Archive for August, 2011

Panel on Intellectual Property Issues Added to 2011 Social Media Summit

Erik Pelton, founder of Erik M. Pelton & Associates, PLLC®, a boutique trademark law firm in Falls Church, Virginia, will lead the panel, Social Media and Intellectual Property Issues.

The Summit will take place September 14, 2011 at Harrisburg University of Science and Technology.

2011 Social Media Summit webpage.

Twitter: @HUSocialSummit


See full press release here:



Content: to be free or not to be free?

Posted by ipelton on: August 29th, 2011

There is a growing debate in professional (including legal) communities as to whether and how much free content professionals should provide? Does providing free content make you a thought leader? Does it make your advice more valuable? Or does it dilute the value since so much information can be had at no cost?

I am a firm believer that providing a wealth of content is good for several reasons, including:

– Establishes expertise/credibility

– Answers questions and helps people

– Improves search engine rankings

– Improves name recognition and awareness

People searching for free information are unlikely to become good clients/partners anyways. And those searching for information will find it somewhere – why not find it from me? And those who recognize the experience and thought leadership demonstrated in the content will see the value in having such a person “in their corner” advising about the specifics of their situation.  

While much of law and the world may be more and more about efficiencies and reducing barriers, there is no substitute for individual, specific advice that pertains to a real world situation. Yes, anyone can fill out a form; but that does not mean they should. I could fill out IRS forms myself, but that does not mean that I would know how to taking advantage of the rules and savings and tools that are possible. I could even try to take apart and engine and re-build it, but I might cause more damage or worse yet hurt myself.

In my field of trademarks, it is probably true that a ten year old — or a computer — can fill in the fields in a trademark application. But that application may not properly reflect the mark, the goods/services, and many other things. Can the automatic form generator analyze and determine:

Who owns the trademark? Is the trademark in use by the applicant? Is there a potential conflict? Should a logo or a standard character mark be filed? Is it is certification mark? Which description of goods or services is the most accurate? How many International Classes are required? What constitutes proper evidence of use? Should I seek maximum protection or the path of least resistance to obtaining a valid registration? Who is eligible to sign the application? Should a logo be filed in color or black and white? Do I have a system established for monitoring and tracking the status of the application to ensure it does not get abandoned? If the trademark becomes registered, when will it need to be renewed? What symbol should be used with the trademark?

These are just a handful of the many questions that can factor into representing a client for “simple” trademark application. The list of questions about doesn’t even address any of the much more complicated questions that may arise if a substantive refusal is issued by the USPTO.

I provide clients with real value because my experience allows me to advise them regarding the many issues and questions that can and do arise in the process of protecting and registering a trademark. As a result, I am not afraid to provide general information and advice in the form of free content on Facebook, Twitter, YouTube, the Apptorney® iPhone application and this IPelton® blog.

I was recently quoted on these same concepts in an online article from SHRM Online: Should Consultants Give Away Intellectual Capital? (member only access) published by the Society for Human Resource Management. Here are a few excertps from the piece by Lin Grensing-Pophal:

Pelton, an attorney with Erik M. Pelton & Associates, PLLC in Arlington, Va., said: “Generally, my philosophy is that in today’s day and age providing a wealth of information is a good thing and is generally advisable.”

Pelton, who said he provides free information through blogs, podcasts and videos, said: “You may find something valuable in an article, but that can never replace having one-on-one, specific guidance or consultation for a real situation.” 

Pelton advised HRconsultants to take steps to protect that information through the proper use of copyright and trademark notices, something that he finds few do…. “Every time there’s original content, whether it’s an article or a video or audio piece, or even a graphic, they should use a proper copyright notice,” he said. HR consultants might choose to file a copyright notice with the U.S. Copyright Office or might decide to trademark their business name or aspects of their practices.

SHRM: Society for Human Resource Management

Do you believe that content should be free?

Blue in Boise – an update on one of my favorite trademarks

Posted by ipelton on: August 26th, 2011

Readers of this blog will likely know that Boise State’s blue football field is one of my favorite registered trademarks. It was innovative in the game of football at the time it was launched in the 1980’s, and it demonstrates that almost anything can serve as a trademark provided it is unique and it identifies a product or service. It falls within the category of “non-traditional” trademarks such as sounds, textures, smells, lighting arrangements, building and store designs, costumes, and more that I find fascinating. I admit it has many detractors. It certainly breaks with tradition. Imagine if a team painted its baseball field orange!?

