United States: Thoughts On The Creation, Protection, And Enforcement Of Brand Identity

Last Updated: June 5 2013
Article by John C. Blattner

DON'T FALL FOR THIS CHINESE DOMAIN NAME SCAM

Sooner or later (probably sooner - I've seen a flurry of these recently), someone in your organization is going to get an ominous-sounding email something like this:

Dear CEO/Principal,

We are the department of registration service in China. we have something need to confirm with you. We formally received an application. One company which called "XYZ Investment Limited".are applying to register "[your trademark]" as net brand and some CN domain names. After our initial examination, we found that the net brand applied for registration are as same as your company's name and trademark. If your company has not authorized the aforesaid company to register these, Please contact us as soon as possible.In addition, we hereby affirm that our time limit for dissent application is 7 days. If your company files no dissent within the time limit, we will unconditionally approve the application submitted by "XYZ Investment Limited."

The sender of the message reproduced above (with some elements changed) was not an official agency at all, just a domain name registrar trying to scare one of my clients into spending too much money on obscure domain names the client didn't need. It looks like a classic protection racket: "Pay us to spare you the calamity we will otherwise bring down upon you." But the threat is hollow - the alleged infringer ("XYZ Investment Limited") is almost certainly a complete fabrication, not someone who actually wants to register your trademark as a domain name. Even so, I've had several clients become alarmed by messages like this.

The giveaway (aside from the pidgin English) is the reference to the sender's "initial examination" of the third-party application, and the "discovery" of my client's trademark rights. The fact is that domain name registrars do not - repeat, do not - examine proposed domain names, or investigate anyone's trademark rights. Applying for a domain name is a purely automated process. If the particular string of letters and numbers you want isn't taken, it's yours - whether it infringes someone else's trademark or not.

When you get an e-mail like this, ask yourself whether you really need any domain names with the China national suffix (".cn"). You probably don't: Dot-com web sites are readily accessible in China, which like all other countries in the world uses the ".com" suffix more than any other. And ".cn" domain names are actually quite complicated and expensive to obtain. If you do have reason to pursue a ".cn" domain name, ask your trademark attorney to put you in touch with a reputable agent in China. Otherwise just hit the "delete" button on the bogus solicitation.

18 HOLES' WORTH OF BRANDMARKING HISTORY

A recent Saturday morning found your intrepid correspondent boarding a pre-dawn motor coach bound for a ritzy golf course in the oil-rich suburbs of Dallas, Texas.

It's called Tour 18, and it's one of a growing chain of courses at which every hole is a life-size replica of a hole from some other well-known course that is steeped in PGA Tour history. At the Dallas Tour 18, for example, the ninth hole is a virtual carbon copy of the island-green No. 17 at TPC Sawgrass, where the best golfers in the world routinely plop wedge shots into the water during The Players Championship. The three finishing holes at the Dallas course are replicas of Augusta National's infamous "Amen Corner." And so on.

So what, you ask, was I doing on this pilgrimage? Simple: conducting legal research.

The first Tour 18 course opened in 1992, and soon became the subject of (what else?) a lawsuit. The plaintiffs were the owners of the renowned Pebble Beach, Sea Pines, and Pinehurst golf courses, who felt that their "trademark" holes were - well, were their trademarks. The courts disagreed, which is why the original Houston course has since been joined by similar tracks in Dallas and elsewhere. This rich legal history made Tour 18 the perfect venue for an outing sponsored by participants at the 2013 Annual Meeting of the International Trademark Association, attended by almost 10,000 branding professionals, including yours truly.

I can't tell you my score, because we played as teams rather than as individuals. I can, however, tell you that these golf holes didn't become famous for being easy, and that if I had played my own ball my score would have been stratospheric. As it happens, my team won, but I had very little to do with that. (I did, however, safely land my ball on the ersatz TPC Sawgrass island green. Take that, Sergio!)

WHO OWNS "BOSTON STRONG?"

In the wake of the April 15 bombings during the Boston Marathon, the phrase "Boston Strong" became a rallying cry for the city's gritty resolve in facing the aftermath of the attack. Proving once again that no cultural meme goes unexploited, the phrase also became a popular would-be trademark. Before a week had passed, no fewer than eight applications were filed in the US Patent and Trademark Office to register BOSTON STRONG as a trademark for goods ranging from t-shirts to jewelry to beer to coffee beans.

Some commentators expressed dismay that anyone might be allowed to claim exclusive rights in a slogan that came to prominence arose under such patriotically-charged circumstances. A seldom-exercised provision of the Trademark Act permits the PTO to refuse registration to marks that "may disparage or falsely suggest a connection with... institutions, beliefs, or national symbols." Whether the phrase "Boston Strong" rises to the level of a "national symbol" remains to be seen.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
John C. Blattner
Similar Articles
Relevancy Powered by MondaqAI
Butler Snow LLP
McLane Middleton, Professional Association
Nutter McClennen & Fish LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Butler Snow LLP
McLane Middleton, Professional Association
Nutter McClennen & Fish LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions