Archive for July, 2012

Comments from Erik M. Pelton & Associates, PLLC

Regarding U.S. Intellectual Property Enforcement Coordinator’s

Development of the Joint Strategic Plan on Intellectual Property Enforcement

The following are the comments of the firm of Erik M. Pelton & Associates, PLLC of Falls Church, Virginia, in response to the  Request of the U.S. Intellectual Property Enforcement Coordinator for Public Comments: Development of the Joint Strategic Plan on Intellectual Property Enforcement published on June 25, 2012.  The full request for comments was published at


Intellectual property rights contribute to an enormous – and growing – portion of the American economy, and intellectual property plays an important role in America’s success as a place where innovation and creativity flourish. Our framework of intellectual property rights is a valuable tool to spur such innovation and to protect American businesses both at home and abroad against misappropriation of such benefits, hard work, and creativity.

If reducing IP infringement is the goal, the Joint Strategic Plan should recommend more than sanctions and punishment s. A Joint Strategic Plan that focuses only on providing additional and stricter tools for enforcement of violations of intellectual property only responds to the problem of IP violations after they occur; it does not directly address the cause of the problem. Reducing the number of violations through prevention and education may have an even greater effect than providing more tools to deal with violations, and it may come at a far lesser cost. As Benjamin Franklin said, “an ounce of prevention is worth a pound of cure.” Accordingly, the Joint Strategic Plan should make great efforts to seek and implement measures that could reduce the number of IP violations.

In addressing infringements both before and after they occur, we believe that the Joint Strategic Plan should fairly balance the interests of legitimately infringed rights holders against the costs imposed on those who are wrongly accused of infringement or mistakenly violate the rights of others. While it is essential to respect and enforce intellectual property rights, excessive measures to prevent infringement are not cost-free. Enforcement regimes that fail to account for manipulation and misuse will inevitably invite abuse, stifle innovation, and limit competition by imposing significant burdens and costs on legitimate and well-intentioned small businesses and entrepreneurs.  These burdens force many small businesses to spend valuable time and resources defending against unnecessary claims and often result in the abandonment of legitimate and valuable IP rights, resulting in restrictions on innovation and damage to our economy.

A strategy for reducing the amount of violations would provide additional protections to the rights of IP owners and, compared to increasing enforcement tools, would come at a greatly reduced societal and economic cost. Less need for enforcement would mean savings for the government and for businesses in litigation, policing, and elsewhere. It is our opinion that greater focus on increasing resources for providing education and information to the public and to businesses about intellectual property rights, registrations, and infringements, would provide a great benefit to the IP system and to IP owners.

Therefore, our suggestions described herein aim to achieve greater education to prevent infringement of IP rights as well as to strike a balance with the damage caused by rising over-enforcement of IP rights. Note that the initiatives described herein require relatively low expenditures and are very likely to result in savings to both the government and the overall economy if they achieve the intended result of reducing the infringement of intellectual property rights.

About Erik M. Pelton & Associates, PLLC

Erik M. Pelton & Associates, PLLC (“EMP&A”) is a boutique trademark law firm located in Falls Church, Virginia. Established in 1999 by Mr. Pelton following two years of working for the U.S. Patent and Trademark Office as a trademark examiner, EMP&A has registered more than 1,600 U.S. trademarks for clients who are overwhelmingly small businesses. The firm has represented dozens of small business plaintiffs and defendants in all phases of trademark disputes and Trademark Trial and Appeal Board Opposition and Cancellation proceedings.

EMP&A attorneys are actively involved in the International Trademark Association (INTA) and the American Bar Association’s Intellectual Property Law section (ABA-IPL). Erik Pelton as a chapter editor for the ABA-IPL 2011 Annual Review of Intellectual Property Law Developments, was a speaker at its 2011 Annual Intellectual Property Law Conference, and is the incoming vice-chair of its USPTO Inter-Partes Trademark Practice committee.


I.                   Strategy Recommendations

Identified Issue: Increase education to students about intellectual property and its role in our society.