But this summer, the blue turf has been in the news for a few reasons lately, and none of them good:

  • The athletic director who was behind development of the blue field has been fired by the school after 30 years there.
  • Boise State recently switched athletic conferences and joined the Mountain West. Apparently, as part of joining the league, the school has agreed not use use its blue uniforms on its home blue turf. “Coaches and players have complained for years that Boise State has an unfair competitive advantage when it wears all blue on its signature blue turf. ” ESPN: No all blue for Boise State home MWC games.

 Boise State is not the only blue field in the country. There are several others now.

Does Boise State have a potential infringement claim against other schools or teams using blue turf? Have they ever sought to enforce their registered trademark? A high school in Texas just unveiled a blue turf field as well this summer, reportedly the first at the high school level.

Tip: The owner of a registered trademark is responsive for enforcing it against infringers. If Boise State continues to let others use blue fields despite its trademark registration, the trademark may not be enforceable for a variety of reasons including acquiescence, lack of enforcement, and considerable third party use. One option for Boise State, if it believes any of these other blue fields are infringing, is to try to work out a license arrangement with the others – that way they would maintain sole ownership of the trademark rights and retain the ability to enforce the trademark against future infringers – but they could avoid looking like a bully forcing other schools to change after the investments they already made in their turf.

USPTO Records for Registration No. 3707623:


Services: presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, etc.

Description of Mark: The mark consists of the color blue used on the artifical turf in the stadium. The matter shown in broken lines on the drawing shows positioning of the mark and is not claimed as a feature of the mark.

Owner: Boise State University


UPDATE: Boise State apparently did object to the recent high school unveiling a blue field. However, they did not object to use of the color blue, only to use of the phrase “Blue Turf.” According to this article published yesterday, the school is now careful to say “True Blue Turf”, “Oxford Blue Turf” or “Navy Blue Turf.”

I think this type of enforcement strategy by Boise State is mis-guided. The wording “blue turf” is arguably very descriptive if you have a field that is blue. Having a field that is blue is what Boise State protected and uses as a brand. If they wish to stay unique and retain protectable rights, I hope they are focusing on more than just the wording “blue turf.”

The worldwide headquarters of Erik M. Pelton & Associates, PLLC® are located just 90 miles or so from the epicenter of yesterday’s 5.8 earthquake. Yes, we felt it considerably. Thankfully, no one was hurt. A few pictures shook, file cabinets opened, and ceiling tiles shifted. 

Of course, earthquakes are serious matters. For fun, below are few earthquake related registered trademarks (click mark or logo for USPTO records). Shockingly, there are only 90 registered trademarks containing -quake- (but not Quaker, which is a considerably different meaning). Tip: here is how I located the relevant data from the USPTO website: a free form search of TESS for “(*quake*)[BI] and (live)[ld] not (0)[rn] not (*quaker*)[bi]”.

  • – Paper Goods and Printed Matter, namely autograph books, binders, bookmarks, bumper stickers, calendars, catalogs in the field of baseball, children’s activity books, children’s books, decals, sporting event programs, merchandise bags, newsletters in the field of baseball, note pads, paper containers, paper pennants, paper baseball game schedules, pens, pencils, postcards, posters, printed awards, printed game tickets, printed guides in the field of baseball, reference books in the field of baseball, score books, score cards, score sheets, stationery, stickers, sticker albums and trading cards 
  • – speakers for cards, electric crossovers, car stereos
  • EVERY DAY IS EARTHQUAKE SEASON IN CALIFORNIA – Registered by “California Earthquake Authority”, a state agency for: Insurance underwriting in the field of earthquake residential property insurance; financial services in the nature of providing financial incentives and assistance to private individuals, and to private and public entities, for earthquake risk reduction research and earthquake loss mitigation; Educational services, namely, distributing printed and electronic information and conducting seminars in the field of earthquake risk reduction and loss mitigation
  • QUAKEGUARDIAN – Seismic restraint and anchoring system comprising tie down straps, cords and metal and non-metal fasteners for preventing damage to beverage bottles during earthquakes
  • – Professional engineering and research in the field of earthquake forecasting
  • CHEESEQUAKE – reduced fat ice cream confectionary treats
  • EARTHQUAKE COFFEE COMPANY – coffee; restaurant services
  • MILKQUAKE – milk shakes
  • EARTHQUAKES – Entertainment services, namely professional soccer games and exhibitions; and fan club services
  • QUAKE ON THE LAKE – Registered by Oakland County (Michigan) for: Conducting entertainment exhibitions in the nature of a water festival featuring high speed motor boat races

