Trademark Report: Highlights from 2011 and Looking Forward to 2012

February 10, 2012

Christina M. Licursi, Douglas R. Wolf

2011 Highlights

2011 was a very active year in the world of trademarks. Notably, applications for new trademarks increased over 6% in the last year.

Political Trademarks

Several news stories this past year focused on trademark protection surrounding major news-making events. For example, 2011 was the year of the Occupy Movement, an international protest movement initially directed primarily against economic and social inequality. Everyday people, merchandisers, and others sought to capitalize on the sensation by trademarking phrases associated with the movement, such as WE ARE THE 99 PERCENT, OCCUPY, and OCCUPY DC 2012.

The Wall Street Journal and other outlets ran front page stories on the branding side of the phrases. However, most if not all, of the applicants were pro se or had very little understanding of the trademark system. In fact, while most occupiers have now been kicked out and the movement appears to have lost substantial steam, the applications are still pending, and the potential rights are likely to have limited commercial value.

Trademarks are not like real estate – particularly when one is dealing with expressions on a t-shirt. Grabbing trademarks for the hope of making everyone pay a license fee is far from reality and will ultimately result in lessons for the applicants occupying space at the Trademark Office without much of a plan.

Foreshadowing the 2012 election year, 2011 marked an uptick in trademark applications by politicians. While Sarah Palin’s political future is unclear, she clearly has her sights set on exploiting her residual fame which started in 2008. Both she and her daughter, Bristol, applied for and received registrations for their names. SARAH PALIN is now registered in connection with "information about political elections" and "providing a website featuring information about political issues" and for "educational and entertainment services ... providing motivational speaking services in the field of politics, culture, business and values." BRISTOL PALIN is registered for "educational and entertainment services, namely, providing motivational speaking services in the field of life choices."

Irrespective of personal opinions of the Palins, obtaining a trademark registration for their identities is a critical and underused strategy among well-known people. The registrations have obvious value for licensing, but possibly more important is that registration often provides the best basis to preclude use of the name on social media where many of the platforms give complete deference to trademark registrations.

Even the President filed trademark applications in 2011. President Obama’s re-election committee, Obama for America, registered several trademarks including various iterations of the Rising Sun logo trademarks. Obama for America has been active in enforcing the marks, too, suing unauthorized merchants for trademark violations arising from the sale of unauthorized merchandise. If the campaign's claims are accurate, damages to the promotional products company could be substantial. Notably, the sale of the merchandise featuring the Rising Sun logos makes up a significant portion of the campaign’s revenue.

Celebrity Trademarks

It seems that Paris Hilton started yet another Hollywood trend when she trademarked “THAT’S HOT”, and other celebrities are following suit. During his public meltdown, Charlie Sheen sought to protect some “winning” brands by filing applications for 22 of his catchphrases from his tumultuous year. Not to be outdone, the Kardashian’s have continued to grow their empire by filing more than 40 trademarks in 2011.

Perhaps the highest profile trademark related dispute of 2011 centered around Abercrombie & Fitch’s dispute with Mike Sorrentino, a star of MTV’s reality show, “The Jersey Shore”. Abercrombie & Fitch released a statement in 2011 stating it was "deeply concerned" that Jersey Shore cast member Mike "The Situation" Sorrentino shops at its stores and wears its logoed apparel on the controversial show. In fact, Abercrombie offered Sorrentino a substantial sum to stop wearing its clothing, stating that, “Mr. Sorrentino's association with our brand could cause significant damage to our image." Sorrentino responded by suing Abercrombie for violating his trademarks, using deceptive advertising and misappropriating his publicity rights. Ironically, one of A&F’s most popular products last year was a t-shirt parodying the show with the word “Fitchuation” appearing across the center of the shirt.

Domain Names

2011 marked the continuing evolution of the internet, with two notable rulings by the Internet Corporation for Assigned Names and Numbers (ICANN).

.XXX domain names. Earlier in the year, ICANN opened up registration of .XXX as a top level domain name (TLD), joining others like .com and .net. In early September, the ICM Registry, home to the .XXX domain names, kicked off a sunrise period that let trademark holders claim certain domains before .XXX was opened to the public in December. ICM reported that the sunrise period garnered 80,000 applications for new .XXX domain names. Not without controversy, ICANN has already been sued by a prolific adult website company arguing that .XXX amounts to a monopoly that adds unnecessary costs to businesses operating in the space.

New Generic Top Level Domain Name (gTLDs). In June 2011, ICANN voted to open up the limited number of generic top-level domain names. As a result, companies and organizations, subject to substantial infrastructure requirements, will be able to create top level internet domains, essentially changing the face of the internet (.cars, .bank, etc.). The changes to the rules have elicited mixed reactions from brand owners and policy makers alike. The FTC, which has considered that the new gTLDs could create an increased opportunity for consumer fraud, has urged ICANN to open a pilot program to test the security of the system, among other safeguards. We can expect that the new gTLDs will be among the biggest trademark stories in 2012.

ICANN will begin accepting applications for new gTLDs in January 2012 with an expected launch in 2013. The initial price to apply for a new gTLD will be $185,000, with an annual fee of $25,000. With the additional requirements on the owner, we expect the real costs will be much higher.

What’s Ahead for 2012

While there are no particular Supreme Court cases on the horizon for 2012, we expect that social networking litigation will continue to push trademark case law. We are aware of cases involving ownership of social media content as well as a well-publicized pending case regarding ownership of a Twitter account.

We have also seen some continuing discussion regarding search engine optimization trademark infringement which is an off-shoot of the keyword cases we have seen over the last few years.

Finally, as noted above, changes to the domain name system should provide fodder for additional issues in 2012 and beyond.

Still, for all of these matters, obtaining a basic trademark registration seems to provide the best way to codify rights in all of these evolving areas of dispute.