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Greetings!

Earlier this month, Millward Brown released its 2011 BrandZ study of the most valuable global brands is out. There are several common trademark themes among the most valuable brands in the world:

Distinctive names and much more prevalent than descriptive names. The only name that is “descriptive” in the top 10 is “China Mobile”.  A great majority of them are made up terms or completely arbitrary, like Verizon, Amazon, Microsoft, Apple, and Walmart.

Great logos. Many of the names are accompanied by very distinctive, memorable logos.

Intellectual property. At least half of the businesses are built on intellectual property, whether they be software code, search algorithms, trade secrets, or patents. See for example: Apple, Google, IBM, Microsoft, GE, Amazon, and others.

Cross-platform brands. Many of top brands sell a variety of different – but related – things. [Apple: phones/computers/software. Verizon: internet/cable/cellphone. UPS: shipping/logistics.] And their brand names and logos reflect this flexibility by being absent of descriptive or limiting wording.

Starbucks is missing from the list. But I think one day it may be among the brand leaders. And their change in logo earlier this year to allow it to become more of a “cross-platform” provider is to allow the Starbucks brand to become about more than coffee.  [See my earlier blog post about the logo change here.]

You can review the full BrandZ report here.

Did You Know?

Last month, the Department of Commerce (of which the USPTO is a part) released its long anticipated study on trademark litigation tactics. In short, the Trademark Litigation Study essentially says: We conducted a thorough study and there is no problem; and if there were a problem, no significant changes would be needed. Hakuna Matata! In my opinion, the study’s method and analysis are both critically flawed. The study was, by law, to focus on the experiences of small businesses (the request for comments uses the phrase more than 10 times and the statute creating the study directs it to cover “the extent to which small businesses may be harmed by litigation tactics”). Yet very little attention was given to gathering and considering their perspectives.

The study says it is the result of “significant outreach to stakeholders and small businesses.” I beg to differ. There was little promotion of the request. There was a lack of real outreach directed to small business groups and organizations and relevant agencies like the Small Business Administration (SBA). The Study touts a single USPTO roundtable, but it was barely publicized, was put together on short notice, was held in only Detroit, was a small part of a larger program, and did not (to my knowledge) include any specific input from small businesses.

Of the comments submitted, the Study spends equal time on (and seemingly equal weight to) the comments from four groups of attorneys compared to the other 75 commenters. As I told Managing Intellectual Property a few days ago, It’s sort of like asking the football team at the high school whether or not there’s a bullying problem.”

The study makes three recommendations, to (1) urge pro bono efforts from private sector, (2) urge more CLE (continuing legal education) programs on trademark litigation issues for attorneys, and (3) enhance outreach from several government agencies. The first two suggestions are to have the lawyers (the commenters who said there is no real problem) do some small outreach and education on their own. This is a stunning result of the Study because the proposals are so weak. They are, at best, the tip of the iceberg at best and should be among a list of much more significant proposals. I refuse to believe that the two most significant things we can recommend are for the people who said there is no problem to do something about it.

While I think the Study is weak and mistaken in much of its analysis, the trademark and small business public is partially to blame for failing in general to submit comments or to publicize the issues. Perhaps a larger public outcry would have necessitated a different result. The Study should have included greater outreach and should have given greater weight to all of the commenters who took the time to respond.

Is this Study the best that can be done on this issue? In my opinion the Study falls woefully short of a thorough review of the issues and the possibilities of making the system better. I have written to Congress urging public hearings on the issues and the Study. I hope you will do the same. Note that the USPTO has yet to release any of the comments, but I have obtained some of them via a FOIA request. I have published them here.

Trademark Tip: How to Launch a Slogan

Our firm recently launched a slogan:

Experience is our trademark. Trademark is our experience.

Since we constantly work with clients to launch new product names, brands, logos and slogans, it is always a good exercise for us to experience the same process. We already own and use several trademarks: tm4smallbiz.com®; our firm logo; smar(tm)ark® – our firm newsletter; IPELTON® blog title; and Apptorney®, our iPhone application.

Here are the steps we took in creating, launching and protecting our new slogan:

– We decided that adding a slogan to our marketing materials which communicated something about our services would be a nice addition to the materials.