 Stay tuned…. it sounds like I may be posting hurricane trademarks as well this week!

Related Post:

How to support Japan relief efforts


TPAC Quarterly Meeting Summary – August 2011

Posted by ipelton on: August 24th, 2011

The Trademark Public Advisory Committee of the USPTO met last week (Friday, August 19, 2011)  in Alexandria, Virginia at the agency’s headquarters. Associate Mark Donahey provides the following report summarizing some of the key points from the meeting :

NEW CHAIRMAN & NEW MEMBERSDeputy Director Teresa Rea introduced three new additions to the Committee:

  • Maury Tepper serves as the new chairman of TPAC, replacing John Farmer. Mr. Tepper has been appointed to the TPAC on two previous occasions and has served more than 6 years on the committee. He also has served on the Board of Directors of INTA and currently serves as the chair of INTA’s US Legislation Subcommittee.
  • Jody Haller Drake is a new member of TPAC. She is a Partner of Sughrue Mion, PLLC and was both an Examining Attorney and Senior Attorney with the USPTO. She is a frequent speaker for INTA as serves as the Chair of AIPLA’s Trademark Relations Committee. 
  • Cheryl Black is also a new member of TPAC.  She is a Partner with Goodman Allen & Felletti, PLLC of Richmond, VA. She has previously served as an Examining Attorney for 6 years and as a Staff Attorney for the Commissioner of Trademarks for 9 years.  Her experience included work regarding the revisions to the TMEP and implementation of the Madrid Protocol.

TM OPERATIONS UPDATEby Debbie Cohn, Commissioner of Trademarks

  • Performance Measures:  Trademark filings are up, with a projected increase of 4% over last year.  Measures of pendency, quality and efficiency largely meet or exceed trademark goals.
  • Hiring:  Trademarks just completed making offers to 13 new examining attorneys who will start in September. She said Trademarks plans to do more hiring later in the year, contingent on continued trends in application filings.  Notably, all but one of the new examining attorneys previously served as an examining attorney.
  • Disclaimer Practice Roundtable:  Recent changes in the UK and Canada eliminating disclaimer combined with the fact that 30% of USPTO office actions include disclaimer requirements prompted the USPTO to hold a roundtable discussion of U.S. disclaimer practice on of on June 21. Based on the positive opinion many participants expressed about current U.S. disclaimer practice, the Commissioner announced there will not be any changes. Instead, the USPTO plans to provide further clarification of disclaimer policy by publishing a new examination guide that will eventually be incorporated into the TMEP.  
  • Trademark Dashboard: Improvements to the Trademark Dashboard have recently been rolled out.  The PTO received a lot of feedback from users since the Dashboard launched last May.  The improvements were added in response to these suggestions. 
  • Focus Group About Lack of Email Adoption: Last June, the USPTO invited several practitioners who do not authorize official PTO correspondence by email to take part in a focus group on the topic.  Trademarks will implement two changes as a result of the discussion.  First, they will move ahead with introducing an option to provide up to four additional email addresses that will receive courtesy copies of all correspondence. There will still only be one “official” correspondence address. Second, the PTO will begin sending earlier electronic notices of publication.  This change is intended to ensure that all the same notices are sent to electronic filers as to paper filers.
  • Assignment System: Enhanced searching and viewing of trademark assignment documents now available via!
  • Telework Enhancement Act Pilot Project: Trademark will be launching a seven year telework pilot program soon that is expected to permit about 25% of the trademark examining corps to move away from the DC area and come back to the USPTO only as needed.
  • TMEP: The next revisions are expected in October. Some changes based on discussions and comments posted through the new Idea Scale system are being considered.
  • ID Manual: The USPTO is gradually working on improving ID listings to make them more user friendly and remove redundant listings.
  • Upcoming Trademark Trilateral on December 5-7: The PTO will host representatives from the UK and Japan later this year to discuss their trademark practices. Korea and China have also been invited to join as members. Korea has accepted, but no response yet from China yet.  Offices get. TPAC member Kathryn Barrett Park asked whether there is a role for the public to attend, observe, or ask questions at the Trilateral.  The Commissioner answered that there normally is not.  However, this year the PTO is considering adding a user group session to which some trademark associations would be invited. She said it is in the early stages of planning and would take only a small amount of the meeting.
  • Trademark Litigation Study: At the last TPAC meeting, the Commissioner was asked whether the USPTO was taking any steps to implement the recommendations it made in its report to Congress regarding trademark litigation tactics and their effects on small businesses. At that time, the PTO was awaiting feedback from Congress. Though Congress still has not responded, the Commissioner announced that the USPTO will begin taking steps on their own to engage the private sector to get involved in providing free or low cost advice to small businesses to understand cease and desist letters, litigation tactics, and their trademark rights.  The USPTO is initiating outreach to Bar groups now.
  • Trademark Expo: In October the USPTO will host its annual Trademark Expo aimed at educating people about value of trademarks in the marketplace.  In the past they have had 16-17 exhibits, but this year there will be approximately 30 exhibitors.  Last year about 13,ooo people walked through. Kathryn Barrett Park asked whether there would be something at the expo to fulfill the USPTO’s obligation to educate small businesses on policing trademarks and other issues. The Commissioner stated that there would definitely be some lectures on that topic as part of the Expo.


