[registration-issues-wg] [gnso-rds-pdp-wg] "Thanks" is Trademarked!
Michele Neylon - Blacknight
michele at blacknight.com
Sat Jun 11 01:35:30 UTC 2016
A lot of trademarks use common words. However, as Greg points out, the trademark isn't on the word itself but on the entire phrase in a specific context. Air France have "flying blue" for example. They're not going to claim exclusive rights to the colour blue, but they'd defend "flying blue" and rightly so.
Personally I don't see the problem
Mr Michele Neylon
Blacknight Hosting & Domains
Sent from mobile so typos and brevity are normal
On 10 Jun 2016, at 21:15, Carlton Samuels <carlton.samuels at gmail.com<mailto:carlton.samuels at gmail.com>> wrote:
I hold no brief for Reuters. I looked at the PTO database and saw all you said. And quite frankly if I were an IP lawyer in the trenches and on the clock, I probably would be encouraging these fellas to fight.
All that aside, howsoever you slice or dice it, granting exclusive commercial rights to [qualified] "thanks" or "thankyou" seems over the top.
On Fri, Jun 10, 2016, 5:13 PM Greg Shatan <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>> wrote:
Not sure anyone needs to be tarred and feathered here. But let's get the facts straight. (Perhaps those who don't get the facts straight are the ones who should be tarred & feathered, etc., but that seems rather harsh. I prefer to educate rather than vilify.)
Citi did not sue AT&T for "using the word in a commercial." Citi sued AT&T for apparently seeking to brand its new customer loyalty program as AT&T THANKS when Citibank already has a longstanding (since 2004) customer loyalty program branded as CITI THANK YOU, with about 15 million members in the US, and a trademark registered since 2011 for "Promoting the goods and services of others through administration of incentive reward and redemption programs by distributing rewards for credit and debit card use, and for banking and wealth management customer loyalty". And AT&T didn't merely use the THANKS brand, they applied for a trademark registration for AT&T THANKS for "Providing incentive award programs for customers for the purpose of promoting and rewarding loyalty."
It seems like an entirely reasonable claim that consumers could be confused between a THANK YOU brand loyalty program and a THANKS brand loyalty program. Without opining on the likelihood of success, it's an entirely reasonable claim of infringement. Indeed the subject matter of this email demonstrates such confusion -- THANKS is not "trademarked" by anyone, in spite of the attention-getting headline. CITI THANK YOU is a registered trademark of Citigroup. AT&T THANKS is the subject of a pending application by AT&T.
If AT&T had merely "used the word in a commercial" and not as a trademark, there would be nothing to object to, and no claim, and this email wouldn't exist. The actual facts are significantly different.
That's the problem with suggesting tarring and feathering, and other such actions of a mob mentality. They are based on incorrect facts and a desire to inflame people, rather than to inform them. Unfortunately, information can come too late to save the victims of such an attack (hot tar causes serious and often fatal burns). Thankfully, all that was suggested was a rhetorical tarring and feathering, so no one actually suffered at the hands of an ill-informed, intemperate mob.
Hope that is informative.
[Caveats: (1) I am a CITI THANK YOU cardholder and use my THANK YOU points regularly on Amazon where they are available as dollars. (2) From around 1999 to 2004, the firm I was with represented Citigroup in trademark matters, though I personally didn't do very much of that work. I have not had any professional relationship with Citigroup since 2004 (3) This should not be construed as legal advice.]
On Fri, Jun 10, 2016 at 3:15 PM, Carlton Samuels <carlton.samuels at gmail.com<mailto:carlton.samuels at gmail.com>> wrote:
..and Citi sues AT&T for using the word in a commercial! It also owns thankyou.com<http://thankyou.com> as well!
I checked the USPTO database and it was a revelation; lots of "thankyou" there, dead and alive. See: http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4803:ku1j42.1.1
So I ask you, who're the halfwits that need to be tarred, feathered and put in stock in the village square for a quick kick in the butt from every passerby?
[Disclosure: I'm partial to AT&T on account they paid for graduate school.]
Carlton A Samuels
Strategy, Planning, Governance, Assessment & Turnaround
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