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Greetings!

A recent publication in honor of National Small Business Week [“From Beginners to Bigshots“] featured profiles of several successful small businesses. A common theme among almost all of businesses profiled: great brand names! These brand names are exceptional because they are all “suggestive” meaning they provide a hint of the services or products provided but are not overly descriptive, which would make them weaker and harder to protect as trademarks. In addition, many have creative logos and/or slogans.

For example:

Peas of Mind LLC – healthy frozen food company. [USPTO registration for name.]

MEI Technologies Inc. – Merging Excellence and Innovation – an advanced technology company serving civil, commercial and defense industries. [Two USPTO registrations: name and logo.]

Smooth Moove Senior Relocation Services Inc. – with a great slogan that ties in with the cow logo… “we’ll handle the udder stuff

Breaking Ground Contracting Co. – Green building services. Slogan: “Construction. Redefined.

Asuragen Inc. – biotechnology company. [USPTO registration for name.]

Kwaplah International Inc. – Export services. “Kwaplah” means “all of us” in Liberian.

Lesson: Having a unique, strong, protected and creative brand name provides a business with a better opportunity for success. Sure, some successful companies have bland names, and some creatively named businesses fail, but all things being equal having a memorable and creative name, logo and slogan can provide any business with a leg up on the competition!

Trademark Tip: Avoiding Trademark and Domain Name Scams

When a trademark application is filed with the USPTO, the information – including the owner’s contact information – becomes public record and easily found online. Unfortunately, several companies mine the public data and send out what are essentially scams to trademark owners. These scams are generally letters from official-sounding entities that are not governments and provide no tangible benefit. Their publications and registries sound official to the unknowing and certainly many victims have sent them checks or credit cards believing it was important or even necessary.

If you have any question as to whether a solicitation is legitimate, contact an attorney. If the request does not say “U.S. Patent and Trademark Office” or “U.S.P.T.O.” on it, it is not a part of the trademark application or registration process. To limit contact from these scams, our firm never provides email addresses or phone numbers of our clients when filing with the USPTO.

Here is a list of some of the entities engaged in these practices – none are government agencies and none are required to protect your trademark:

TMI Trademark Info Corporation, in Texas
United States Trademark Protection Agency (USTPA), in Seattle, Washington
Global Edition KFT
Trademark Renewal Service, in Washington, D.C.
Globus Edition S.L., in Palma de Mallorca, Spain
Company for Economic Publications Ltd., in Austria
Institute of Commerce for Industry, Trade, and Commerce, in Switzerland
CPI (Company for Publications and Information) Anstalt, in Liechtenstein
Société pour Publications et Information S.A.R.L., in Vienna, Austria

For more from the International Trademark Association about these scams, see here.

Similarly, domain name WHOIS information is publicly available and domain name scams are becoming increasingly popular. As the owner of apptorney.com domain name, I received an email last week purporting to help me protect my brand name against similar Asian domain names. Anyone who replies to one of these scams is then offered an opportunity to purchase domain names (that they probably have no need for) and is led to believe that if they do not purchase the domains someone else is already signed up to buy them. Yet this scare tactic is merely a scam. If you receive any such email, copy and paste a sentence or two from the email into a search engine and read all about others who have received the scam.

Unfortunately, the public data used for trademark and domain name registration is also used to perform scams. If you receive one and are unsure what to do or whether it is a scam, contact an attorney for guidance.

Trademarks in the News

Last month I had the privilege of attending the Senate Judiciary Committee hearing on “Oversight of the Office of the Intellectual Property Enforcement Coordinator.” In my opinion, the panel and witnesses used scare tactics to ensure that the concerns of the biggest business would be taken seriously.However, the concerns expressed were not necessarily representative of all business that rely upon intellectual property rights. Before taking any action, I hope Congress will invite testimony from a more balanced group of stakeholders.

- Erik in background (far left) at Senate hearing -

The hearing included two parts, a report from Victoria Espinel, the first Intellectual Property Enforcement Coordinator, following by testimony from four industry representatives – Warner Bros., AFL-CIO (represents many unions including several that work in film, television and music), U.S. Chamber of Commerce, and Carlin America (a music publisher).
The focus of greater attention and resources toward to Intellectual Property issues by Congress, by Ms. Espinel’s office, and by businesses is a good thing. But I believe that more priority must be placed on balancing the interests of large companies and owners of intellectual property on one side, and the growing number smaller businesses who rely on trademarks, copyrights and patents as core elements of their success.

For example, a recent Wall Street Journal report on trademark infringement (“Name Choices Spark Lawsuits” here) focuses on the pressure small businesses face in defending – or deciding whether to defend – accusations of trademark infringement. The article wisely notes that many businesses carelessly skip a full clearance search for a brand name prior to using it; such a search preformed and reviewed by an experienced trademark attorney could eliminate many potential claims by advising the business to steer clear of names with potential conflicts.

However, the article and the accompanying audio story from Wall Street Journal radio focus on businesses that spent a lot to defend claims or had to change their names. The article failed to devote much space to two other related outcomes: (1) small businesses that fight back and successfully get the threatening party to back down or agree to a reasonable resolution; and (2) big businesses that overreach in their enforcement efforts, stifle small businesses, and cost businesses with legitimate non-infringing trademarks tens of thousands of dollars defending claims that have little or no merit. This second scenario, in my experience, is becoming more and more common, and big companies attempt to use their financial strength to bring or threaten to bring trademark cases that have little merit because small businesses often cannot afford the time, money and uncertainty of fighting back. There is little or no money available to be had in defending a meritless claim, so a wrongly accused business has to weigh the cost of fighting against the cost and harm done by changing the name.

While theft of intellectual property no doubt costs the economy significantly, abusive over-enforcement of intellectual property also costs Americans jobs, revenue, and opportunities to innovate. I will be working to bring greater attention to this issue.

Firm News

We have represented clients from 48 states (sorry Hawaii and Nebraska) and more than 20 countries abroad!

Did You Know?

Much has been made in the news lately about Lebron James leaving the Cleveland Cavaliers for the Miami Heat. Did you know that the LEBRON trademark is owned by Nike, Inc.!

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.

© 2010 Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.

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