  • Examination of Post-Registration Maintenance Documents: Ms. Marsh reported that last year’s roundtable on implications of the Bose decision highlighted the importance of the accuracy of the register and this may be affected by the different set of rules that apply during initial examination of applications compared to examination of post registration maintenance documents. On July 12, the PTO issued proposed rulemaking to harmonize initial and post-registration examinations by permitting examiners to as for additional information, affirmations, and exhibits during examination of maintenance documents when it is necessary for proper examination or to review the accuracy of the register. It would also permit the office to ask for additional specimens in appropriate cases. The PTO is awaiting comments on the proposed rules, which are due from the public by September 12, 2011.
  • New Exam Guide: The PTO is planning to issue exam guide for Grade and Model Numbers.  Ms Marsh said it will be extremely detailed and will cover all the case law.
  • Madrid Protocol Meeting:  There will be a meeting this fall with group from WIPO that is very interested in hearing any problems stakeholders in the US are having in Madrid Administration. WIPO is also very interested in increasing level of participation in Madrid system from US trademark holders. In preparation, the PTO may take steps to gather information from US user groups about how Madrid could be changed to be more useful to them.

TTAB UPDATE by Chief Judge Rogers

  • New personnel:  Two new Administrative Trademark Judges have been appointed to the TTAB.  Tom Shaw was formerly associate solicitor at the PTO, and he served 10 years as a managing attorney. The Board worked very closely with him during the recent TBMP revisions. Linda Kuczma of Banner & Witcoff is the former President of the Intellectual Property Law Association of Chicago.  Judge Rogers noted that she has been intimately involved in the Lefkowitz National Trademark Moot Court Competition, “which is near and dear to Board’s heart.”
  • TTAB Filings:  Judge Rogers reported some increases in new filings, often resulting from the increases in trademark applications seen by the PTO.  In the third quarter of the fiscal year, Appeals are down from last year, extensions of time to oppose are up slightly, Oppositions are up slightly, and Cancellations are down slightly.
  • Pendency and Backlog: Pendency improved in June, but moved up slightly in July. According to Judge Rogers, “As we work off older cases and reduce the backlog, pendency might take bumps up periodically.”  The average total pendency for a trial case for Q3 was 270 weeks.  The Board is exceeding its goals for contested motions – averaging 9 weeks per motion – due in large part to increased use of phone conferences by interlocutory attorneys. The backlog of motions awaiting decisions is manageable for the current staff, but Judge Rogers stated that, “We’ll have to keep an eye on filings to determine whether we need to modify the interlocutory staff.  We don’t know whether we are going to see large increases or sustained increases.”
  • Precedential Decisions:  Judge Rogers expects that the Board will finish the year with fewer precedential decisions that usual.  However, several have been issued in the last few weeks, bringing the Board closer to its normal pace.  Judge Rogers explained that usually one judge reviews all decisions to determine whether or not they should be classified as precedential, but he recently suspended this practice because he wanted to use that extra judge for writing decisions to help reduce pendency.
  • ACR:  Earlier this year, the Board posted suggestions that AIPLA made about ACR on the website in hopes that others would submit their own as well.  But no other suggestions have been made.  Therefore, the Board started preparing its own list of ACR options, which the Board is nearly ready to post. Judge Rogers explained that the Board’s suggestions will take a different approach than the AIPLA. Specifically, the Board’s suggestions are based on how much time parties want to spend before the Board. The traditional trial schedule gets you out of the Board in two years without any extensions. The Board’s options provide for terms that speed up the average proceeding, at minimum by agreeing to abide by existing trial schedule.  The goal is to allow attorneys to tell their clients with greater certainty what to expect with regard to time before the Board.
