Archive for December, 2011

Follow these Twitter Users for #trademark news and insights

Posted by ipelton on: December 29th, 2011

Want to keep up with the latest news, analysis, and commentary in the field of trademarks? Try these Twitter users:



































Of course, this list is not exhaustive – I apologize in advance for missing or forgetting about some!

Follow me on Twitter at @tm4smallbiz



Recent trademark registrations XXIX

Posted by ipelton on: December 21st, 2011

Here is another sampling of recent registrations our clients have received from the USPTO, so readers can see real examples of brands and marks which are being protected [click trademark or logo to open USPTO records in a new window]:

– restaurant services

B7 –  restaurant services

BURGER 7 – restaurant services

NERIUMCS – Non-medicated topical skin care preparations, namely, creams; non-medicated topical cold sore preparations

 – Business marketing services; consulting in the field of business marketing; providing a website featuring information via audio and video in the field of business marketingProviding a website featuring blogs and non-downloadable publications in the nature of articles in the field of marketing; educational services, namely, conducting teleseminars and webinars in the field of marketing and distribution of workbooks in connection therewith; educational services, namely, providing programs in the field of marketing

drop it MODERN. – bags for cameras and photographic equipment; Fabrics, namely, canvas, muslin, velvet silk and taffeta for use as backdrops in photographic productions

APPTIVE – Providing on-line non-downloadable software for the design, creation, and management of mobile applications

– restaurant services

PHO HOT – restaurant services

NANOGEN – Shampoo; hair and scalp care preparations; hair loss camouflage products, namely, adhesives for affixing false hair; hair colorants; cosmetic preparations for the scalp, namely, scalp colorants; cosmetic hair filling powders and fibers for covering bald spots on the scalp; hair sprays for thickening hair; hair restoration lotions; Hair growth stimulants; medicinal preparations for stimulating hair re-growth; medicinal preparations for stimulating hair growth; medicinal preparations for treating hair loss; Hypodermic and sterile surgical injection needles; arrays of hypodermic and sterile surgical injection needles; medical devices, tools, implements and instruments for treatment of the hair and skin, namely, hair prosthesis; plastic bags, cases, and bottles for sterilizing medical instruments, skin and hair

EMMA & SOPHIA – hand bags; purses

ADVENTURALLY – Organizing motor racing and road rally events; entertainment in the nature of motor racing and road rally events; entertainment in the nature of competitions in the field of motor racing contests; motion picture film production; production of radio or television programs; organizing entertainment and social events namely post racing and rally parties

MATCH PAYMENTS TO PAYDAYS – Bill payment services, namely, automated consumer loan payments

DESIGN REWIND – Interior design and decorating services; Home staging consultation, namely, temporary interior and exterior home decoration consultation for the purpose of making homes more appealing to prospective buyers

 – Non-medicated toiletries, namely, soaps, shampoos, foam baths; non-medicated skin care preparations; non-medicated skin exfoliating preparations; wrinkle removing skin care preparations; make-up and decorative cosmetic preparations; non-medicated skin and hair preparations to protect against damage from electromagnetic radiation; non-medicated skin and hair preparations to remove hair and retard hair growth; non-medicated hair care preparations; tissues impregnated with cosmetic lotions

PEACHIE TEA – iced tea

IT’S A MOUTH FULL – Providing reviews of restaurants and dining events

DR. WOLFE’S – Toothpaste, non-medicated mouth rinse, non-medicated oral gel; medicated toothpaste, pain cream, medicated mouth rinse, medicated brush on oral care gel, homeopathic supplements; Homeopathic pharmaceuticals for use in the treatment of tooth aches, headaches, pain, trauma, and infection 

 – employment screening (CERTIFICATION MARK)

WHAT’S KEEPING YOU UP AT NIGHT – Professional coaching services in the fields of management and leadership development, goal and problem definition, problem solving, communications strategies, business and professional development, strategic planning, self-improvement, career development, and human resources initiatives

SWORDSEARCHER – Computer application software for computing devices, namely, software for storage, search, and retrieval of text in the field of religious study

– shirts and hats

SECURITY INSPECTION – Computer security consultancy and engineering; consulting and engineering in the field of intelligence and security technology; Monitoring of alarms and computer systems for security purposes; consultancy services in the fields of building and homeland security; safety inspection audits to improve building and computer system security; security services, namely, security assessments of physical locations, information systems and working environments; surveillance services rendered via computer  

Year in Review from Erik M Pelton & Associates

Posted by ipelton on: December 19th, 2011

Our firm had a year full of highlights and milestones in 2011! My 11th year in private practice was a busy and productive one. We filed more than 200 trademark applications for clients; I spoke on trademark issues to groups from Austin to Toronto to Boston to San Francisco; I also posted more than 100 blog posts and launched a monthly video series (see Amidst all this activity, the firm registered its 1,500th client trademark overall with the United States Patent and Trademark Office (“USPTO”).

In January, I began serving as a Vice-Chairman of the local Falls Church Chamber of Commerce, a responsibility I greatly enjoy.

In April, I had the honor of appearing on a panel with the Commissioner of Trademarks, Deborah Cohn, at an American Bar Association conference.

In May, Associate Attorney Mark Donahey and I traveled to San Francisco along with 9,000 other trademark attorneys to attend the International Trademark Association’s annual meeting. In addition to hosting a roundtable on trademark settlements, a highlight of the trip was taking four former interns – all of whom now work in the field of trademarks – out to dinner!

In July, we received a registration for the firm’s new slogan – Experience is our trademark. Trademark is our experience. – bringing our tally of registrations to seven!

In September, I was quoted in The New York Times in an article about a trademark dispute between a small business owner and Proctor & Gamble:

“The big corporations often send these cease-and-desist letters and issue threats regardless of the merits of the claims,” said Erik M. Pelton, a trademark lawyer in Alexandria, Va. “They then use their endless resources and legal firepower to get the result they want: the small businesses often go away because they can’t afford to fight back.”

I also traveled to Pennsylvania to speak at the 2nd annual Social Media Summit hosted by Harrisburg University.

In October we worked with the City of Falls Church, where our office is located, to exhibit its THE LITTLE CITY® trademark at the USPTO’s National Trademark Expo. I was joined there by my two favorite helpers – Elijah, age 6, and Flora, age 4 ½, pictured below – who volunteered to help staff the booth and greet some of the Expo’s 15,000 attendees! Chubby Checker performed at the opening ceremonies and of course did ‘The Twist’.

None of these achievements would be possible without our amazing client ‘family’! Thank you for making our work enjoyable and rewarding. Wishing you a happy and healthy holiday season and a terrific 2012!


Trademark filings continue to follow pop culture: Tim Tebow mania

Posted by ipelton on: December 16th, 2011

Trademarks and pop culture often intersect.  See prior posts on Charlie Sheen, Donald Trump, Occupy Wall Street, Paris Hilton, Jersey Shore, and more!

The latest such intersection: quarterback phenomenon Tim Tebow of the Denver Broncos. In the last few weeks, the following applications have been filed by persons other than Tim Tebow [click trademark for USPTO records]:

TEBOW TIME – shirts

It’s Tebow Time – Hooded sweat shirts; Sport shirts; Sports shirts with short sleeves; Sweat shirts; T-shirts; Turtle neck shirts; Wind shirts

Tebowing – Hats; Shirts; T-shirts; T-shirts for our website; Tee shirts

Tebowing – stickers

Because these each use the Tebow name – and presumably without his consent – each of the applications is unlikely to ever become registered by the USPTO.

Note that Tim Tebow has filed to protect the name and logo of his charitable foundation [click for USPTO record]:

– charitable fundraising services to support terminally ill children and their families; charitable services, namely community outreach services provided to children with life threatening illnesses; granting wishes of terminally ill children and their families

W15H – charitable fundraising services to support terminally ill children and their families; charitable services, namely community outreach services provided to children with life threatening illnesses; granting wishes of terminally ill children and their families

If Mr. Tebow’s winning continues in the NFL, I suspect we will be seeing more TEBOW related filings from him and from others!


.XXX domain name redux

Posted by ipelton on: December 15th, 2011

The availability of .XXX domain names went public last week.  Many companies registered or blocked the .XXX domains that correspond with their brands.  I think this was a wise choice even though it was arguably a form a extortion by the domain registries.  The cost was a few hundred dollars. The risk of not owning or blocking it was unknown – who would buy it? what would they try to do with it? how much might it cost to shut them down? how would someone else using/owning the domain name affect search engine results? could a website – even if live only for a few days – cause damage to a reputable, protected, and valuable brand?

As I said before, the risks were too large in my opinion to let the .XXX domains go unblocked.  According to one report, Google will treat .XXX domains just like any others (via – to me that means a greater risk of potential damage (if Google decided to block them or treat them differently, the potential harm might be minimized) According to a report, in the first 24 hours of general availability there were more than 55,000 new .XXX domain name registrations created.

But  some companies chose not to register the .XXX domains corresponding with their brands. According to an article on, and  But according to Domain Incite, this information may be inaccurate as the .XXX registrar – ICM Registry – may have on its own taken control of some domains that it believe were infringing trademarks. This could open a new can of worms as many brand owners paid the fees to block domains corresponding to their registered domains. If the Domain Incite information is true, some brand owners received the same result without any cost.  How did ICM decide which brands deserved the pro-active protection without the request of the trademark holder? The same issue may have already arisen in relation to .XXX domains corresponding to celebrity names – some were apparently automatically protected, others were not.

 Where does this leave us? I’m not sure. Some clarification from ICM Registry would be great. Absent such clarification I still believe that brand owners are better off registering the domain names rather than worry about the potentially difficult, damaging and/or costly answers to questions such as:

– who would buy it?

– what would they try to do with it?

– how much might it cost to shut them down and .XXX site?

– how would someone else using/owning the domain name affect search engine results?

– could a website – even if live only for a few days – cause damage to a reputable, protected, and valuable brand?

Reasonable people may disagree. I would love to hear what other brand owners have decided to due and what other guidance trademark attorneys have provided to their clients on this subject.

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