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Archive for November, 2010

latest smar(tm)mark® newsletter: issue 1.9

Posted by admin on: November 29th, 2010

The latest version of our newsletter was published last week. If you missed it, you can see it here:

http://myemail.constantcontact.com/smar-tm-ark–trademark-newsletter.html?soid=1102950808183&aid=BF4iymzlUOs

or subscribe to future monthly issues here (our mailing list is never distributed to anyone).

The title of the newsletter, smar(tm)ark® is now a registered trademark, and joins the other registered trademarks used by the firm:

  • IPELTON® – for ‘On-line journals, namely, blogs featuring information and observations in the fields of law, branding, and intellectual property’
  • TM4SMALLBIZ.COM® – for ‘Legal services’
  • emp- for ‘Legal services’

Fun Thanksgiving Trademarks

Posted by admin on: November 25th, 2010

As we celebrate Thanksgiving holiday today, there are many things to be thankful.

For fun, here are a few Thanksgiving themed trademark registrations:

  • Thanksgiving Farm – wine
  • Thanksgiving Day Dinner – pet food
  • - Charitable services, namely, coordination of the procurement and distribution of food donations and sporting goods donations directly to needy families or indirectly through other not-for-profit organizations
  • - Poultry, namely, turkey
  • - Association services, namely promoting the interests of turkey conservationists and sportspersons
  • HAWLLOWTHANKSMAS – Calendars; Greeting cards; Paper party decorations; Postcards
  • TURKEY SLAYER – shotguns and parts thereof
  • MACY’S THANKSGIVING DAY PARADE – entertainment services, namely, organizing and conducting a parade
  • PILGRIM’S FEED – Animal feed
  • GOBBLZ! – Bakery and confectionary goods, namely– brownies, blondies, squares, cookies, shortbread cookies, whoopie pies, scones, chocolates, low carbohydrate bakery and candy goods
  • GobbleBox – Dissemination of advertising for others via the Internet; Marketing, promotional and advertising services provided by mobile telephone connections
  • PUMPKIN PIE – hair products, namely, shampoos; and bath products, namely, gels, and bubble bath
  • TURKEY TESTICLE FESTIVAL – arranging parties for others having a Thanksgiving theme
  • AMERICAN MAYFLOWER LIFE – life insurance underwriting services
  • America’s Turkey Trot – Entertainment services, namely, participation in foot races; and organizing community foot race sporting and cultural events, all performed on or around Thanksgiving Day
  • OPERATING THANKSGIVING EAGLE – Charitable services, namely, providing books to children and families, including children and families of the US military; education services, namely, providing classes, seminars, lectures and workshops in the field of American history and the Thanksgiving holiday; presentation of live musical performances; conducting book signings
  • - Vehicles, namely, trucks; truck chassis; roasted chicken [Description: The mark consists of the design of a truck with the part of a chicken on the top of the truck.]
  • - Meat, poultry, and game, namely, processed chicken and turkey, and deli meats

and my favorite, made famous by John Madden:

  • TURDUCKEN – COMBINATION TURKEY, DUCK AND CHICKEN ENTREE FOR CONSUMPTION ON OR OFF THE PREMISES [wiki here]
  • More favorites blogged last Thanksgiving here

What are your favorite Thanksgiving trademarks?

TPAC Quarterly Meeting Summary – November 2010

Posted by admin on: November 24th, 2010

This week the Trademark Public Advisory Committee (“TPAC”) held its quarterly meeting at the U.S. Patent and Trademark Office.As with all TPAC meeting, it was both open to the public and webcast. I attended the meeting in person.

TPAC functions as an advisory body to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on management and operations issues. This week’s meeting featured lots of information about developments with various functions and offices at the USPTO trademark office and Trademark Trial and Appeal Board. It also featured a special send off for Commissioner for Trademarks Lynne Beresford who recently announced her retirement after a career of more than 30 years at the USPTO, the last five as Commissioner. TPAC Chair John Farmer presented the Commissioner with a plaque noting that she has been the “Best Darn Commissioner”!

