the TTAB evaluates likelihood of confusion between the two marks using the “DuPont factors”. These are established factors, including similarity of services and names that are applied to evaluate whether consumers are likely to be confused between the brands.
In the case of LoanZilla, the TTAB compared the services and found that although not identical, there is some overlap between the services of the two companies. While the TTAB held that the similarity of the services weighed in favor of a finding of a likelihood of confusion, it also found that many of the other DuPont factors weighed against a finding of likelihood of confusion. In particular, the TTAB found that the term “zilla” found in the LoanZilla mark is most often associated with Godzilla and stated “as a result the two marks create substantially different overall commercial impressions.”

The difference between the marks in commercial impression weighed against a finding of a likelihood of confusion. Determining that consumers are not likely to be confused between the two brands, the TTAB rejected Zillow’s opposition to LoanZilla’s trademark application, allowing the mortgage broker to move forward with its trademark registration.