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Greetings!

2010 has been a year of great activity here at the offices of Erik M. Pelton & Associates. Our clients received more than 175 trademark registrations and filed more than 210 new trademark applications. We take immense pride in the fact that over the last ten years the firm has registered more than 1,400 trademarks!

During the course of the past year, Erik spoke to a variety of audiences about trademarks, branding, and social media. We posted numerous videos to YouTube® and dozens of entries on the IPelton® blog. In May, we launched Apptorney, an iPhone® application providing a variety of trademark and patent resources. We mentored interns from several law schools, attended a variety of meetings and events with USPTO officials, and appeared on behalf of clients before the Trademark Trial and Appeal Board on multiple occasions.

Our most gratifying moments, however, came working with clients. We visited clients in several states while attending or speaking at conferences; we welcomed the return of many former clients protecting new brand names and working on new projects; and we were repeatedly honored by those who referred us to their colleagues and friends. Such referrals are the biggest complements we can receive!

We wish each of you continued success in 2011!

Trademark Tip:
Top Trademark Trends in 2010

In 2010, many of the biggest news stories touched on the world of trademarks in some manner. Facebook and Apple were active taking steps to register and protect a variety of trademarks. But the most notable trademark story of 2010 was the release and subsequent retraction of a new GAP® logo. Here are the most significant trends in trademarks for 2010:

1.      New logos. Many companies unveiled new logos in 2010, including Aol., Hertz, Comedy Central, iTunes, MySpace, MTV, and Kayak. Few of them were enthusiastically embraced and several bombed, such as the GAP.

Customer reaction to the new GAP logo was very strong and fueled by Facebook pages, twitter posts, and websites. Within days, GAP cancelled plans to use the new logo and filed to abandon its application with the USPTO. The GAP incident reflects the strong bond that consumers and brands enjoy and the significance of a good trademark that resonates with customers. Companies looking to re-brand in 2011 should heed this message and evaluate whether a new logo is really the best way to do so.

2.      iPhone Apps. Names and logos for mobile software applications are increasingly a battleground for trademarks and brands. Apple recently registered many of the icons for its programs on the iPhone. And in 2010 several companies fought over app names and listings in Apple’s app store; this trend is likely to increase in 2011.

3.      Facebook. As Facebook continues to grow, so does the reach of its trademarks. In 2010, Facebook went after “Teachbook” and “Faceporn” and was preemptively sued by “Lamebook”. In addition to trying to stop those it believes are infringing or diluting the Facebook brand, Facebook filed a slew of US trademark applications in 2010 to protect terms including “Like” and “Face.”

4.      Reality TV Stars. Reality TV stars realize that trademark registration helps maximize the value of their brands. Snooki and The Situation each filed for trademark registration in 2010, and Kim Kardashian filed four trademark applications in 2010 for her brands.

5.      Social Media. Proper usage of brands and logos on social media websites is more important now that customers expect every major brand to have a social media presence. Companies that do not set up and use social media websites to promote their brands may find fans or competitors misusing their names. For example, the NFL Players Association, in anticipation of a possible lockout next year, set up a website at nfllockout.com. But someone already owned the Twitter handle ‘nfllockout’. After a formal complaint to twitter, the NFLPA was able to obtain control of the Twitter account. Similarly, the ‘gaplogo’ Twitter account is controlled by someone mocking the GAP.

6.      Trademark Scams. Trademark owners are increasingly targets for a variety of scams. Worthless foreign or business ‘registers’ and ‘directories’ continue preying on owners of registered trademarks, as do a variety of domain name scams, particularly for the .cn, .hk, and .asia extensions. Trademark owners should carefully examine all solicitations regarding their trademarks and ignore those for meaningless publications.

7.      BP. The Gulf oil leak was a major news story in 2010. The BP brand has weathered the  storm fairly well due to good advertising and a strong brand. Ironically, the BP logo is very green and natural, evoking thoughts of the sun, flowers, growth, youth, and cleanliness.

8.      Stories in the News: The Tea Party & WikiLeaks. Just as the ‘tea party’ movement was prevalent in the headlines in 2010, the name was also quite active in the world of trademarks. More than 30 U.S. Patent and Trademark Office (“USPTO”) applications in 2010 contain  ‘TEA’ and ‘PARTY’. Although WikiLeaks, another newsmaker in 2010, is not a registered U.S. trademark, in 2010 more than 20 applications were submitted to the USPTO containing “WIKI”, including WIKISOAP, WIKIGAME, WIKISHOE, WIKIPAD and WIKITUBE.

9.      ‘Bullies’ study. As part of a bill passed by Congress in 2010, the USPTO is conducting a study about overreaching trademark enforcement efforts and their effect on small businesses. The USPTO has issued a request for comments and has said that it will hold public discussions on the issue in early 2011. More details at http://bit.ly/tmbulliesstudy

10.  Trademark filings increase. As the economy rebounds from a recession, trademark filings at the USPTO are increasing, yet they remain below pre-recession levels. Through November, more than 256,000 U.S. trademark applications were filed, an increase of about 4% compared with the first 11 months of 2009.

What to watch for in 2011:Social media and iPhone® applications will continue to be hot areas for brand development and trademarks. Look for companies to be more cautious about launching new logos on the heels of The GAP’s disaster. As the economy continues to rebound, look for successful businesses to realize the role growing intellectual property plays in their success and the value of the business, and look for trademark filings in 2011 to increase another 5% to 10%. Celebrity trademark stories will continue in 2011 as reality stars, professional athletes, and entertainers continue protecting their brands. Finally, look for Facebook to continue expanding the reach of its brands and trademarks, but don’t be surprised if a public backlash disapproving of the company’s overreaching efforts to control words such as ‘face’, ‘wall’ and ‘like’ cause force Facebook to take a less aggressive approach to its trademarks.

Trademarks in the News:
297! Who owns the right to profit from Brett Favre’s Streak?
Apparently the Minnesota Vikings believe that they own the right to profit from the streak – or at least from the marketable number it created – 297. On Monday evening last week, while Brett Favre watched his team play from the sidelines for the first time in 298 regular season games, attorneys for the Vikings were filing three US trademark applications based on a bona fide intent to use the following marks (click links for USPTO records):

297 (Application Serial No. 85196936, filed at 9:11 EST)
FAVRELOUS STREAK 297 (Application Serial No. 85196942, filed at 9:20 EST)
FAVRELOUS 297 (Application Serial No. 85196955, filed at 9:49 EST)

Each application was filed for use in connection with:

Entertainment services, namely, presentations in the nature of professional football games and exhibitions ; Beverage glassware, cups, mugs, bottle openers, foam drink holders, insulated sleeve holders for beverage cans, neoprene zippered bottle holders, ice buckets and beer buckets; Men’s, women’s and children’s clothing, namely, fleece tops and bottoms, caps, visors, headwear, t-shirts, sweatshirts, shorts, tank tops, sweaters, pants, jackets, turtlenecks, golf shirts, woven shirts, knit shirts, jerseys, wristbands, warm up suits, swimwear, wind resistant jackets, raincoats, parkas, ponchos, gloves, ties, suspenders, belts, cloth baby bibs, sleepwear, namely, robes, night shirts and pajamas, mittens, knit hats and caps, scarves, aprons, headbands, ear muffs, underwear, socks, shoes, athletic shoes, boots, sneakers and slippers

Perhaps this is why the Vikings were willing to give Favre millions of dollars to play this season – so they could sell baby bibs with “297” across them!

The USPTO filings raise a few questions:

1) Absent some kind of agreement, who should be able to profit from selling products featuring the number 297?
-Favre?
-the Vikings?
-the NFL?
-the NFL Players Association?
-anyone who wants to?

2) In order to qualify for registration of a trademark on the Principal Register, a mark must indicate the source of the goods or services and not be merely ornamental. Will bottle openers featuring “Favrelous 297” on them indicate that Minnesota Vikings Football, LLC is the source of the products?

3) Will the Vikings try to stop others from making or selling shirts that use the number 297 on them in connection with Favre, football, or the color purple? Just a guess, but I think they will try.

The official Vikings merchandise website is already featuring a FAVRE 297 SALE! Note that at this time, they are not using a TM or SM next to 297 to indicate any claim of trademark rights.

Related Blog Post: Sports stars and their trademark slogans

Did You Know?

There are more than 1.6 million trademarks currently registered with the U.S. Patent and Trademark Office!
Our iPhone app – Apptorney – has been downloaded more than 1,000 times! Check it out at www.apptorney.com
Some interesting U.S. trademark registrations:
YOGI BEAR http://ow.ly/3oEjd
Levi’s pocket stitching design http://ow.ly/3hfya
JOHN LENNON registered for eyewear. Owned by Yoko Ono. http://ow.ly/3lMTX
JETER logo by Nike http://ow.ly/3kk9m
Zagat protection for burgundy cover on books http://ow.ly/39x1W
SWOOSH (the word, not the shape) from Nike. http://ow.ly/34KQk
TEAM COCO pending application.http://ow.ly/34KEY
Hershey Kiss shape, used since 1907.http://ow.ly/2ZhzO

Firm News

We will be hosting our first FREE teleconference, “10 Essential Trademark Tips” on Tuesday January 25th at 12 PM E.S.T.

Mark you calendars now – we will send dial in instructions in next month’s newsletter.

Suggestions

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 material.

© 2011 Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.

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