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Archive for September, 2010

Intellectual Property Spotlight leaves small businesses in the dark

Posted by ipelton on: September 29th, 2010

The Office of the U.S. Intellectual Property Enforcement Coordinator(“IPEC”) recently recently the 1st issue of its Intellectual Property Spotlight newsletter (PDF).  The IPEC is an position that was created by Congress in 2008 and headed by Victoria Espinel.  The Spotlight discuss several initiatives undertaken by the IPEC office and a summary of the contents of the Joint Strategic Plan on Intellectual Property Enforcement released earlier this year by Ms. Espinel.

The newsletter surprised me because of two things omitted:

  • Any reference to small businesses and the significance of educating small businesses about the importance of I.P. protection, and the role of small business intellectual property to technology, progress, jobs and innovation in the United States.  I think that before they were Fortune 100 companies, Apple, Google, Microsoft, and just about every other company (a) started relatively small, (b) is successful in large part because of its intellectual property, and (c) has grown through the acquisition of successful small businesses and their intellectual property.
  • Reference to the “Trademark Technical and Conforming Amendment Act of 2010” which was signed into law by President Obama in March and requires “Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall study and report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on–
  1. the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and
  2. the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

Little or no information has been made available about this study and how or by whom it is being conducted or how the public can comment or participate.  Six months have already passed and it appears that the study has either not yet begun or it is not being conducted in public view; either way, it appears the study is not being taken seriously.

The Spotlight articles and reports focus nearly exclusively on plaintiff’s and enforcement activities.  While these are important, there is no reference to successful defenses of intellectual property rights, over zealous plaintiffs who fail in the efforts and costs defendants and the judicial system great time and money, or any tips businesses can take to enhance their protection or  enforcement efforts.

A trademark can be anything that identifies one brand from its  competition. Of course, words and images are the most common types of trademarks, but sounds, smells, textures and other unique marketing tools can be trademarks too. For example:

  • Sound:
    • The “sound of an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound” is registered for toy swords. Yes, that is the sound of a Lightsaber(R)
  • Smell:
    • A “peppermint scent or fragrance” is registered for office supplies.
    • A “cherry scent” is registered for synthetic lubricants for high performance racing and recreational vehicles.
  • Packaging: Many packaging shapes are registered.
    • One of the the most well known trademarks around the world is the shape of a Coca-Cola bottle.
    • For more examples of product packaging shapes that are registered, see this earlier blog post.
  • Other:
    • Even “goats on a roof of grass” for promotion of restaurant services are protectable and registered with the USPTO! Last week, the Wall Street Journal featured a front page article about the success of the goats on the roof.
    • Peabody Hotels owns a registered trademark for “the live visual and motion elements of the The Peabody Duck March… The motion elements include the red carpet being rolled out, the appearance of the ducks and uniformed Duckmaster at the elevator door, and the march of the ducks down the red carpet, up the steps, and into the fountain where they begin swimming.”
    • If you know of any other unusual trademarks, please send me an email or post in the comments!

What makes your brand unique? Words, logos, slogans, packages, and more can function as valuable trademarks. They are key for differentiating a business from its competition and significant assets to businesses.

Four basic steps for obtaining trademark and copyright protection

Posted by ipelton on: September 23rd, 2010
Four basic steps will help your business obtain strong trademark and copyright protection.
  • Identify - What do I have that is intellectual property? Review brand names, slogans, logos, websites, videos, podcasts, advertisements, written and graphic content, social media, and more.
  • Notify - Provide proper trademark and copyright notices often and prominently.
  • Register - Register the most important and valuable intellectual property assets.
  • Contracts - Ensure that intellectual property rights are covered in contracts with employees, independent contractors, partners, manufacturers, distributors, etc.

While there are other elements to strong trademarks (monitoring and enforcement, for example), these four steps can be done by anyone to create a solid foundation for your intellectual property without too much investment. Identify, Notify, Register, and protect in Contracts. For a more detailed discussion of these issues, see my videos at www.erikpelton.tv

[youtube=http://www.youtube.com/watch?v=Bgd-prRQwyE&feature=related]

Last week I was honored to participate on a lively panel discussion at Harrisburg University of Science and Technology’s Social Medial Summit in front of a sold out audience at the school’s beautiful facilities.

The panel, called Twittervention: Social Media & Legal Issues for Employers, Educators & Parents covered many legal issues for users, businesses, employees and employers.

Click the photo for link to video (panel discussion begins at the 18 minute mark) and see summary below from one of our firm interns who was an audience member.

(C) 2010 Harrisburg University of Science and Technology

Firm intern Sarah Cho, a 3rd year law student at University of New Hampshire School of Law, attended the panel and offers the following summary of the discussion:

  • On September 13, 2010, Pennsylvania’s Harrisburg University of Science and Technology began a week-long social experiment (with a hint of publicity stunt) by banning access to social media websites through its Internet network.  (See NPR story here.)  While preventing employees and students on campus from Facebook, Twitter, and MySpace, Harrisburg University concurrently held a day-long Social Media Summit on September 15th involving panel discussions on the benefits and risks of online social interaction.
  • I had the opportunity to attend the first presentation entitled, “Twittervention: Social Media & Legal Issues for Employers, Educators & Parents.”  The panelists were exclusively lawyers practicing in the areas of education law, trademark law, and employment law.  Naturally flowing from a dialogue among the legal community to lay people, the presentation conveyed information about precedential case law involving digital social interaction bleeding into the courtroom after having non-digital repercussions.
  • When the panelists were asked what they defined as a ‘good social media policy,’ employment attorney Thomas Rees of High Swartz LLP strongly advocated for a highly, restrictive policy in which all employees were prohibited from personal, social websites including blogging services.  Adam L. Santucci of McNees Wallace & Nurick LLC, also an employment attorney, pushed a more moderate policy.  Rather than giving employees a general list of “no’s,” or restricted websites, Santucci pushed increased awareness and education of the risks of online behavior.  Santucci’s suggestions included reminding people points of basic etiquette such as speaking respectfully while on the World Wide Web and exercising careful, and good judgment in uploading any information – particularly photos – onto the Internet.  Amy Foerster, Special Council with Saul Ewing LLP’s Harrisburg office and education law attorney, poignantly noted liability for the actions of students or employees is an issue of content, and not the medium.
  • Trademark attorney, Erik M. Pelton of Erik M. Pelton & Associates, PLLC emphasized that just as people should be informed before entering into agreements in the non-digital world, they should do so online.  Social media website requires its users to agree to terms of use, which many or most users ignore. Pelton advocated reading and understanding those click-through agreements that most users mechanically scroll through.  Many of these terms of use agreements, in fact, set the standard for propriety in addition to establishing an intellectual property arrangement between users and the Internet service provider.  Pelton stated, “Depending on the terms of use you agree to, you may be sharing all of your copyright” or other intellectual property with the website.
  • While restricting students, employees, and the general public from social media websites is unlikely with recent statistics testifying to widespread use and popularity and the increasing ease of access through a variety of devices, the panel’s general theme encouraged Internet users to be cautious, and particularly cautious when acting as employees or employers. Given the ever increasing sensational reports of students, employees, schools, employers, and others disciplined for conduct on social media sites, the true innovation will occur when Internet users actually begin to practice cautiousness.

Recent Trademark Registrations

Posted by ipelton on: September 17th, 2010

Here is 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 [click trademark or logo to open USPTO records]:

  • - Import agency services in the field of fruit and vegetables; wholesale distributorships featuring fruit and vegetables
  • – Life coaching services in the fields of independent living, life skills, vocational guidance, education counseling and career, resume and interview counseling for people with disabilities and their families
  • BUTTERFLYWHEEL – Life coaching services in the fields of independent living, life skills, vocational guidance, education counseling and career, resume and interview counseling for people with disabilities and their families
  • BEAMONSTAR – Dietary supplements; herbal supplements, namely, herbal pills for rapid sexual stimulation, designed to enhance the sexual experience; natural supplements for increasing the amount of ejaculate; nutritional supplements for enhancement of male sexual organs; vitamin fortified beverages, namely, beverages featuring supplements for enhancement of male sexual organs; Online retail store featuring supplements and products for enhancement of the sexual experience; wholesale distributorships of supplements and products for enhancement of the sexual experience
  • PIRATE4X4.COM – Entertainment and educational services, namely, providing a website that displays, recommendations, rankings, and entertainment information relating to off roading sports and 4×4 trucks, all exclusively for non-business and non-commercial transactions and purposes
  • CORERESUME – preparation of resumes and personal marketing documents for others
  • COMPANY BOARD – Electronic downloadable publications in the nature of educational reports in the field of finance; Preparing financial reports for others; Educational services, namely, providing training in the field of finance and business, and providing educational materials in connection therewith
  • BUCKSTALKER – Computer software for management and organization of photographs, food plots, and data in the field of hunting; downloadable computer software for management and organization of photographs, food plots, and data in the field of hunting
  • – skin care products, namely, facial cleansers, skin toners, skin moisturizers, facial masks, exfoliants for skin; Medical services, namely, interventional pain management, vericose vein treatment, and aesthetic skin and laser treatments
  • PUT YOUR SKIN FIRST – Skin care preparations, namely, clarifying cleanser, clarifying moisturizer, clarifying toner, non-medicated skin care preparations in the nature of a blemish remover, clarifying mask, daily cleanser, daily facial scrub, daily moisturizer, eye cream, men’s shaving cream, men’s moisturizer, men’s anti-aging cream, non-medicated skin care preparation in the nature of men’s eye serum, men’s cleanser, men’s facial scrub, men’s post shave balm, anti-aging cream, non-medicated skin care preparation in the nature of anti-aging eye serum, non-medicated skin care preparation in the nature of age-less serum, baby moisturizer, and baby body wash
  • – CLOTHING AND APPAREL, NAMELY, T-SHIRTS
  • EVERYTHING UNDER THE SUN! – Solar powered electricity generators; Solar recharging battery packs for electronics; Solar light fixtures, namely, indoor and outdoor solar powered lighting units and fixtures; Retail store and online retail store services featuring environmentally friendly products, solar powered electronics, crank powered electronics and wind powered electronic

Over the last 10 years, Erik M. Pelton & Associates, PLLC clients have received more than 1,300 U.S. trademark registrations!