  • TBMP Revisions: The Board expects to have a new revision of the TBMP ready to go about the time of the anniversary of the last revisions.  Judge Rogers reminded attendees that the Board has a mailbox designated for comments about the TBMP ( and encouraged everyone to use it. The Board is also in the process of implementing Idea Scale for TBMP, just as Trademarks did for TMEP.  The Board will likely implement it for just one section to start with, perhaps Section 1200 regarding ex parte appeals. Judge Rogers still hopes to have a full time person dedicated to keeping TBMP revised in the future.
  • Comments on Settlement Negotiations:  The Board received comments from 3 firms, 4 individuals, and 4 organizations in response to its recent inquiry regarding the need for greater Board involvement in settlement negotiations.  All comments have been posted on the Board’s website. In general, most comments viewed the discovery conference requirement as an improvement, but also viewed discovery as a necessary step before settlement can be discussed in detail. They therefore argue against anything holding off discovery. According to Judge Rogers, the consensus view was that any involvement by the Board should be upon consent of the parties. Recusal and maintenance of confidentiality remains a major concern of the parties. Judge Rogers noted that there was some support for the Board to limit the number of extensions and suspensions.
  • Future event: The Board has secured a couple dates in November at the USPTO for a possible outreach event for stakeholders to discuss improvements of processing time. Judge Rogers doesn’t know yet whether it would be a roundtable or stakeholder conference yet.

LEGISLATIVE UPDATE – by Dana Colarulli

  • Patent Reform Bill:  The bill has passed the House and should be taken up by the Senate shortly after they return from August recess.  Final action could happen within days or be pushed out as far as a week.  The PTO has already created a website in preparation for implementing the reforms in the bill: ( The most relevant part of the bill to Trademark operations have to do with the increased authority for the PTO to set and keep fees. “There’s a good argument that the PTO should be treated separately,” he said, “and it would operate more efficiently if it is.”
  • Other Pending Legislation and Developments: Colarulli is watching a number of other bills very closely to determine what the appropriate position of the Department of Commerce would be, including the Protect IP Act and a House bill to extent copyright protection to fashion designs. They are also monitoring ICANN Developments regarding new TLDs. 

CFO UPDATE  – by Anthony Scardino & Bruce Kisluik

According to Scardino, “Fiscal 2012 is six weeks away, and we don’t know what will happen.”  He said it is likely no appropriations bill will be passed, and it is likely there is going to be on a continuing resolution instead.  The CFO is taking steps now to make sure the PTO can operate on whatever is passed, whether it is a continuing resolution for six weeks, a year, or whatever else happens.   The CFO office is running scenarios for 2012 to see what various continuing resolutions and/or funding anomalies will do.  Scardino summed it up by saying, “The more funding we have, the more hiring we can do.  The more hiring we do, the more our backlog goes down.” 

NEXT TPAC MEETING: November 18, 2011. Chairman Tepper noted that the TPAC has an obligation to issue an annual report to the President, which they are preparing now. “I hope you will enjoy reading it as much as we have enjoyed writing it,” he said.

MATERIALS: Much of the presentation materials from the meeting are available online as well: