The Selfie Trademark: Struggling to Own the New Slang

In the modern world of interactive social media, new words are invented, used and discarded at lightning speed.

Indeed, the lexicon of online social media is replete with an entirely new vocabulary composed of Internet "slang."  There are thousands of examples percolating on the Internet, with dictionaries and even online translators devoted to these emerging linguistic trends.

Some examples of words that started as Internet slang and which are now mainstream are: "cookies" (a small piece of data embedded in an Internet browser), "photoshopped" (referring to the popular software graphics program that allows for visual 'touching up' of digital photographs) and "spam," (those annoying bulk e-mail messages that clog up our inboxes).

But some entrepreneurs are hoping that such slang terms are capable of functioning as trademarks. For example, the word "selfie" means a photograph taken of oneself (usually with a smartphone) that is planned to be uploaded to Facebook, Instagram, Imgur or another social media networking website.

But several brand owners are trying to monopolize this term, even before it fully enters the mainstream lexicon.  

Thinkboks LLC, an Illinois based software development company, has filed a formal trademark application for "SELFIE" in connection with "computer application software for allowing hands free photographs on portable electronic devices."  Thinkboks claims that it first used the term in commerce in 2012.

Screenshot of Thinkboks.com

The Trademark Office was not persuaded and recently denied the application on the basis that “SELFIE” is defined as “a slang term used to describe a photo that is taken of oneself for the purpose of uploading it to social networking sites  and image sharing websites, such as Facebook, Instagram or Imgur”.

To illustrate his point, the Examiner attached screenshots of websites (italicized emphasis added) in which the term was used by third parties descriptively:  “With our face detection and timer modes, you will love taking selfies at home or on the go!” and "It’s simple and easy and it helps with taking selfies! . . .”

The Examiner found that as shown by the Internet evidence, the wording “SELFIE” and/or its inflected forms is used to describe a feature, subject matter, use, and/or the nature of selfie software, i.e., software for taking pictures of oneself.   

Material obtained from the Internet is generally accepted as competent evidence to determine if a mark is being used widely as a descriptive term.  Accordingly, Thinkboks' trademark application was rejected on grounds of descriptiveness under Trademark Act Section 2(e)(1).

In addition to or in the alternative to submitting evidence and arguments in support of registration, Thinkboks can amend the application to seek registration on the Supplemental Register.

However, that approach means that Thinkboks would need to wait as long as five years to renew its attempt to receive a trademark registration, and would need to swear under oath that, during the interim five years, it alone made "substantially exclusive use" of that mark in commerce.

Therefore, if Thinkboks cannot successfully monopolize usage using legal means, it can only succeed by convincing the marketplace generally that "SELFIE" is associated exclusively with it.  And that's likely an uphill endeavor.

In the meantime, others are trying a similar strategy.

Selfie Social, a New Jersey-based company, is seeking to register the trademark for "Selfie Social" in connection with computer applications used for the collection of photographs.  The Examiner rejected this application on the same "descriptiveness" grounds.

Further, an unidentified person or company currently cloaked with privacy protection services has apparently registered the domain name "SELFIE.COM" and is accepting requests for new screen names.

If this isn't Thinkboks' domain name, they may face an even steeper uphill climb than they bargained for.

Gioconda Law Group and Arthur Kenzie Settle Domain Name Dispute

The Gioconda Law Group PLLC and Arthur Wesley Kenzie have settled the dispute that had been pending before the New York federal district court, involving the misspelled domain name GIOCONDOLAW.COM.

The parties to the underlying dispute settled their differences through a mutually acceptable Settlement Agreement under which the GIOCONDOLAW.COM domain name will be permanently transferred to the law firm.  The Agreement is in the process of being submitted to the federal district court for final approval.

The parties disagree about whether the particular methodologies employed constitute an 'interception' of e-mail, and could therefore violate the Wiretap Act.  Furthermore, Arthur Kenzie has denied any wrongdoing or cybersquatting.

However, both parties agree that the vulnerability that this case exposes is indeed very important and one that all organizations should take seriously.

