Archive for May, 2010

Recent Trademark Registrations

Posted by ipelton on: May 31st, 2010

Another sampling of recent registrations our clients have received from the USPTO, so readers can see real examples of brands and marks which are being protected:

(These are all public records – click on trademark name or logo to view USPTO records.)

  • FROM THE GECKO – board games, puzzles [our firm successfully defended Opposition to this application]
  • FTPSHELL – computer software for transferring files between computer systems using various file transfer protocols [registration received nearly 6 years after filing application!]
  • SOLARRIFIC – Solar-powered electricity generators; solar light fixtures, namely, indoor and outdoor solar powered lighting units and fixtures; Retail store and online retail store services featuring environmentally friendly products, namely, solar powered electronics, crank powered electronics, and wind powered electronics
  • TIPS, TRENDS & TIRADES – Business consulting in the fields of branding strategy for companies and professional development, namely, business leadership development; Providing online newsletter featuring information and advice in the fields of branding strategies for companies, public speaking for professionals, and professional development, namely, business leadership development; and consulting in the field of public speaking for professionals
  • – Geographical markers, namely, stickers
  • ZON ENERGY – energy brokerage services
  • – energy brokerage services
  • VEGASCONCIERGE.COM – Arranging and conducting nightclub entertainment events
  • – beach accessories; beach apparel; beachwear, namely, beach coverups, tank tops, tops, t-shirts; headwear, namely, caps, bandannas, visors, hats, head sweatbands; clothing, namely, polo shirts, shirts, and walking shorts; swim wear, namely, swim trunks, swim caps, swimsuits, and surf wear; golf clothing, namely, golf caps and golf shirts
  • CELEBRITIES CALL YOUdelivery of customized and pre-recorded audio messages via telephone, mobile phone, and email [registered after successful Opposition to application for CELEBSCALLU]
  • delivery of customized and pre-recorded audio messages via telephone, mobile phone, and email [registered after successful Opposition to application for CELEBSCALLU]

© 2010 Erik M. Pelton & Associates, PLLC. ALL RIGHTS RESERVED.

I have just returned this week from International Trademark Association annual conference in Boston. It was a great meeting with informative panels, networking, meeting other trademark attorneys, and meeting with a few clients. One of the most informative portions for me was an early morning breakfast with two Managing Attorneys at the USPTO, Angela B. Wilson and Tomas V. Vlcek. Our breakfast roundtable was called “Tips on Prosecuting a Trademark Application at the USPTO.” Some of the information shared:

  • The average time for a “first action” by the USPTO after the filing of a new trademark application is just under 3 months
  • When an Examining Attorney “opens” a new file, they have 7 days to act on it – but exceptions may be made upon request
  • When an Examining Attorney receives a response to Office Action, they generally have 21 days to act on it
  • There are approximately 380 Examining Attorneys handling trademarks for the USPTO. None have been hired in the last 18 months.
  • To receive the highest performance review marks, an examining attorney must “open” and take action on approximately 960 trademark applications in a year
  • To receive the highest performance review marks, an examining attorney must take action resulting in approval for publication or abandonment of 1060 files in a year
  • The USTPO’s Trademark Quality Review finds that 97% of files are handled appropriately regarding substantive issues.
  • An Examining Attorney Performance Appraisal is based on three things:
    • volume of production
    • quality
    • the “3rd element” – a catchall of many items, including number of actions disposed of by phone or email
  • Approximately 97% of new applications are filed electronically
  • The TMEP was updated last Friday (Sixth Edition, Revision 2)
  • Useful USPTO email address:
    • Suggestions for improving the form and content of the TMEP:
    • Suggest an addition to the I.D. manual:
    • Ideas regarding “Trademarks Next Generation” (future computer/internet systems):
    • Feedback regarding office action quality:

The 2 hour breakfast was informative and enjoyable. I encourage the trademark counsel bar and the USPTO to continue communicating with each other – both can learn a lot from each other and improve their performance with more information and perspective from the “other side.”

smar(tm)ark issue 1.3

Posted by ipelton on: May 25th, 2010

smar(tm)ark newsletter from Erik M. Pelton & Associates, PLLC

1.3 : May 2010


brand and trademark newsletter from
Erik M. Pelton & Associates, PLLC

In This Issue

Trademark Tip
Trademarks in the News
Firm News

empa logo

Interact with EMP&A

Upcoming Events

  • International Trademark Assoc. Annual Meeting (Boston, MA) – May 22 – 26, 2010

Speaking Engagements:

  • Software Industry Conference (SIC) (Dallas, TX) – July 15-17, 2010
  • National
    Association of Professional Background Screeners – 2010 Mid-Year Meeting
    October 10-12 La
    Jolla, CA
  • Falls Church Arts presentation about copyright and trademark – September 14, 2010
  • Erik
    spoke to the Falls Church Chamber of Commerce about “Leveraging Your Intellectual Property.” Presentation Slides here.

Contact us at:

Erik M. Pelton & Associates,
PO Box 100637
Arlington, VA 22210
f 703-997-5349
Join Our Mailing List


Are you on Facebook, Twitter, or YouTube? We are and we hope you will join us. See details in the column to the left to connect with us online. If you are not on these popular social media sites, have you at least opened accounts using your brand names to prevent others from misusing them? This is a relatively new trademark issue as brands expand into social media websites. A great free tool to see if your brand names are available on many such sites is KnowEm.

Trademark Tip: Using Trademarks for Competitive Intelligence

USPTO trademark filings are public records at the USPTO of course. With some skilled searching of USPTO
filings, businesses may be able to find out what type of work their
competitors are doing, or what other industry trends are.

For example, does Apple have any
new brand names in the works?  Apple recently filed to register
IBOOKSTORE for a large range of products and
services, and they also have a
n application seeking protection
for the design of their Magic Mouse

How about well known restaurateur
Todd English, might he have any new restaurants in the works? Todd English Trademarks, LLC has several recent applications, including:

What movies or other new things
might be coming from Disney? Here are some “intent to use” applications it owns:

What’s new in the candy business?

As you can see, quite a bit of
information about possibly forthcoming brands, products, and services
can be unearthed searching trademark records. The trademark
record is a snapshot of the economy. While a registration or filing is
not mandatory, companies that recognize the value and impact of their
brands generally file early to protect new business
opportunities.  This allows the public – or the competition – to get a
little peek into what might be coming.

Trademarks in the News (25 years ago): Remember New Coke?

Brands are controlled and managed by
humans. As a result, brands make mistakes. Remember Pepsi Clear and
Crystal Pepsi? McDonald’s Arch Deluxe? Microsoft Zune? The XFL? The
most notorious brand failure was probably New Coke. 25 years ago this month,
after a fortune spent in research, testing and marketing, Coca-Cola unveiled a “new” formula of soda. “New Coke” was supposed to reverse the beverage giant’s declining market share in the soda wars of the 1980s. The product
was launched with a press conference at Lincoln Center and workers
renovating the Statue of Liberty were given the first cans to take home.

Initially, sales were OK, but a backlash soon emerged. The formula
was not loved despite the testing. The new logo abandoned decades of
script lettering. The media jumped all over the story. Widespread
complaints from Coca-Cola’s core customers noted that they liked Coke
just the way it was.

The Change to Coke Classic

Coca-Cola did not deny the backlash. In fact, they
aggressively moved to un-do their error. Within 77 days it began
pulling New Coke and restoring “Coke Classic®.” They came to
understand that the brand and its connection with consumers was more
important than any formula or test. “There is a twist to this story
which will please every humanist and will probably keep Harvard
professors puzzled for years,” said the company President and COO at a
press conference. “The simple fact is that all the time and money and
skill poured into consumer research on the new Coca-Cola could not
measure or reveal the deep and abiding emotional attachment to original
Coca-Cola felt by so many people.”

And they embraced the decision to revert once it was made.  They
didn’t hide from it.  They gave the first case of Coke Classic to one of
the most outspoken purists who had formed a group to lobby for the old

In the end, sales rose to numbers higher than before the release of
“New Coke,” and the company’s connection with the hearts of its customers
was strengthened based on the way the company responded to their
outcry so quickly.

The “New Coke” disaster turned out to be the best thing for
Coca-Cola. We all make mistakes. How a brand reacts to a mistake is
critical. It could spell the end, or it could lead to better brands,
a strong connection with customers, and more sales.

Lesson: If a branding mistake is made, recovery is
possible. Don’t run and hide from the mistake – correct it and learn
from it.

For more on dealing with brand mistakes, see “How to fix a brand after letting customers down” by
Anthony Pappas in the Washington Business Journal.

Firm News

Erik M. Pelton & Associates, PLLC recently released a new iPhone® application for intellectual property. The
free Apptorney: IP application contains a compilation of web resources in the field of trademark, patent, and copyright. Users of Apptorney: IP can search, file or monitor the
status of a trademark or patent, review relevant statutes, and keep up with
popular intellectual property blogs. Apptorney:IP contains hundreds of organized
links to USPTO pages, patent and trademark search pages, state and international
IP resources, and statutes.

“We believe this sets a new bar for lawyer apps on the
iPhone. Apptorney: IP is provides a wealth of tools used by IP
attorneys every day and will bring IP attorney’s main web tools to a mobile
platform,” said creator Erik Pelton. “Apptorney: IP, a free download, provides
more utility than many paid legal iPhone® applications.”

Apptorney: IP for the iPhone, iPod, and iPad is available as a free download
from Apple’s App Store here.

For more information, see Apptorney trademark application here.

Let us know if you like it, or if you have suggestions to make it even more useful!

Did You Know?

Trademarks are serious business. The USPTO takes in, on average, more than $500,000 in trademark filing fees every single day.

If there are any topics or issues you would like to see covered here, let us know!


This publication has been prepared for the general information of clients and
friends of the firm. It is not intended to provide legal advice with respect
to any specific matter. Under rules applicable to the professional conduct
of attorneys in various jurisdictions, it may be considered advertising

© 2010
Erik M. Pelton & Associates, PLLC.

Free Intellectual Property Law App Now Available for iPhone

Falls Church, VA, May 22, 2010 –(– Erik M. Pelton & Associates, PLLC, today announced the release of Apptorney: IP, a free iPhone® application for intellectual property professionals. Apptorney: IP puts a wide range of popular patent, trademark and copyright resources at users’ fingertips so they can stay connected and productive anywhere.

Intellectual Property attorneys increasingly rely on internet resources to manage dockets and monitor developments in the law. Users of Apptorney: IP can quickly search or monitor the status of trademark and patent applications, review relevant statutes, and keep up with popular intellectual property blogs. In addition to organizing dozens of links to pages and resources at the USPTO, the app provides links to many international trademark and patent offices as well.

Erik Pelton, creator of the Apptorney: IP application, commented: “Apptorney: IP began as an idea to aggregate resources we use every day to save us time and allow us to better serve clients from out of the office. Once we realized how valuable the tools in this application are, we decided to share it with other intellectual property professionals. I use it to search USPTO records, check status of pending USPTO files, monitor popular patent and trademark blogs, and more.”

The design of Apptorney: IP allows for frequent updates and improvements. Erik M. Pelton & Associates plan to gradually adapt and expand the functionality of Apptorney: IP to meet the changing needs of intellectual property attorneys. “We are very excited about incorporating suggestions from our colleagues into the app,” says Pelton. “Hopefully others will view this as a new opportunity to collaborate to improve the quality of life for practitioners as well as the quality of service available to their clients.”

Erik M. Pelton & Associates, PLLC, is a boutique trademark law firm in Falls Church, Virginia. Mr. Pelton, a former trademark examiner at the Patent and Trademark Office, founded the firm in 1999. Since then the firm has registered more than 1,200 U.S. trademarks for clients, represented dozens of parties in Trademark Trial and Appeal Board disputes, practiced before the U.S. Court of Appeals for the Federal Circuit, and spoken before many organization regarding the significance and value of intellectual property protection. Mr. Pelton has been named a Top 10 trademark filer by NameProtect’s Trademark Insider twice.

Apptorney: IP is available free from the App Store on iPhone, iPad, and iPod touch at

Visit or for more information.


Contact Information

Erik M. Pelton & Associates, PLLC

Erik Pelton


Here are the slides from my presentation this week to the Falls Church Chamber of Commerce.  I will try to post the audio in the near future.

[scribd id=31570920 key=key-h32yd4fahbstdovqlcu mode=slideshow]