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Greetings!

Our new teleconference series is off to a great start. So far in 2011 we have already discussed “Ten Essential Trademark Tips” and “Common Trademark Application Mistakes”. Our next free call, on March 23rd at 2 pm EST, will feature tips for “Choosing a New Brand Name.” If you are planning a new product or service launch in the near future, or have been considering re-branding, this call will provide many great tips on brainstorming name ideas, creating a strong trademark, and clearing a potential brand name.

Click here for to sign up for the free call, as space is limited.

Did You Know?

Unless you have been under a rock, you have seen how Charlie Sheen’s recent erratic behavior has been riveting the media recently. Soon he will be cashing in – last week Sheen signed a licensing deal with Live Nation to create merchandise featuring some of his new catchphrases.

Several USPTO trademark filings by other people are already trying to cash in as well. For example (click for USPTO records):

Many of these applicants could soon be receiving letters from Mr. Sheen and/or Live Nation!

Trademark Tip: Proper Trademark Use

I get asked all the time about how clients should use their trademarks. Proper use is important to building and maintaining strong trademark rights. Here are six basic tips for using a trademark:

Use the proper symbol: if registered use the ® symbol; if not registered use TM if the trademark is applied to a physical product, SM if the trademark advertises services

Use the symbol prominently: Use it on letterhead, business cards, front of your webpage, slide presentations, videos, white papers, etc. You need not use it every time, but it can’t hurt. Generally the symbol goes on the upper right shoulder of the name or logo, but there is no strict rule for placement.

Distinguish the trademark from other words: When a trademark is used in text, make it stand out – use bold, italics, a different font (or a combination of these) to make it stand out.

Include information about trademark rights in agreements: In contacts with employees, partners, clients, vendors, and others, note explicitly that “XYZ is a trademark of ABC, Inc.” and add “registered” if applicable. That way there is no dispute about what is yours as you enter into the relationship.

Do not use it “generically”: Try not to use the trademark as a noun, but rather as an adjective preceding the generic name of the product, as in “use our Kleenex® brand tissues” or “taste a Frappucino® blended beverage”. The goal is to avoid becoming the category of products or services and weakening the strength of the brand and potentially becoming generic.

Brag: Having a registered trademark is a great thing! Don’t be shy, tell others as often as possible. It enhances the value of the brand and the trademark.

Trademarks in the News:

New Starbucks Logo

Recently, Starbucks unveiled a new logo in celebration of its 40th anniversary.

As you can see from the image below [from Starbucks website], the new logo is not a drastic departure, but contains several subtle changes:

– It is all green, the color black has been removed

– Instead of being an image surrounded by a circle design, it is now just one image, although the new image has a partial circle within it

– Most strikingly, it drops the wording “STARBUCKS COFFEE” from the design.

Only a handful of the logos in the world dare to stand alone without any wording. The new Starbucks logo in my opinion, has two main purposes:

– To equate Starbucks with other iconic brand logos like Apple, AT&T, Nike’s swoosh, and the Olympic rings that often use a logo without any words

– To help move the Starbucks brand beyond “coffee”. Starbucks may sell liquor at some stores. They already promote music, food, and are likely eyeing further expansion in the future. “Coffee” in the logo was limiting.

In my opinion, the Starbucks logo is not well known enough to stand without the name. A better choice would have been to drop “Coffee” from the logo but keep “Starbucks”. I like the new design, but I do not like the idea of dropping the brand name. The Starbucks logo may be well known among coffee enthusiasts and Starbucks customers, but if the company is planning to try to expand its markets to new customers, the logo alone – without the name – may not resonate or communicate with those who are not their core coffee customers.  Note also that most of the other logos that frequently stand alone without wording are simpler and less ornate.

Here is the USPTO application for the new design: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=85244515

Firm News

On a recent vacation in Orlando, Erik had the opportunity to meet up with a client with offices at Universal Studios Florida. Erik got a private tour of the production facilities, sound stages, and the theme park!

If you are ever in the Washington DC area for business, let us know so we can meet and show you around town!

Recent IPelton blog posts

Here are some popular recent blog posts from our blog at http://IPelton.wordpress.com:

Subway now has more stores than McDonald’s – Who has better trademarks?
03-10-2011 06:00:05 AM

It was reported this week that Subway now has more locations worldwide than McDonald’s. At the end of last year, Subway had 33,749 restaurants worldwide, compared to McDonald’s 32,737 (Wall Street Journal). Which company has the better trademarks? …
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Trademark scams: Update
03-04-2011 06:00:30 AM

In November I warned about a new scam targeting trademark owners and applicants that featured a logo and name strikingly similar to those of the World Intellectual Property Organization (WIPO). This scam has now reached the attention of WIPO. WIPO has published a list titled “WARNING: Requests for Payment of Fees” featuring a list of solicitation scams targeting trademark owners…
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Oscar 2011 Trademark Winners
03-01-2011 06:00:35 AM

Several winners and nominees from Sunday night’s Oscar® awards are protected trademarks: INCEPTION – pending application for online computer games INCEPTION – pending application for motion picture films and other services TOY STORY – multiple registrations for variety of goods, including…
Read Full Post

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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