Archive for June, 2011

New York trademarks – a photo journal

Posted by ipelton on: June 29th, 2011

Last week I traveled to New York City. Of course, I took pictures of some of the great and not-so-great brand names, logos and slogans I encountered.

Which ones are your favorites?


Related posts:

Call Name:

®, TM & SM – Oh my! Proper use of trademarks – Free Conference Call

Call Date & Time: 6/30/2011 3:00:00 PM EST
Time Zone: Eastern Time (US & Canada)
Duration: 30 minutes
Description: This call will feature information about proper trademark use. Proper use of a brand name is intergral to increasing its legal protection, increasing its business value, and warding off potential infringers. During this call we will provide specific examples of proper and improper trademark uses and provide simple tips for enhancing the visibility and protection for your brands.Sign up for the call here:

About Erik M. Pelton & Associates:
• Established in 1999 by former U.S.P.T.O. examiner Erik Pelton, the firm has registered more than 1,500 U.S. trademarks.
• Named a Top 10 trademark filer by NameProtect’s Trademark Insider three times.
• Presented about trademarks and branding for a variety of business and legal audiencesWeb:



The USPTO Trademark Trial and Appeal Board (TTAB) requested comments regarding possible increased TTAB involvement in settlement discussions for the proceedings before the Board. We submitted comments last week in response to the Board inquiry. I have posted the full comments below.

John Welch of TTABlog® has summarized and linked to the comments of several other individuals and organizations.

TTABlog: Paul Reidl Files Comments Re Proposal for TTAB Involvement in Settlement Discussions

TTABlog: More Comments on TTAB Settlement Involvement: AIPLA, IPO, and John Farmer

TTABlog: INTA and ABA Sections Comment on Proposed TTAB Involvement in Settlement Discussions

Here is a brief summary of our comments: Currently, the Board already requires some discussion of settlement in initial discovery conferences. The Board is also active in encouraging ACR as an option for a quicker, less expensive resolution. Experienced trademark practitioners already know that the overwhelming majority of proceedings at the Board are settled or resolved without a final opinion, and that settlement is usually driven by business, financial, or strategic concerns beyond the question of registrability. As a result, we do not believe that changes to the Board procedures or investments of time or resources in settlement discussions by Board personnel are likely to have a significant impact on the number of cases resolved without a Board opinion. However, we believe that other measures may have such an impact, and we have provided  some ideas for encouraging more settlement discussions and more equitable outcomes, many of which are aimed at reducing the overall length of TTAB cases.

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Love it or leave it: “Buffalo For Real” slogan

Posted by admin on: June 24th, 2011

The Buffalo Niagara Visitor’s Bureau recently unveiled a new slogan for the city: Buffalo For Real. The new slogan is, like those slogans of many cities and regions, meant to attract business and tourism to the area.

Slogans for cities can be important to their branding efforts and, in my opinion, can affect the image of a place and the amount of visitors it attracts.

For example, these are some of the best known slogans:

  • What Happens in Vegas Stays in Vegas (Las Vegas, NV)
  • I ♥ NY (New York, New York)
  • Virginia is for Lovers

Buffalo has been the butt of jokes for a long time. Its cold. Its far away. Its next to Canada. That is why I love the new slogan. Its modern and catchy – using the popular phrase “for real” – and it evokes a few messages that are all positive. You could go to Buffalo. For real. And the people there are real – it is a working class town. And its a place with real history.

There is only one problem I have with the new slogan: the visitor’s bureau has not yet filed to register it with the USPTO!

Related Articles:

“Buffalo For Real” hitting its mark – Buffalo Business First

• “Buffalo For Real” campaign takes stage – Buffalo Business First

• Buffalo. For Real – Buffalo Rising

• catchword, an excellent naming blog, does not exactly agree with me.

Anatomy of an ex parte USPTO appeal

Posted by admin on: June 22nd, 2011

Upon receiving a Final Refusal from the USPTO to a trademark application, the applicant may file an appeal to the Trademark Trial and Appeal Board. When such an appeal is made, each party (the applicant and the USPTO Examining Attorney) will submit briefs and potentially an oral argument to a panel of three administrative judges from the Board who will then rule regarding the registrability of the trademark.

What does an Appeal Brief consist of? Generally, it cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence, and may attempt to counter arguments made by the Examining Attorney in the Final Refusal. The Appeal Brief should also describe the evidence of record and the procedural history, along with an index of the cases and statutes cited.

Below is a sample Appeal Brief filed regarding the BOVIS FOODS trademark. For the full TTAB record (the appeal was ultimately successful), see here.

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