Government agencies could develop enhanced curricula for schools –at all levels – about intellectual property rights, teaching students what they are, how they are protected and registered, what happens when they are infringed, and why they are essential to our economy. Such curricula should reach beyond the classrooms to also include online, games, and a variety of other media. In particular, secondary, college and graduate level classes on business and marketing would be perfectly suited for using such curricula. We suggest the Department of Commerce, Library of Congress, and U.S. Patent and Trademark Office, in conjunction with the Department of Education and other educational agencies, address this issue.

Identified Issue: Increase education to the general public about intellectual property and its role in our society.

Providing more information and more opportunities for education to the general public on intellectual properties would also provide immense value by increasing awareness of IP issues. More workshops, seminars, and print and online materials would be valuable resources to the public. We suggest the Department of Commerce, Library of Congress, and U.S. Patent and Trademark Office, along with other agencies, address this issue.


Identified Issue: Increase education and outreach to small business owners regarding the importance of protecting intellectual property and IP infringement issues.

Providing clear educational resources about intellectual property rights tailored to entrepreneurs and small businesses is perhaps the most efficient way to reduce the costs of IP enforcement for all parties.  A great deal of infringement could be prevented by educating entrepreneurs about the range of intellectual property rights, ways to know whether an activity may be infringing others’ rights, and the importance of considering intellectual property issues every time they start a new business.  As an added benefit, small businesses will be more likely to avail themselves of intellectual property protections early so they are better positioned to benefit from their innovations in the marketplace. More workshops, seminars, printed materials and online materials would all be valuable resources to small businesses. We suggest the Department of Commerce, Library of Congress, U.S. Patent and Trademark Office, and Small Business Administration (SBA), along with other agencies, address this issue.

Identified issue: Help protect small businesses before government agencies.

The opacity of IP enforcement procedures before government agencies often induces small businesses and entrepreneurs to unnecessarily yield their valid IP rights when challenged by more sophisticated parties. For example, those without a trademark attorney on call will be more likely to let a notice of opposition or cancellation from the Trademark Trial and Appeal Board go unchallenged simply because their rights and the process for preserving them are not clearly presented by the government in laymen’s terms. In addition, small businesses that do attempt to fight such challenges are disproportionately harmed by delay, uncertainty, and costs imposed throughout the proceedings.  To level the playing field, the government must clarify and simplify the enforcement process and reduce the time and cost of proceedings.  We suggest the U.S. Patent and Trademark Office provide leadership in making additional information and training about these issues targeted for and available to small business owners.

Identified issue:  Ensure that small businesses are a part of policy decision making processes.

In addition, the small business community is underrepresented in Congressional hearings related to trademark issues, other public agency intellectual property hearings, conferences and seminars, and at the Public Advisory Committees (TPAC and PPAC) of the USPTO. We suggest that Congress and Federal agencies encourage and invite participation from the SBA and from the small business community in future hearings and agency activities that relate to intellectual property.

Identified issue: Customs and Border Protection tools are infrequently used by small businesses.

Small businesses are also unfairly damaged by overreaching activities related to U.S. Customs and Border Protection (CBP). Claims of counterfeiting and CBP seizures often relate to small businesses. Many such claims and seizures are justified, but those that are not are infrequently challenged. We suggest that the CBP and other government agencies educate importers, CBP officials, and IP owners regarding the dangers of overreaching IP enforcement attempts. We also recommend creating an easier and more affordable mechanism to appeal CBP seizures that are based on alleged IP violations; making all presentations and materials provided by rights holders to CBP officials publicly available; encouraging parties who perceive they are the targets of overreaching enforcement efforts to make presentations to CBP officials; and penalize parties for attempting to overreach in using the CBP to enforce their intellectual property irghts.

Identified Issue: Follow up regarding issues raised in the “Trademark Litigation Tactics Study.”

            The study, completed more than a year ago, was directed by Congress to be conducted by the Department of Commerce in consultation with the Intellectual Property Enforcement Coordinator. The study left many questions unresolved, such as the extent of abusive trademark litigation tactics and the potential remedies or solutions for any such problems. The study was completed with almost no public forums or hearings, and since the study’s completion only one follow-up hearing or forum has been held (by the USPTO, on the issues related to outreach and education by IP attorneys and IP associations). Congress has held no hearings on the issue, and there has been little or no action taken by the USPTO or IPEC to implement its recommendations to urge greater pro bono efforts from the private sector and more Continuing Legal Education (CLE) programs on trademark litigation issues for attorneys.  Note that we applaud the efforts of the USPTO in creating the position of Managing Attorney for Trademark Outreach and in expanding its outreach initiatives and programs. We recommend that IPEC, the USPTO, and/or Congress convene additional hearings or forums to discuss the issues raised in the report.