Here are some highlights from the discussions at this week’s meeting:

  • The terms of TPAC board members Jim Johnson, Elizabeth Pearce and Bob Anderson (who was appointed in January to an interim term) end in December. Their contributions were recognized by Chairman John Farmer.
  • “Deadwood” post Bose: The Trademark office is working on a rule proposal that will create a pilot program for increased review and Section 8 specimen filings and permit the post registration unit to request additional specimens where appropriate. The Trademark Office will continue studying the “deadwood” and identification issues and is continuing to review and consider other ideas related to the issue.
  • Statistics:
    • Trademark Application filings (measured by number of classes filed) increased 4.9% in FY2010 vs FY 2009
    • 221,090 trademark registrations were issued y the USPTO in FY2010
    • At the end of FY2010, there were approximately 1.6 million live trademark registrations
  • On December 3, the USPTO will be hosting a roundtable and webcast about best practices for electronic trademark application prosecution.
  • “Bullies” study:
    • Following the comment period for the “bullies” study, the USPTO plans to conduct a series of roundtable discussions regarding the issue.
    • The language of the statute requiring the study was modified recently in a bill passed by Congress. The bill,S. 3689 Copyright Cleanup, Clarification, and Corrections Act of 2010, includes the following:
      • Trademark Technical Amendments Act- Section 4(a)(1) of Public Law 111-146 is amended by striking ‘by corporations attempting’ and inserting ‘the purpose of which is’.
      • The USPTO’s Director of Governmental Affairs said he did not believe this changed the study or its scope in any real way
  • The Trademark Office is working on additions to the TEAS online filing system that will permit applicants and attorneys to designate more than one email for correspondence. The purpose is to encourage more communication between Examining Attorneys and the outside bar. Examining Attorneys also continue to be encouraged to use phone calls more often when appropriate.
  • TTAB update from Acting Chief Judge Rogers:
    • The TTAB has finally finished its work regarding the updates to the TTAB Manual of Procedure (TBMP). The changes are now going through final review from the solicitor’s office and OMB. The changes will be published in XML and PDF using a publishing tool which is new for the USPTO. The new publishing tool may also provide for user comments and discussions regarding sections of the manual. It is expected that the new manual will be released in March 2011. Judge Rogers expects the TTAB to attempt to have semi-annual updates to the manual after that.
    • The number of cases submitted for Accelerated Case Review (ACR) is increasing slowly. Five cases were submitted for ACR during the most recent fiscal quarter. The TTAB expects to post more samples and information regarding “plug-and-play” options for using ACR in the near future, and will continue to work with TPAC and outside bar organizations for their input to enhance the use of ACR.
    • The Board plans to publish a request for public comment soon seeking input regarding its desire to increase the Board’s role or  participation in settlement discussions.
    • As of October 31, 2010, there were 150 cases awaiting a final decision from the Board (i.e. fully briefed and, in applicable, argued already)
  • Tele-work”: Recent legislation passed by Congress and signed by the President will allow for further expansion of the USPTO’s “tele-work” projects. Specifically, under the new law employees working more than 50 miles from the USPTO may have their requirements to be at the office for a minimum number of hours per pay period waived. Many USPTO tele-workers will be receiving new laptop computer systems and new VOIP phones in the next year.
  • TDR 2.0:  Those of use at the meeting were shown a live demo of new tools to be expected to be released in beta in January 2011 for TDR. The new version, TDR 2.0 will have a cleaner appearance and will allow for greater access to XML data and other data files and formats in the USTPO records for a particular file. It will allow for third parties to create new tools online to use or package the data with much greater flexibility. It will allow for retrieval of video files which are in the USPTO records as specimens of use. This is essentially the first piece of Trademarks Next Generation (TMNG) computer systems and will integrate with future enhancements.
  • Other IT developments:
    • The TMEP online should be updated in the next few weeks to allow for public comments and discussions. In the first few months of 2011, the TMEP should be fully searchable.
    • The need for a “Captcha” screen prior to accessing TESS has waned as attacks on the system have decreased recently. The USPTO is ready to implement such a system quickly if it becomes necessary.

Documents and presentations from the TPAC meeting can be found on the USPTO website here.

Recent trademark registrations

Posted by admin on: November 22nd, 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]:

  • WORLD FED – clothing, namely, shirts, hats, coats, jackets, footwear and headwear
  • ASP Logo- Association services, namely, promoting the interests of computer software professionals, developers and vendors
  • MR. REKEY – Locksmithing, namely, custom fabrication of keys or locks; Locksmithing, namely, opening of locks
  • WACKY WILD – Educational services, namely, developing, arranging, and conducting live, interactive, and educational programs, shows, and presentations in the fields of science, nature, health, nutrition, and social well-being; providing a web site featuring education and entertainment for children in the fields of science, nature, health, nutrition, and social well-being
  • Game Headz logo- retail store and online retail store services featuring video game cartridges and discs, video game consoles and video game accessories
  • CITIZENMUSIC – retail store and online retail store services featuring video game cartridges and discs, video game consoles and video game accessories
  • GOOD IN BED – Online publishing in the nature of news briefs, newsletters, newsletter columns, journal articles, feature articles, and research articles in the field of sex education, sexual health, sexual wellness, and sexual nutrition
  • Kone Temaki Sake Lounge logo- Restaurant and bar services
  • AG TAG – charitable fundraising using proceeds from license plates to raise money for educational services in the field of agriculture
  • ARIEL - Baths, steam showers, bathtubs, whirlpool baths; showers; shower and bath cubicles; shower bases; shower heads; shower doors; shower spray heads; basins being parts of sanitary installations; shampoo basins for barbers’ shop use; toilet bowls; sinks; sink pedestals, vanity sinks, saunas
  • Cognet HRO Logo- Business process outsourcing services in the field of human resource providers
  • BREYTING - retail and wholesale distributorships in the field of coffee; retail and wholesale distributorships in the field of table, kitchen and bed linens
  • ION ASSET ARCHITECTURE – HEDGE FUND INVESTMENT SERVICES
  • BT FRIENDLY – teddy bears
  • LIGHTHOUSE ALE – beer
  • MARVELASH BAR AND DAY SPA – Beauty salon services; beauty care services, namely, eyelash extension services; Day spa services, namely, massages, makeup applications, facials, body wrapping services, nail care, manicures, pedicures and nail enhancements
  • GRIEF RELIEF – Building construction supervision; Construction supervision; General contractor services, namely, plumbing, heating and air conditioning, carpentry, drywall, painting, electrical, building and framing contractor services
  • EMSISOFT – Computer software for detection and protection of malicious code; computer software for ensuring security of electronic mail and for removal of computer viruses in the field of security tools
  • THE BALANCING ACT – Entertainment and educational services, namely, providing an ongoing television talk show program concerning topics of interest to women, such as news, health, family, finances, travel, pets, cuisine, beauty, fashion, and the environment
  • - Real estate staging
  • TRANSPARENTME – Background investigation and research services; Background investigation services; Pre-employment background investigation services
  • BRANDSTAR ENTERTAINMENT – Television show production

So far in 2010, our clients have received more than 160 U.S. trademark registrations and filed more than 200 applications for U.S. trademark registration with the USPTO.

Tips for implementing a social media policy

Posted by admin on: November 19th, 2010

Issues continue to arise regarding the use of social media and the legal and practical issues that can arise.  Here are few stories demonstrating the need for common sense by users and social media usage policies from employers:

Risks of mismanaged or unmanaged social media activities in the workplace:

  • Content contradicts company policy
  • Employee embarrasses company
  • Used to violate someone else’s intellectual property
  • Used as evidence in a future legal case
  • Used improperly in employment decisions
  • Leak of confidential information
  • Misuses company’s intellectual property
  • Unclear if source is personal or company

Tips for implementing a social media policy:

  • Educate employees about risks
  • Share company goals for using social media
  • Make it clear who owns what
  • Outline company objectives and goals
  • Flexible guidelines
  • Examples of proper use
  • Examples of improper uses
  • Ownership of accounts and content
  • Intellectual property usage
  • Proper usage of company logos and brands
  • Educate employees about respecting the intellectual property rights of others
  • Register usernames that correlate to company brand names
  • Protect confidential information
  • Use of social media in hiring decisions
  • Employee signature acknowledging receipt and review
  • Use clauses in contracts to address who owns content (and/or accounts) created by employees, by contractors, by users/customers, and in joint ventures