The last few months have been even busier than usual here at Erik M Pelton & Associates. Thanks to exciting clients and new speaking opportunities, there has been little time to stop and reflect on all the activity. Here is a brief re-cap:

We have represented multiple clients this year in appeals of trademark application refusals issued by the USPTO. Here are blog reports discussing two different appeals we won on behalf of clients: WISH YOU WERE HERE and BOVIS FOODS.

I have spoken recently at several conferences and on a panel discussing social medial legal issues. You can see video of the panel’s discussion here and videos featuring some of my other presentations at is a scanned copy of the registration certificate for the color logo. It has many features packed on to one page:

In 2010, our clients have already received more than 140 U.S. trademark registrations and filed more than 190 applications for U.S. trademark registration with the USPTO.

I was quoted in several publications recently, including this article from AOL Small Business: What Are the Best and Worst Company Logos?

This week, staff from our firm will be attending the American Intellectual Property Law Association’s annual meeting in Washington, D.C. These conferences are great for keeping up with developing areas of the law and even for meeting counsel we have previously squared off against!

We have attended several events at the USPTO already this year. These are great opportunities to learn about changes to the agency’s practices and procedures and to continue building relationships with the USPTO staff.

Mentoring law students: Four law school students, including one from New Hampshire, have interned in our office this year. These internships provide us an opportunity to teach and learn, and to share our experiences in the field of trademarks and managing a small law office with students who are preparing to embark on their careers.

While traveling this year I had the opportunity to visit with clients in Los Angeles, New York, and Boston.

We keep busy because our clients are growing successful businesses who recognize the value of our services. Thank you for your continued success and support!


Mark, Erik & Teresa

Did You Know? USPTO Seeks Comments About Trademark “Bullies”

As part of a study mandated by Congress about overreaching trademark enforcement efforts and their effect on small businesses, the USPTO recently issued a request for comment (click link for full details).

I am exploring options for putting together a group or groups of attorneys and businesses to discuss making a collective statement with greater impact. In a nutshell, I believe that there is a lot of bullying and taking advantage of small businesses by those with deep pockets. And the system almost encourages this behavior and certainly does not discourage it. This trademark bullying affects and stifles innovation, intellectual property development, jobs, and the economy. While infringement and counterfeiting hurt the economy, so does the over-enforcement of trademarks.

If you have your own story about trademark bullying or are interested in discussing or joining such a statement, please send me an email.

Trademark Tip:
Anatomy of a Registration

On behalf of the City of Falls Church Economic Development Authority, we recently obtained three trademark registrations for their marketing and promotional slogan, “The Little City” (developed by the wonderful talent at SmithGifford). Why three different registrations? And what do the different parts of the registrations mean?

Let’s examine them:

THE LITTLE CITY – Registration No. 3856394

– Registration No. 3856465
– Registration No. 3856409

Protecting the wording THE LITTLE CITY in all capital letters (called a “standard character mark”) protects the wording/lettering itself in all variations. In other words, the protection has no design, color, font or size associated with it and as a result any design, color, font, or size of the wording will be protected in the registered trademark.

The logo in black and white protects the design, which includes the words, and makes no claim as to color; the design can be presented in, or protected for, any color combination or black and white.

The logo in color protects the design including the text and the colors detailed in it. Generally, a black and white design is sufficient and provides the registrant with maximum flexibility in case it uses multiple colors or could change color usage in the future. The colors should be protected, however, when the colors are significant. Here, the colors are significant because (a) of the distinctive and creative use of multiple colors, and (b) they are aligned with a color palette and theme used by the City in other logos, including that of the school district.

Below is a scanned copy of the registration certificate for the color logo. It has many features packed on to one page:

Trademark Registration Certificate

The top middle shows the protected design.

The registration number is listed below the image, along with the registration date and the name and address of the registrant.

The services (or goods) for which the trademark is registered are listed. Having a comprehensive but accurate description of services is key to having strong and valid trademark protection.

On the left side the certificate notes that it is for the “Principal Register.” Some weaker trademarks can only be registered on the “Supplemental Register” which provides some, but not all, of the benefits of registration on the Principal register.

A disclaimer of the word “CITY” is noted since the word is descriptive of the registrant’s services. A disclaimer of wording means that the registrant does not claim exclusive rights to the ‘disclaimed’ term(s). Generally a disclaimer is needed when words are commonly used in the relevant industry.

Descriptions of the colors claimed and of the design of the logo are provided. These descriptions are necessary for logo filings because the one way to search designs by others for possible conflicts is based on the descriptions or based on a coding system provided.

Other administrative details including the application’s serial number and the USPTO attorney who reviewed the file are provided.

On the bottom left, a nice seal from the agency and the Director’s signature are provided.

Overall, the USPTO certificate contains a variety of elements which are important to the scope of the rights granted by the registration. It demonstrates why the application process should not be taken lightly: there are many opportunities to make errors which could prevent registration or allow registration but limit the rights granted by it.

Upon completing the registration process, a framed registration certificate is a beautiful way to display your businesses’ trademark asset in your offices!

Trademarks in the News:

Was the “New” GAP Logo the Worst Marketing Failure Since New Coke?

Social media has grown rapidly in size, scope, and impact over the last few years. But just recently it seems to have reached a tipping point; businesses must address and deal with social media or else. Maybe the timing has to do with the movie “The Social Network” which is exposing social media to a new audience. Maybe it is the sheer number of users. Maybe it is related to the fall of the traditional newspaper – surely due in part to the rise of social media – and the fact that more news stories are generated by, first reported on, and widely discussed via social media networks.

Earlier this month, the GAP unveiled a new logo design to update its logo of more than 20 years:

A website was launched within hours that poked fun and allowed visitors to make their own versions. It was called “Crap Yourself Logo” and quickly got thousands of “likes” on Facebook. Other groups formed on Facebook to allow users to express their dislike of the logo, and they gained thousands of followers within a day or two. Within a week, Gap announced that it would scrap the new logo. Apparently, Gap did not communicate well with fans about the release of the new logo and its background.

From a branding perspective, I’m not sure why Gap wanted a new logo in the first place. Gap’s history and its loyalty from consumers is powerful (as the logo fiasco demonstrates). When a company decides to re-brand and try to communicate a new message to consumers, it must be careful not to alienate the customers it already has.

Despite the mistake in the effort to re-brand, Gap did the right thing by reacting quickly to revert to the old logo. See their press release here. [Some cynics claim the whole thing could have been planned – look at all the publicity Gap got from it!]

Lesson: The GAP Logo story shows the power of social media. Ignore it as a business owner, and the next lesson may be yours. If you do not have a social media strategy, your competition is gaining on you daily. If you don’t get a grip on the power of social media – and the legal issues it creates – it may get a grip on you.

Firm News

I have been asked several times recently to present on the topic of social media legal issues. Here is a short list of a few social media risks that businesses may be exposed to:

· Content contradicts company policy;
· Employee embarrasses company;
· Used to violate someone else’s intellectual property;
· Used as evidence in a future legal case;
· Used improperly in employment decisions;
· Leak of confidential information;
· Misuses company’s intellectual property; or
· Unclear if source is personal or company

For more about these risks, see video from my discussion on the topic: Social Media, Trademarks, and Brand Protection, or listen to my audio interview: What Employers Need To Know About Intellectual Property and Social Media.


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.

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