II.                Threat Assessment

No specific comments or recommendations are made.


III.             Optional Questions

1.         How can international regulatory and law enforcement collaboration and information sharing be enhanced to address cross-border intellectual property infringement?

Law enforcement agents should be provided with greater training on what activities do not constitute intellectual property infringement, such as fair use and parallel imports. Close determinations regarding infringement should be handled by the courts and should be dealt with by the parties involved, not by government agencies. Not everything remotely similar to an American product with a registered trademark or patent is an infringement.

2.         What legal or operational changes might be made, or collaborative steps undertaken between federal agencies and the private sector, to streamline or improve the efficacy of enforcement efforts directed at protecting intellectual property rights?

Federal agencies should provide additional resources to educate the public and the business community about what intellectual property is, why intellectual property is valuable and important, what constitutes infringement, and what can be done when someone is accused of infringement. See comments made under Statutory Recommendations.

3.         What measures can be taken by the private sector to share actionable information on entities engaging in or supporting infringement of intellectual property rights?

The process for reporting violations of intellectual property rights to Customs and Border Protection could be made much more accessible, clear, and accountable. One online system for reporting violations at all ports of entry, for example, would be helpful as would a way to track the status of the requests. Our firm made a request last year to a CBP office and never even received an acknowledgement of our letter, nor any substantive response. Furthermore, the requests themselves should be publicly available and published online in a searchable database.

  1. To the extent necessary, what government safeguards and conditions would be useful to facilitate sharing of such information?

Making such information publicly available to all reduces the risk that rights holders will use the CBP’s enforcement procedures as a tool for anti-competitive conduct. A business whose goods are improperly detained, or potentially detained, based on an overbroad descriptive of a right holder’s IP rights would be able to address the matters with the rights holder directly.

4.         What information developed from law enforcement and intelligence community threat assessments would be beneficial to the private sector in order to mitigate the risk of trade secret theft and economic espionage?

No specific comments or recommendations are made.

5. What additional measures by the U.S. Government would most significantly enhance efforts to combat trade secret theft and economic espionage?

No specific comments or recommendations are made.

6.         When goods are imported into the United States, U.S. Customs and Border Protection (“CBP”) and other federal agencies charged with enforcing intellectual property rights and ensuring the safety of products entering the stream commerce, e.g., U.S. Food and Drug Administration and the Consumer Product Safety Commission, engage in a risk-based assessment of the level of risk that a shipment contains violative goods, and decides whether to inspect the shipment based on this risk determination. What steps can federal agencies and the private sector take to improve the risk assessment process so that high risk shipments may be quickly identified and segmented from lower risk shipments?

No specific comments or recommendations are made.

7.         What authentication tools and track and trace technologies would significantly enhance federal efforts to identify suspect counterfeit or pirated goods?

No specific comments or recommendations are made.

8.         In a global economy that increasingly utilizes Internet based e-commerce and mobile platforms for transactions, the number of shipments sent through international mail and express carrier services has dramatically grown in recent years. Accordingly, law enforcement efforts directed at interdicting infringing goods shipped in the express and international mail environments have resulted in significant increases to seizure levels of infringing goods shipped through these modes of transit. What steps could be undertaken by CBP, its partner U.S. Government agencies, and the private sector to further improve detection of express carrier and international mail shipments containing infringing goods?

No specific comments or recommendations are made.

9.         Are there ways in which CBP could improve its intellectual property rights e-recordation system to enhance ease of use and make it a more useful tool for intellectual property rights enforcement?

CBP’s recordation tool is rather easy to use, but it is not well publicized. It would be more valuable if the USPTO and other federal agencies better promoted the availability and benefits of the CBP e-recordation system. It would also make the system more valuable if it reported – both to a trademark recordant and in the public database – when a particular e-recordation led to a action by CBP. The public has little or no knowledge about how effective a recordation can be to those companies that have well known trademarks and do not spend large amounts of time and money working with and educating CBP regarding their trademarks.