– We decided on the the message we wanted to communicate. With more than 10 years in business,  over 1,000 trademark registrations obtained for clients,  and my experience as a former USPTO trademark examiner, we decided that communicating our experience was important. We also wanted to communicate that trademark is our focus and the overwhelming majority of what we do. We don’t dabble in trademarks. We live and breathe trademarks every single day.

– We brainstormed possible slogan ideas that touched on the message. Ultimately, we settled on the slogan Experience is our trademark. Trademark is our experience.SM   The slogan excited us because in addition to communicating the message we sought,  it has rhythm and symmetry.

–  We searched to make sure no one was using a similar slogan in our field, and we searched theUSPTO trademark records to make sure no one had registered or filed for anything similar.

– We incorporated the logo into our new press kit (below) and some other materials to begin using it.

– We made sure to use proper trademark notice as we began using the slogan – using ‘SM’ on the right shoulder and bold or italics when using it amongst other text to make it stand out.

– We filed to register the slogan with the USPTO and received application Serial No. 85190938.

– We began to use the slogan even more. For example, we recently ordered new letterhead and placed the slogan on it.

Trademarks in the News: TRUMP Brand


I recently blogged about the TRUMP brand and its power (see DONALD TRUMP: a rich trademark portfolio here). I noted that the TRUMP brand has been extended well beyond real estate and that the TRUMP brand is quite valuable. Now it seems that some of the ventures attached to the TRUMP brand have run into problems. And they are getting sued. And so is “the Donald.”

New York Times: Buying a Trump Property, or So They Thought

Legally, the primary issue in these cases appears to be how insulated Mr. Trump is from any lawsuits and damages related to ventures where he licensed the Trump brand. My guess is that Mr. Trump and his experienced attorneys placed language in each license agreement that sufficiently distances his fortunes from the venture and protects him in exactly these types of cases. A license agreement can take many shapes and forms. It is principally permission to use a brand name for certain purposes (for a fee of course). But generally the brand name owner is not involved in running the business and does not accept the liability for problems.

Designer brands often license their names to extend their product lines. I don’t think that Porsche makes sunglasses. Disney probably does not make paints. Rather, they license their brand to a sunglasses manufacturer. But if the manufacturer backs out of a contract or make poor quality products, in general the licensor (in this example, Porsche) is not going to be liable. The licensor essentially reaps all the rewards ($$) with little or none of the risk.  That is why licensing is often very profitable. Other than building and golf courses, it is likely that just about everything associated with Trump brand is done under license. Fragrances? Alcoholic beverages? Clothing? Why get involved in making them if you can license them. Of course, the tricky thing about licensing is to protect the brand’s quality and image – which is exactly the problem these lawsuits are now creating for Trump.

It will be interesting to see if these lawsuits damage the Trump brand and affect any future licensing (or political?) ventures.

Firm News

The number of U.S. trademark registrations received our clients recently topped 1,500!  Thank you to all of our clients over the last 11 years – without you it would not be possible. Teaming with clients from such diverse businesses is one of our favorite parts of what we do. In 11 years we have worked with more industries than we could ever have imagined – software, social networking, school lunch catering, human resources outsourcing, drift racing, paintball, food safety training, personal organizers, golf tournaments, music production and performances, drive through cafes, skin care, medical supplies, beer, wine and grapes, apparel, online voting, background screening, staffing, forensics, fashion, and so many more!

Recent IPelton blog posts

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

Fun trademarks from San Francisco
This week I am at the annual conference of the International Trademark Association in San Francisco. These meetings are always a whirlwind of educational opportunities, networking opportunities, and meeting clients face-to-face (often for the first time!). Of course, San Francisco is a great city with tons of culture, history and sights to see. Read More »

More comments to USPTO regarding Trademark Litigation Tactics obtained via FOIA request
I recently obtained additional from the USPTO in response to a FOIA request regarding the 2011 Trademark Litigation Tactics request for comments. These comments include several companies including Intel, several individuals, several attorneys, and several organizations. Read More»

Another case study in trademark mismanagement: Google Chrome
Google this week unveiled a plan to sell and rent laptops. Sound like a great idea in my opinion as it promotes their browser/OS and promotes their vision of a cloud based world with little if anything stored on the user’s computer. Read More »

Should you file a trademark application by yourself?
I get asked all the time: “Can I file a trademark application by myself?” The simple answer is yes.  No attorney is necessary. But just because you can does not mean that you should. 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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