April 19, 2002

4:28 PM

From the little guy continues to get the shaft department: The United Parcel Service last month filed a trademark registration on "Big Brown." The ink on the app is barely dry, and already they are throwing out cease and desist letters. Victim number one: the guy who registered bigbrown.com back in 1997. (via fark)
posted by chipr (20 comments total)

I want to add two more links, for folks who are interested in the topic.

First, there is the Chilling Effects Clearinghouse, a resource created to counter this exact sort of abuse.

Then, there is the web site from my own reverse domain hijacking situation. (Hey ... it's not a self-post if it's not on the front page ... right?)
posted by chipr at 4:32 PM on April 19, 2002

They'll probably never call me for a job interview now, but you also have the Richmond, VA ad shop, The Martin Agency to thank for this horrendous ad campaign. "What can Brown do for you" is only somewhat scatalogical compared to the UPS NASCAR sponsorship slogan: "Brown to the Bone." Uggghhh...

Not to sidetrack this thread, but what's the latest with your domain chipr? Do you think they'll press the issue further in another jurisdiction?
posted by machaus at 4:36 PM on April 19, 2002

I've never heard UPS called "Big Brown" but if it sticks, I foresee turd jokes, uh, up the wazoo.
posted by rodii at 4:38 PM on April 19, 2002

I think that's "out" the wazoo, rodii. Literally.
posted by ericost at 5:16 PM on April 19, 2002

Interesting that UPS filed the BIG BROWN application as an Intent-To-Use application. This means they have yet to provide the PTO with specimens of the trademark. Nor have they provided a first use date. The filing is dated March 1 of this year

If he has held the domain since 1997 how can they be sending C&D letters?

When did they start using this horribly chosen trademark? Also I doubt if anyone went to the bigbrown.com site, don't know cause I've never been there, they wouldn't confuse it with UPS.
posted by birgitte at 5:20 PM on April 19, 2002

Observe UPS' previous work;

http://homepage.mac.com/simonster/PhotoAlbum3.html

However, with the current state of the law in the US (and many other western countries) UPS shouldn't have any problem getting the site taken from the little guy. He should simply sell it to them for a million dollars. If he chooses to fight for the site it'd probably only cost him $10,000 to cost them $1m in laywer's fees.
posted by krisjohn at 5:21 PM on April 19, 2002

When my university's hockey team played Brown University we chanted, "Around the bowl and down the hole, go Brown go!" *evil grin*
posted by thunder at 5:25 PM on April 19, 2002

Dang! The link I provided to the registration app no longer works. If you want to see it, go here, select New User Form Search (Basic), enter "Big Brown" as your search term, and hit SUBMIT. The first entry (the "Big Brown" live mark) is the one I tried to link to.

I suspect somebody cleverer and less sleep deprived than I can figure out a way to link directly to the document.
posted by chipr at 5:50 PM on April 19, 2002

Observe UPS' previous work

I was once a sorter for UPS. I saw up close and personally just how such work was done. And often. I've never sent anything ground since, and anything irreplaceble or expensive is shipped insured.
posted by Qubit at 6:07 PM on April 19, 2002

UPS only filed the mark for "IC 039. US 100 105. G & S: Transportation and delivery of personal property by air, rail, boat and motor vehicle" (I can't figure out a direct link either, but if you go to http://tess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk, choose "New User Form Search" and enter Big Brown, you'll find what you need to find). bigbrown.com doesn't seem to offer any of those goods or services. Thus, bigbrown.com can send that law firm a memo with a big FUCK YOU letterhead and there's nothing that the law firm or UPS can do about it. IMHO, bigbrown.com should actually try to dig up some old shipping receipts (anything dated prior to March 1, 2002) and, if they find any, tell UPS they'll protest should the mark be published for opposition unless UPS forks over some cash.
posted by dchase at 6:36 PM on April 19, 2002

And a grossly overpaid marketing genius a UPS is now trying to cover his messy work suggesting a new slogan !

BROWN'-0-
posted by elpapacito at 7:33 PM on April 19, 2002

I left a "big brown" in the toilet this morning. Unfortunately I failed to keep it. Should UPS want it, they are welcome to dive the sewers for it, as I am relinquishing all rights to it.
posted by mr_crash_davis at 7:46 PM on April 19, 2002

I am guessing bigbrown.com has done nothing to formally establish a trademark, in which case, what is your point, chipr? If a company does not protect itself, it has very little recourse when the big boys with the big bucks to pay the fancy lawyers come along. One of the first things taught in basic marketing is to trademark early. It would behoove the geeks of the world to learn a little simple business and thus, avoid these kinds of situations.

From a legal POV, I would say bigbrown.com has the bigger problem. Conversely, as others have already indicated, UPS has some true marketing retards if they intend to pursue a "Big Brown" stain of an advertising campaign.
posted by mischief at 8:54 PM on April 19, 2002

Good golly. Have you read the letter? (p1 p2)

UPS's lawyers coyly dodge the issue of when they applied for the trrademark registration... their claims for "trademark infringement, unfair competition, dilution, and cybersquatting" would almost certainly be frivolous.

As recently as 1992, the name "Big Brown" was used as a trademark for stuffed animals, and until 1997 as part of the Big Brown Box mark. It is still used as part of the Big Brown Bag mark.

The UPS position is, well, crap. If I were defending bigbrown.com on the threatened action, my first move would probably be to file a Rule 11 motion, requesting sanctions for filing a frivolous claim. UPS's trademark application has, and I quote, "not yet [been]assigned to an examining attorney" at the USPTO. Which means... all they've got is a steaming pile of big brown.

Incidentally, the law firm that sent this nasty-gram is King & Spalding, and although Mr. Ratliff blurred out the signature, the attorney's initials on the second page strongly suggest that the culprit is Thomas H. Curtin of the firm's IP practice - someone who ought to know better.
posted by mikewas at 9:30 PM on April 19, 2002

First of all: You can't dilute it if it ain't famous. Second of all: you can't cybersquat unless you knew or should have known of another party's superior trademark rights and registered and used the domain in bad faith. Third of all: you can't infringe a trademark unless there is a likelihood of confusion (and who the heck is going to hop on the Internet looking for UPS by typing "bogbrown.com???). Fourth of all: It's called Reverse Domain Name Hijacking, and its sanctionable. They'd be fools to go to Court or UDRP on this one.
posted by IPLawyer at 9:39 PM on April 19, 2002

Ummm, they tried on "Big Brown Truck" too? Hell, I'm going to go buy a copper colored dually and counter-sue...

(See if the link works...)
posted by Samizdata at 10:01 PM on April 19, 2002

Josh Mercer recently told a pretty funny, if common, story about a recent experience with Big Brown:

"Now I know what Brown can do for me. And it's on my shoe. "
posted by mikewas at 10:03 PM on April 19, 2002

From the letter: "We now await your response."

Joke forming... something about big brown and ass kissing.

He grumbles in Homer Simpson fashion: lousy sense of humor gene.
posted by Dick Paris at 10:56 PM on April 19, 2002

I just want the people at UPS to know that even as a member of this site, I still appreciate their wonderful service and am eagerly awaiting my new Gibson SG.

God Bless UPS!!!
I'll even tip you!!!
posted by ttrendel at 1:51 AM on April 20, 2002

This is very very similar to a case I was involved in a few years ago. Lawyers were involved on both sides. It was a stressful experience and I wouldn't wish it on anyone. This is one case were legal help is really vital, I think.
posted by litlnemo at 3:16 AM on April 20, 2002