Trademark Watch: dotSucks, Versace, Stephen Hawking

FacebookTwitterLinkedIn

dotsucks_video_ralph_nader_600

.SUCKS is open for business!

The controversial .sucks domain extension went live this week, and for brand owners that want to avail of the “sunrise” registration period (domain names matching their trademarks), the price is $2,499. Oh, and that would be renewable annually at the same rate. When “general availability” opens on June 1, the cost drops to $199—but this doesn’t apply to sunrise names. As it stands, brands are faced with either paying $2,499 per year to register, or not register and hope cybersquatters are equally turned off by the cost.

But there’s more: The “consumer advocate subsidized” option opens in September, allowing individuals—but not brand owners or individuals affiliated with the corporation the domain is referencing—to register a domain for $9.95 that then points to a ‘everything.sucks’ forum. This would be in a Ralph Nader-approved effort to allow consumers to exercise their free speech, according to the registry that runs the .sucks extension, Vox Populi. Taylor Swift is taking no chances, and neither is actor Kevin Spacey—both have bought .sucks domains to protect their reputations. Google, Apple and Microsoft reportedly agree.

versace_tshirt_selfridges_kesh_600

Versace tees off American Apparel  designer

A David and Goliath brand trademark spat made news this week, with Versace facing the wrath of an independent designer. A $650 Versace t-shirt sold by upmarket UK retailer Selfridges was strikingly similar to a $30 version American Apparel sold back in 2013. Kesh, the designer of the tee sold by America Apparel, found out from a friend and took her outrage to Instagram. “Why can’t these companies. these brands. these people create their own work?” she asked her followers. She followed up to say about her American Apparel collaboration, “my AA collab was 4 u. affordable and accessible. 4 the love.” She might add “4 the money” soon as her lawyers are planning to sue.

Kentucky Wildcats / 40-0

Kentucky is going for 40! One of their road blocks may be Duke or Michigan State. Another road block could be David Son, as ESPN notes. Though not affiliated with Kentucky, he filed for the “40-0” trademark in February. According to his lawyer, “My client took all the steps he needed to take to establish ownership of 40-0. There’s no evidence that the University of Kentucky owns any rights to 40-0.” Although Son is willing to work with the university, by the look of the cease-and-desist letter, the University of Kentucky wants Son to set a precedent and back down.

Stephen Hawking™

Many celebrities have turned their names into brands, but how often do you hear of a scientist making their name a brand? For charitable purposes, Stephen Hawking, 73, whose life was depicted in the acclaimed biopic The Theory of Everything, is seeking a trademark registration from the UK’s Intellectual Property Office to register his name to cover anything from publications to greeting cards to educational services. A spokesman for Cambridge University told London’s Sunday Times: “It’s a personal matter, it is not a university issue, but he has taken measures to protect his name and the success it has brought.”

Facebook vs Flybook

A Korean startup’s name won’t fly with Facebook. The social media giant’s attorneys sent a cease-and-desist letter to Flybook demanding the company limit its business to books and electronic publications. The startup allows users to recommend books to friends, who can also send the book as a gift to another user via its app. A fair warning to any others looking for names that begin with “F” and end with “book”—or is Facebook guilty of trademark bullying or great trademark protection?

ASOS not guilty by Assos-ciation

When you’re named Assos and a brand called ASOS encroaches on your territory, you’d probably think you have a strong case for trademark infringement. But this week the English Court of Appeal found ASOS, the popular online retailer, not liable for infringement—even though it ruled there was a likelihood of confusion and that it had caused damage to the “distinctive character” of the Assos brand. But because ASOS is an acronym of “As Seen On Screen” (its original name), the company was able to use the “own name” defense, which was accepted by the court as honest use, in a 2-1 verdict. However it’s not over yet: Assos plans to appeal, and the words of the dissenting judge should be heeded: “There is nothing to indicate that an ability to use one’s name for marketing purposes is regarded as fundamental right.”

Put it on our TTAB

Internet chatter was abuzz over the SCOTUS ruling that will substantially impact how trademark disputes are handled in the US. The Trademark Trial and Appeal Board (TTAB) is a body within the US Patent and Trademark Office that rules on cases regarding the registration of trademarks, and whose decisions could be appealed to a district court or the Court of Appeals for the Federal Circuit. Following the SCOTUS decision, TTAB rulings now can preclude a federal district court from making its own determination on that issue, as long as the ordinary elements of issue preclusion are met. So TTAB proceedings just got a lot more important and carry greater weight, because it’s no longer just the right to register that is at stake.

—Jerome McDonnell contributed to this week’s trademark news round-up

FacebookTwitterLinkedIn