Furthermore, the public disclosure of discovery in this case may have revealed third parties' vulnerabilities in a manner that could have raised even greater data security concerns.

The use of unencrypted, misaddresses e-mail can create significant security risks to organizations, and all all organizations should also consider registering multiple misspellings of their domain names and using encrypted e-mail protocols to mitigate this risk.

TradeKey Found Liable for Contributory Counterfeiting

In a strongly-worded decision issued by a California federal district court judge this week, the owners of TradeKey.com were found liable for contributory counterfeiting and placed under a permanent injunction.

TradeKey is a multinational company with offices in Saudi Arabia, China and Pakistan, which claims to be one of the largest and fastest growing online business-to-business (B2B) marketplace that connects small and medium businesses across the globe for international trade.

For an annual fee of $519, wholesale sellers and distributors can set up customized accounts on TradeKey, offering thousands of items for sale to businesses in bulk quantities.  TradeKey also solicits its wholesale buyers and distributors worldwide to become "premium" members, which costs $3,000 annually.

TradeKey had garnered something of a reputation for being a retail counterfeiters' supermarket.

Undercover investigators working for Richemont became premium members, and were contacted by TradeKey's sales representatives.

When the undercover investigators (posing as wholesale distributors) asked TradeKey's sales representative if there was any problem with selling counterfeit luxury goods on the TradeKey website, the sales representative replied that it was "not a problem," and further said that "as far as the replica industry is concerned it's one of the businesses that we rely on to get us a whole lot revenue."

The investigators also were able to purchase numerous counterfeit goods from a variety of sellers on TradeKey.

Richemont filed suit in Los Angeles federal court against the individual sellers (who defaulted by not defending themselves), but also against TradeKey and its various corporate owners, alleging that they were contributorily liable for counterfeiting.

Essentially, Richemont's lawyers alleged that, by knowingly aiding and abetting the sale of counterfeit goods and receiving a direct financial gain from doing so, TradeKey's owners should be held liable for the sellers' conduct.  Richemont moved for summary judgment against TradeKey and won.

Notably, based on the written decision, it is clear that TradeKey's legal defense was an unmitigated disaster.

TradeKey's lawyers first tried to argue that the undercover investigation was "sloppy" and not credible, suggesting that technical defects in chain of custody forms injured the investigators' credibility.

The Court roundly rejected this criticism, finding that the goods that where purchased were clearly counterfeit and the results of the investigation was very persuasive.

Further, TradeKey alternatively tried to argue that the sales representative "clearly misunderstood the term replica."  The Court found this argument wholly unpersuasive, as it was "undermined by the plain language of his [own] statements, their context" and the fact that the investigators posted multiple listings for counterfeit goods using the term "replica," all with TradeKey's clear knowledge.

TradeKey also even tried to argue that counterfeit products don't cause any consumer confusion, because those consumers purchasing the spurious goods in bulk essentially knew the goods were fake.

Ultimately, the Court rejected all of these arguments, and found that TradeKey had known about widespread counterfeiting activity that was taking place on its website, and found that TradeKey had permitted it to continue in order to unlawfully profit.

Consequently, TradeKey was found legally responsible for the conduct of its counterfeit sellers, and a Court order was entered that permanently prohibits any seller on the site to sell goods bearing the Plaintiffs' counterfeit trademarks.

What lessons can be learned from this important decision?  

First, other trade boards similar to TradeKey should stop harboring counterfeiters.

Second, conducting a thorough undercover investigation before filing litigation is the paramount way to gather evidence.

Third, as a matter of legal strategy, if you are a lawyer defending a client with a difficult factual record, pick your best single legal argument and stick with it.

Attacking the credibility of reputable undercover investigators and simultaneously trying to claim that your client didn't know what the word "replica" means, is not likely to sustain your credibility with the Court, especially when combined with obviously silly arguments such "the sale of counterfeit goods doesn't cause consumer confusion."

Such a tactic will likely anger most judges and won't give you a very strong appellate record if you lose.

Pinterest Sues Travel Planning Startup PinTrips

Social media service Pinterest has filed a federal trademark infringement lawsuit in California against travel startup PinTrips.

Pinterest is a pinboard-style photo-sharing website that allows users to create and manage theme-based image collections such as events, interests, and hobbies.  

Users can browse other pinboards for images, "re-pin" images to their own pinboards, or "like" photos.  The popular site was founded by Ben Silbermann, Paul Sciarra, and Evan Sharp.  It is managed by Cold Brew Labs and funded by a small group of entrepreneurs and investors.

Founded in 2011, PinTrips.com is a Santa Clara, California-based startup.  PinTrips claims that it turns the tedious task of planning and coordinating travel into a seamless experience by allowing a user to "bookmark" specific flights from all travel sites you already use, track and compare results on a main dashboard, and collaborate with others.

According to Pinterest, the startup was faced with a challenging business environment, so it deliberately adopted a name to cause confusion with its popular service.  Further, Pinterest alleges that PinTrips deliberately uses a "Pin" button that Pinterest alleges is a knockoff of its "Pin It" button.

The full Complaint is embedded below:

The New Wall Street: Yahoo! to Buy Tumblr for Over $1B

Internet giant Yahoo! announced on Sunday that it would buy blogging service Tumblr for $1.1B in cash.  Just last year, Facebook purchased Instagram for $1B.

These expensive Internet company acquisitions have made headlines, largely because among traditional Wall Street investors, there remains a nagging, unanswered question:  How on earth will any of these new Internet companies actually make any money?

Yahoo's Marissa Mayer promised investors that she would not "screw up" the deal.  But is the billion dollar-plus Tumblr deal already doomed from the start?

It is clear that popular free Internet services like Google, Yahoo, Bing, Facebook, Instagram and Tumblr are first intent on building strong brand loyalty among their respective users. Once that brand awareness and loyalty exists, the somewhat more challenging task is left to others to figure out how to monetize this intangible asset into a profitable venture. "Turning eyeballs into dollars," some consultants call it.

And it is no easy task:  Ask Mark Zuckerberg.  Facebook's Initial Public Offering raised $16B, but most of Facebook's revenue still comes from advertising, not membership/usage fees.


Sarah Smith, who was Facebook's Online Sales Operations Manager, reported that successful advertising campaigns on the site can have clickthrough rates as low as 0.05% to 0.04%.  That means that Facebook generally has a lower clickthrough rate for its advertisements than most major websites.

In fact, according to BusinessWeek.com, banner advertisements on Facebook have generally receive one-fifth the number of clicks compared to those on the Web as a whole, although specific comparisons can reveal a much larger disparity.

Therefore, even Facebook, with massive brand awareness and loyalty, has struggled with monetizing these assets.  Best of luck to Yahoo, Tumblr and Marissa Mayer.

Internet Scammers Targeting Lawyers

Attorneys in the United States, particularly solo practitioners and lawyers with small firms, are apparently falling prey to sophisticated international Internet scams that can have severe consequences, financial and otherwise, the California Bar Association has noted in an Alert.

To date, these scams have been more prevalent among, although not exclusive to, collection and commercial lawyers, mainly because these practice areas make it easier for those initiating the scams to make them appear legitimate. However, such frauds have affected lawyers working in family law and other practice areas, as well.

The fraudsters perpetrating the scams engage in the following conduct:

1.  The lawyer receives what appears to be a legitimate solicitation e-mail from a prospective client.  The client may be a company or an individual. The e-mail sounds something like this:  "We are a media publishing company in Japan. We have a breach of intellectual property agreement matter in your jurisdiction, we can forward you the agreement and other party information for your review to enable you run a conflict check."  The client will be willing to forward seemingly legitimate incorporation documents.

2.  The lawyer and client discuss a fee agreement by e-mail.  Most commonly, the client will offer that the attorney may keep a certain sum in exchange for collecting on an unpaid debt.  The lawyer signs the agreement, creating an ostensible attorney-client relationship.

3.  The lawyer then receives a "congratulatory" e-mail from the new client announcing that they have received a settlement offer from the debtor, and that all the lawyer needs to do is deposit the settlement check and forward the proceeds of settlement, minus the lawyer's fees and expenses.

4.  The lawyer quickly receives in the mail what appears to be a valid paper check from a reputable bank, which is deposited into the lawyer's trust account.

5.  The client then demands an immediate wire distribution of the settlement proceeds (nearly always to a foreign bank).

6.  The lawyer then wires the proceeds to the client from the trust account, as requested.

7. By that point, the lawyer's bank has discovered that the paper check is fraudulent and it is returned unpaid.  By this time, the scammer is long gone, and the lawyer's trust account is overdrawn by the amount of the fraudulent check.

This chain of events leaves the victimized lawyer in a vulnerable position.  The lawyer cannot easily press criminal charges, because of possible fear of violating client confidences.  Second, the identity of the fraudster isn't even clear.

Further, the lawyer cannot easily recoup his losses.  Malpractice insurers may not qualify the lost sum as "damages" from professional negligence.

The California Bar Association notes that, in choosing clients and accepting to represent them, it is better to err on the side of caution.  Hitting the "delete" button may be the best course of action when receiving one of these "too good to be true" new client offers.

Daunting Math Facing Brand Owners

The new reality on the Internet is a game of very large numbers -- a reality that brand owners and content creators trying to protect their intellectual property rights online may find depressing.  

Here are a few statistics to ponder:

Between 1995 and 2013, the number of Internet domain names registered went from 15,000 to 250,000,000.

There are nearly 150,000 new domain names created each and every DAY.  Even taking deletions and expirations into account, there is still a net gain of tens of thousands of new domain names created every single day, 365 days a year.  In addition, there are estimated to be 634,000,000 websites, with 51,000,000 added each year.

It is currently estimated that 2.4 BILLION people use the Internet worldwide, with 1.1 billion of them in Asia alone.

The statistics also demonstrate that counterfeiting on the Internet is similarly skyrocketing.  For example, domain name registrants frequently register names that cybersquat upon the established rights on trademark owners.

In the 1990's, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA), to give rights owners a vehicle for protecting themselves by filing suit in federal court.  Brand owners can also initiate Uniform Domain Name Policy (UDRP) proceedings.  But litigation under the ACPA/UDRP can be expensive and time-consuming.

A very successful and aggressive brand owner may be able to set aside several hundred thousand dollars per year to budget for proactive brand protection on the Internet.

But is that even enough?

Given the massive scale and scope of counterfeiting on the Internet, this math presents a very daunting reality.

Assuming 20 newly-created domain names registered each day infringe upon a brand owner's rights, in one year alone, a trademark owner would need to spend hundreds of thousand of dollars getting all of them locked and transferred under Court Order.

Of course, a new infringer lurks around every corner, so there is nothing to stop new domain names from being created tomorrow, and the day after that, and so on.

A brand owner may hire a team of attorneys and investigators dedicated to combating this escalating problem.  But counterfeiters can find armies of extremely cheap labor to draw upon for programming, coding, marketing and distribution of counterfeit goods.

Therefore, in a long drawn out war of attrition, the math facing brand owners is daunting.

The solution?

First, brand owners need to act MUCH more aggressively and diligently.  The problem is not going away.  By ignoring the problem, it will only get worse.

Second, brand owners need to lobby the government for much more stringent penalties and enforcement mechanisms.  Individual ACPA and UDRP proceedings against infringing domain names made sense in the 1990's, but today they are anachronistic given the scope and scale of the problem.

Some brand owners have been creative and have filed large-scale litigations that have shut down thousands of domain names through sweeping Court Orders in a single case.  However, these cases have inherent limitations, and need to be filed repeatedly.

Third, ICANN needs to begin to adopt policies that are pro-brand owner, rather than pro-infringer.  The core economic dilemma is that ICANN (and its affiliated registries and registrars) stand to gain tens of millions of dollars in fees each year from newly-created domain names, and therefore have little incentive to protect the intellectual property rights of the few.  Their economic incentives, in fact, are quite in the opposite direction.