10.       As laid out in IPEC’s 2011 Annual Report on Intellectual Property Enforcement, using our resources as efficiently as possible is a priority. Are there additional ways in which the U.S. Government could make more efficient use of its resources in protecting intellectual property?

As a whole, the U.S. Government should avoid providing incentives for over-enforcement of intellectual property rights. The government, through the office of IPEC and other agencies, should make efforts to ensure that we are not over enforcing intellectual property rights. Over-enforcement of IP rights is contrary to the public good at the heart of intellectual property rights. Over-enforcement stifles innovation and costs jobs. Continued over-enforcement could lead to a backlash that will harm all intellectual property rights owners.

Several policies tend to encourage rights holders to aggressively pursue enforcement actions against activities that are not likely to result in infringement. For example, trademark law favors mark holders that can show a track record of successful enforcement against others, resulting in enforcement for enforcement’s sake instead of a true assessment of the actual likelihood of confusion that may result from permitting the use. Small businesses and entrepreneurs would benefit from the availability of a remedy against rights holders exhibiting a pattern of bad-faith enforcement, even if it were rarely used. At minimum, policy makers need to take into account the hidden costs of over-enforcement, particularly as it affects small businesses. 

Respectfully Submitted,

Erik M. Pelton

Erik M. Pelton & Associates, PLLC®



TPAC Quarterly Meeting Summary – July 2012

Posted by ipelton on: July 25th, 2012

The following is a summary of the key points discussed at the July 13, 2012, public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO, as reported by Associate Mark Donahey who attended in person.

 I.                    CHAIRMAN’S UPDATE

Chairman Tepper recognized two TPAC members whose terms will expire in September: James Connolly and Kathryn Barrett Park.  He presented both with plaques in recognition of their service to the committee.

II.                  CFO UPDATE

The OCIO is currently planning the FY14 budget and revalidating FY13 budget to make sure it is still the amount the PTO needs.  The OCIO is also planning for the possibility of operating on a continuing resolution in 2013 because it has become the status quo in Washington. There is also uncertainty about what will come out the work of Congress and the administration to meet the requirements of sequestration.   Trademarks has $100 million in carry-over funding which will help manage the uncertainty.  There were no questions from the committee or the public.


Performance MeasuresCommissioner Cohn reported that most performance measures are progressing or on target, such as final action compliance, exceptional office actions, eGovernment, and disposal pendency.  Post registration amendment and correction had been one area of concern, but the management and staff there have pushed to get things back where they should be.  The Commissioner complimented Tiffany Huntly, Robert Maple, Susan White, and others for their hard work on this issue.

New Applications and Hiring – USPTO had projected a 3.6% increase in application filings over last year, but application filings are currently up over 5.3% above the prior year.  They have been increasing since 2010, and the Commissioner hope that persists. At end of 2011, Trademarks began hiring again for the first time since 2007.  They hired 34 new examiners and plan to hire 26 more in FY13.  However, they are ready to reevaluate if conditions change.

OutreachThe Commissioner reported on efforts targeted at stakeholders and the general public.  Stakeholder outreach efforts include roundtable discussions held in collaboration with INTA at locations around the country.  These are advanced level discussions with practitioners and other stakeholders.  The Commissioner invited suggestions for good places to hold these events in the future.  Outreach efforts are also trying to reach members of the general public who may not know anything about trademark protection.  The hope is to reach them at the beginning of the process of starting a businesses when basic TM information would be most valuable.  Craig Morris has been spearheading this effort with speaking engagements around the country, including the National Veterans Small Business Conference Expo, the North Carolina Small Business Development Center, and the SBA Annual Conference (this week).  Chairman Tepper encouraged everyone in the community to help Mr. Morris identify individuals or organizations that may be helpful in these outreach efforts.

Identification Manual The Office hosted a roundtable in February about possible improvements to the manual. One suggestion was to get more current information from industry groups so that current terminology can be added to the manual quicker.  USPTO is starting work with INTA and industry groups now in hopes of establishing an ongoing process for updating the manual.  There is also a fairly long term project to restructure the manual itself based on some feedback and suggestions received from Examining Attorneys. For example, this FY they hope to add an option to the manual that allows users to filter out identifications that were submitted by users and see only the terms that were originally included in the manual.

