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Greetings!

It has been a very busy month since our last newsletter. Some highlights:
– We received USPTO records via a Freedom of Information Act request regarding comments submitted to the agency about abusive trademark litigation tactics;
– Our office wrote and sent a letter to Senator Patrick Leahy, Chair of the Senate Judiciary Committee, requesting hearings on the trademark litigation tactics issue;
– Erik participated in a panel discussion with Commissioner of Trademarks Deborah Cohn at the ABA’s 26th Annual Intellectual Property Conference (see below);
– We hosted a teleseminar on ‘Choosing a Trademark’; and
– The City of Falls Chruch, where our office is located, unveiled new parking signs featuring “The Little City” logo, which we registered for the City:

 

photo (C) 2011 Falls Church News Press

Did You Know?

Can you guess what are the most popular words in trademark applications filed thus far in 2011? There is no official list published anywhere, so a little guesswork is required. Through the end of March, approximately 69,000 trademark applications have been filed with the USPTO. Which words are are hot in 2011? Social network services? Green products and services? The ‘cloud’?

Here are some of the most popular terms in 2011:

– SOCIAL : 168 applications
– NETWORK : 270 applications
– BOOK :145 applications
– CLOUD :149 applications
– ECO : 219 applications
– GREEN :402 applications
– ORGANIC :91 applications
– MOBILE : 175 applications
– TIGER :36 applications
– WINNING : 26 applications (duh!)

Trademark Tip: One letter can say it all

Just about anything that helps distinguish a brand from competitors can function as a trademark – a name, a logo, a slogan, or even a color, a sound, or a shape. Brands can be so powerful that sometimes all it takes is a single letter to identify a product or service.

Can you identify the product or service that goes with each of these one letter logos?

Trademarks in the News:

5 Years of Twitter – A case of Mismanaged Trademarks

Twitter turned 5 years old this week. It is amazing how technologies penetrate our daily lives and how news is now created by, on, and with Twitter all the time now; many use the service to follow breaking news. You can follow my twitter feed (generally a daily link to an interesting trademark registration or dispute) at @tm4smallbiz.

Twitter presents a good case study regarding the value and benefits of some foresight in protecting trademarks. The service – and the brand – are worth billions of dollars now.

– Step 1: Choose a distinctive and creative name. Twitter certainly succeeded in this step as the word “twitter” has no meaning relevant to computing. But perhaps the meaning of the name is too remote – it does not really “suggest” any relevant meaning either (to me at least). In my opinion, a suggestive name is the best kind.

– Step 2: File to register brand name, logo, and other key trademarks. Here is where Twitter failed initially. The application to register the TWITTER name was not filed until April 26, 2007 – more than 1 year after the service was launched.

An application for the “t” logo below was not filed until 2009. It was filed based on intent to use and is still a pending application.

TWEET and RETWEET were also not filed until 2009 also and have been held up (“suspended”) because others filed to captialize on the Twitter success in the interim.

A company – particularly a successful company backed by lots of funding – should review and identify its core trademarks quarterly to ensure that they are filed and protected. While money may always be tight in startup phase, the cost of filing these trademarks earlier – a few thousand dollars – could have saved tens or hundreds of thousands of dollars in legal fees for disputes down the road.

Disputes – Twitter has had to get involved in trying to stop several other companies from registering similar names or from using brand names that contain “twitter” or “tweet”.  The disputes have been necessary because Twitter did not protect its trademarks early and was forced to block several other pending applications from others, like TWEET.ME, LUVTWEET, and TWITTERS BAR & GRILLE. Registering Twitter’s trademarks early would not guarantee less disputes, but it would significantly increase the odds of avoiding protracted disputes. With registrations in hand, some or all of the disputes could likely be resolved more quickly and cheaply, since Twitter would likely have a stronger claim against the other parties.

The longer it takes Twitter to knock out all the (alleged) infringers now and secure registration of its trademarks, the more problems Twitter could incur which means that even more disputes may arise in the interim.An application for the “t” logo below was not filed until 2009. It was filed based on intent to use and is still a pending application.

Lesson: A proactive strategy to register and protect trademarks is crucial for any business, especially a rapidly growing one. Such a strategy could end up saving the business from numerous disputes and significant expenses.

Firm News

At the American Bar Association’s 26th Annual Intellectual Property Conference this month in Arlington, Virginia, Erik spoke on a panel with Commissioner of Trademarks Deborah Cohn.

 

Panel at ABA conference

Recent IPelton blog posts

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

Business News Daily: USPTO ‘Trademark Bully’ Comments Reveal Small Business Headache
An article this week by Business News Daily (www.businessnewsdaily.com) quotes me about the comments I obtained via a FOIA request regarding the USPTO study of trademark litigation tactics. Click to read more»

Study demonstrates that brands add value
A recent article in The Economist highlights some of the roles brands play in society (HT to @TTABlog for the link). In addition to the power of brands to promote a product or service and conjure thoughts of a mood or lifestyle, the study found that reputable brands are equated with trust. Click for read more»

2011 Final Four®: Best Trademarks
This weekend the Final Four® in the NCAA men’s basketball tournament will play. Here are some of the pertinent trademarks Click to read more»

Trademark Litigation Tactics comments received via USPTO FOIA Request
As I detailed yesterday, I submitted a FOIA request to the USPTO for communications and comments regarding the “Trademark Litigation Tactics” study (a.k.a. “bullies study”). Click to read more»

Anatomy of a Trademark Consent Agreement
One potential way to deal with a refusal from the USPTO to register a trademark is to obtain consent from the owner of the registration (or application) that is blocking the path. Click to read more»

WSJ Article highlights Zippo® lighter IP issues
Zippo lighters apparently come with a lifetime guarantee. Zippo’s maker thus has extra incentive to prevent and recognize copycats – the copies are taking away sales potentially, and are costing Zippo time and money if they get sent in to be repaired. Click to read more»

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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