Confusing Third-Party Solicitations – As reported at the previous TPAC meeting, the office sent a cease and desist letter to the U.S. Trademark Registration Office (“USTRO”) demanding that they stop mailing confusing solicitations to applicants and registrants.  The Commissioner reports that USTRO responded and has been cooperative.  They told the office that they have stopped, and the office hasn’t heard any other complaints from the community.  Let the office know if your clients receive any other confusing solicitations from the USTRO or another entity.  In addition, the Office added a warning on the website and started including a warning on an insert that accompanies newly issued registration certificates.   The latter seems to be very effective because it often arrives at about the same time a solicitation would.

Trademark Expo – The Trademark Expo is scheduled for October 19-20, 2012, and planning is under way.  Last year there were approximately 35 exhibitors, and about 15,000 visitors walked through.  There will be 37 exhibitors this year.  Information is on the Trademark website.


Sharon Marsh briefed the committee on the post-registration pilot project to gather additional specimens of use for selected registrations.  The pilot started last week and will proceed in the manner described in the recent rulemaking.  It will be limited to approximately 500 registrations over the next 6 months, which will be less than 1% of all Sec. 8’s over that period.  The pilot is conducted by 5 senior attorneys working closely with post-registration staff.  They will review Sec. 8 filings to make sure they meet the requirements, and they will require submission of proof of use for 2 additional identified goods and/or services.  Registrant has 6 months to respond.  If the response is insufficient, those items will be deleted.  If Registrant fails to respond at all, the registration will be cancelled in its entirety.  The office is using the pilot to collect data to assess the accuracy of the register.  The results will be shared with TPAC when they are ready.  Any questions about the pilot may be directed to

V.                  TTAB UPDATE

Staffing Changes Chief Judge Rogers reported that since Cheryl Butler has started as the TTAB’s Senior Attorney and editor of the TBMP, the Board has already posted a revised version of the TBMP online, and Ms. Butler is working with the managing attorney to keep pace with pendency, to assist the Chief Judge with rare motions (such as disqualification of counsel), and to help with rulemaking.  In addition, Ken Soloman is the Board’s new Managing Attorney, and Deborah Decker has moved to a new position with the Board.

Vacancy Announcements – The Chief Judge is reviewing applications for available ATJ positions.  The Board received 45 applications from the most recent announcement.  They hope to hold interviews and send recommendations to the director in the next few weeks to forward to the Commerce Department.  The Board is authorized to fill 2 positions, but there is a pending request to fill more.  They will do so as soon as it is approved.  In addition, the Board recently posted an announcement seeking applications for additional interlocutory attorneys.  The announcement closes July 25.  There is also a future possibility that the Board will seek applications for a new quality review position that would review work done by paralegals and customer service reps.

Statistics If the number of Appeals, Extensions, Oppositions, and Cancellations filed in Q4 is about the same as Q3, 2012 will end with slightly more filings than 2011.  The Board is facing challenges keeping up with final decisions.  Cases maturing to “Ready for Decision” (“RFD”) are projected to be 659 this year, but the Board is only projected to decide 500 of these cases by the end of the year.  Though this is a 10% increase over the previous year, the backlog will still rise.  The Board’s additional hiring is intended to respond to this.

The Chief Judge also notes that the average time from Issuance to RFD is still creeping up as a byproduct of working off old cases.  Eventually it will reach a tipping point and start declining.  The Board hopes to be down near 300 cases waiting for decision by the end of the year. 

In addition, the statistics for end to end pendency are highly skewed by a few very old cases that had been decided recently.  This is illustrated by the difference between the average and median end to end pendency.  Average appeal pendency for Q1, Q2, and Q3 were 73.7, 98.2, and 67.4, respectively.  The Chief Judge noted that the dramatic rise in Q2 was due in large part to 6 cases appealed in 2000 that were all suspended from 2001-2010 because of a related cancellation proceeding.  However, the median appeal pendency for the same quarters (48, 53, 53) is more consistent because it is less affected by these outlier cases.

Finally, there are only 200 cases left that operate under the old rules.  About half are suspended or are on appeal. The Board is actively managing the other half to push them through.

[NOTE: for statistical details, see TTAB New Filings and Performance Measures dashboard]

Accelerated Case Resolution No ACR cases were decided in the most recent quarter, but others are in the pipeline.  The Board has decided 7 ACR cases so far this year, and they hope to decide three more by the end of the year.  The bar has been slow to adopt ACR, and it often takes a sales job for the client and the other party to agree to it.  More often it is adopted later in the proceeding.  For example, an Interlocutory Attorney may contact parties after they file Motions for Summary Judgment to tell them that they aren’t very likely to result in disposition of the case.  At that point they may decide to adopt ACR.  The Board will continue to promote ACR through its outreach efforts.

Addressing Backlog The Board is hiring judges.  In addition, Judges and Interlocutory Attorneys are developing templates to use in decisions. Idea was inspired by OHIM Board, which makes great use of templates.  Currently ATJs have their own templates based on work they did in the past, but now we want to standardize those.  The Board is also launching a program that would permit Examining Attorneys to do rotations with the TTAB to prepare memos in support of ATJs as they review the records in cases and other groundwork.  Examining Attorneys have just finished applying to take part.  Initially it will only be three or so Examining Attorneys that rotate through in the first round.

VI.                OCIO UPDATE

Legacy SystemsCIO John Owen described the ongoing difficulties with some antiquated and aging legacy applications relied upon internally by trademark operations, such as XSEARCH and TICRS.  OCIO is working on ways to get these systems running reliably on the new laptops that have been successfully issued throughout the other elements of the PTO, but these systems have not been supported by Microsoft for 5+ years and they are highly sensitive to network latency.  OCIO recently tested a work around, but it failed for an unknown reason, which OCIO is still investigating. Mr. Owen emphasized how these persisting issues with legacy trademark systems underscore the importance of the Trademarks Next Generation (TMNG) system currently in development.  Mr. Tepper commented that he will readily acknowledge that these are very complicated problems, but everyone will agree that having these systems not work is simply not an option.  Therefore, having a backup plan in place yesterday would be a good idea.

TMNGRaj Dolas, the TMNG Portfolio Manager, outlined the progress being made on various elements of TMNG.  For example, a number of user interfaces proposed by prospective venders have been evaluated, and the selected vendor is being broad on board.  In addition, the release of TSDR 2.0 is planned for this August, featuring backward compatibility with TARR static links.  They are also preparing to introduce the Electronic Official Gazette, which will replace the printed version.  OCIO is looking for user input on what features they would like to see it have.  TMNG’s platform and infrastructure improvements are largely on track.


The next public TPAC meeting will be October 5, 2012.

Recent Trademark Registrations XXXIII

Posted by ipelton on: July 24th, 2012

Here is another update of recent client registrations from the public records for readers to see real examples of brands and marks which are being protected [click trademark or logo to open USPTO records in a new window]:

SNAKE BOMB – coffee beans

BLOSSOM – adjustable, stackable and connectable trivets that also function as hot pads and centerpiece decorations

ARIAS – Electronic foreign exchange remittance processing services for financial services providers

PARAFLUSH – Cleaning kit for use on the human body consisting of a sprayer nozzle and hose

CHAMPION HOMES REALTY – real estate brokerage; real estate agency services

GN2G – clothing, namely, shirts, t-shirts, and pants

TINNER HILL – Conducting entertainment exhibitions in the nature of festivals featuring music, readings, art, historical workshops, storytelling, food, and film

MAGRESTORE – Dietary and nutritional supplements for horses

FISH HOUSE SUPPLY – retail and online retail store services featuring parts, accessories and supplies used in building, outfitting and maintaining buildings for use in ice fishing

EMERIT – Business marketing consulting, namely, reputation management and online reputation management for doctors

BITZ & PIXELZ – design and development of computer software and mobile computer software

OUT OF THE BOX INSTITUTE – classes, telecourses, and seminars in the field of personal development, behavior, life balance and navigation

MONITOR. RESPOND. PROMOTE. –  Business marketing consulting, namely, reputation management and online reputation management for doctors

ACCUTOWER – Compact disc writers; universal serial bus copiers; digital video disc writers; multimedia disc duplicator hardware, namely, computer hardware for copying memory cards

BROOKLYN GIRL MUSIC – Digital music downloadable from the Internet; audio recordings featuring music

MONSTER MEDIA 3-D – advertising services, namely, dissemination of advertising for others using surface mapping and projections of effects and digital animations onto buildings and other surfaces

MONSTER MEDIA – Advertising services, namely, creating corporate advertising campaigns and brand identity through the distribution of interactive media using various technologies including but not limited to touch and multi-touch, augmented reality, facial morphing, 2D and 3D gestural and/or mobile interaction; dissemination of advertising for others via the billboards and any electronic display

HOT PROPERTY – real estate agent services; real estate brokerage

WATERBABIES BIKINI – bikinis, swimsuits, and swimwear, all for use by competitors in swimsuit, modeling, and fashion competitions

REGISTERED FUNCTIONAL THERAPY ASSOCIATE RFTA – Occupational therapy services [Class B]

PRAISE REPORT – Printed reports featuring religious praise




Why renewing your trademark registration is critical

Posted by ipelton on: July 20th, 2012

Trademark registrations can last forever – if renewed properly and if the mark is still in use. That is just one way trademarks are different from both copyrights and patents.

But the registrations must be properly renewed. It is critical to docket the deadlines and to properly file for renewal when the time is appropriate.

Why? Even without a registration, a trademark owner has common law rights. But the benefits and value of a registration are significant – particularly against actual or potential infringers [see here for more about the benefits of registration]. If a registration is cancelled due to a failure to renew, there is no guarantee that it can be re-registered.  And even if the trademark is re-registered, the new registration will not have the same history, the same length, and therefor will not be as strong as the earlier registration would have been. And applying for, and possibly fighting for, a new registration may be far more costly than a renewal. 

Here are a few recent examples of what can go wrong if the registration is not properly renewed:

When re-applying it is possible that conflicts are found. It might be possible to reach a consent agreement or petition to cancel the conflicting registration, but those can be costly and complex scenarios.

Application Serial No. 85065751: Application for MUZZIE’S & Design for retail clothing boutiques was refused under Section 2(d) as likely to be confused with MUZZYS & Design registered for clothing and for store and wholesale services featuring motorcycle parts and clothing manufactured by others. The Trademark Trial and Appeal Board affirmed the refusal and Applicant’s prior registration for the same mark was irrelevant. “Applicant also raises the argument in its brief that that its predecessor in interest previously owned a registration for the same mark for “retail clothing boutiques” which was inadvertently cancelled due to the failure to file a Section 8 affidavit. Applicant’s Brief, p. 3. Applicant contends that the marks coexisted on the register for over six years without any instances of actual confusion. We are not persuaded.” Applicant’s cancelled registration cannot justify registration of its current application.

Application Serial No. 850825: Refusal of AMERICA’S FAVORITE for mustard under Section 2(d) due to likelihood of confusion with registrations of  AMERICA’S FAVORITE for “ketchup” and “sauces” from same owner. Refusal affirmed by the Trademark Trial and Appeal Board (TTAB). Applicant’s prior registrations did not help its cause: “Cancelled or expired registrations generally have no evidentiary value, and certainly an applicant cannot claim a right to registration based on its prior ownership of cancelled or expired registrations.”

When re-applying, it is possible that the USPTO find the mark descriptive or generic – even when it had not done so in the prior registration – and thus the registration is weaker and grants the owner less protection.

Application Serial No. 77650780: Refusal of WHO’S WHO ONLINE for an online directory as generic under Section 23 affirmed by the TTAB: “The record shows that WHO’S WHO is a unitary generic term.  The record also establishes that the term ONLINE is simply a designation for a type of information available on the Internet, and lacking source-identifying capability.”  And “Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.”” Applicant’s prior registration of the mark on the Supplemental Register irrelevant: “While it is unfortunate that applicant’s prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued…. Applicant is not entitled to favorable treatment because it inadvertently allowed its prior registration to be cancelled.”

As these recent decisions show, if a registration lapses there can be serious ramifications. Don’t let it happen to you!

Hardware store trademarks – a photo journal

Posted by ipelton on: July 19th, 2012

On a recent trip to the hardware store  I realize how many wonderful and fun – many suggestive – brand names there are in the aisles.




Liquid Wrench



Zip-Strip paint remover




SOFTIP brushes

SHUR-LINE pain edger





For these and more, see the photos I took below: