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Archive for April, 2013

In just a few days, thousands of trademark professionals from around the world will descend upon Dallas, Texas for the 2013 INTA annual meeting, I have created a guide to some of the landmarks, sports teams, and dining in Dallas seen through the eyes of a trademark attorney. Let me know what you think!

  Trademark Lawyer’s Guide to Dallas – INTA 2013 by Erik Pelton

I have made my opinion clear: trying to protect BOSTON STRONG for clothing is futile and deplorable. It is a community based phrase. It is being used by most for charitable causes. Registration of the phrase is unlikely at the USPTO.  And enforcement of any perceived or alleged trademark rights is virtually impossible.

Yes there are now five pending applications to register the phrase at the USPTO.  I call on the applicant’s to avoid further embarrassment and to expressly abandon their applications now. And I call on the USPTO to immediately refuse each of the applications a failing to function as a trademark based upon the community strength of the phrase. Perhaps I will start a petition to that effect.

Yesterday, I was quoted in an article from Law360 about this issue:

“These companies have very little to gain and a lot to lose in terms of reputation,” said Pelton, who said he found the applications “particularly offensive.”

Here are the five applications. You can see the public records – including the individuals and companies who made the filings – by clicking the trademarks to open the USPTO records:

The most similar situation in recent memory – at least in terms of trademark lawn, not in terms of tragedy – is the efforts by many to protect some variation of OCCUPY WALL STREET in 2011.  The USPTO rejected many of those application as failing to function as a trademark because the wording would be seen as purely information matter. See here for example. It is very likely that the BOSTON STRONG applicants will have the same results.

B STRONG logo from MLB and Boston Red Sox

Related stories/posts:

Great pun trademarks

Posted by ipelton on: April 24th, 2013

Puns make great playful suggestive trademarks.

A recent piece on MSN Now features photos of some great such names. For example:

– MERCHANT OF TENNIS

– BACK TO THE FUTON

– BREWED AWAKENING (coffee shop)

– CURL UP A DYE (hair salon)

– PLANET OF THE GRAPES (wine shop)  

– SPEX IN THE CITY (glasses?)

– TEQUILA MOCKINGBIRD

– WOK THIS WAY

– THE LEANING TOWER OF PIZZA

And how about the Vietnamse noodle shop, PHO SHO! In fact there are a lot of great PHO puns, including 9021PHO:

90210PHO photo from https://www.facebook.com/9021PHO

 

 

 

A mere 48 hours following the tragic events at last Monday’s Boston Marathon, two different applicants filed to protect the phrase BOSTON STRONG with the U.S. Patent and Trademark Office. These efforts to control use of the phrase in connection with clothing (a) would be virtually impossible to enforce even if granted because their use is likely to be ornamental and is not unique, and (b) are [in my opinion] deplorable. The phrase has a community origin for a positive cause to show Boston’s pride and resilience. Many others are already selling such shirts to raise money to benefit the victims, such as gamedayboston.com which is donating one hundred percent of the proceeds from its “Boston Strong” design to The One Fund. The MBTA is displaying “Boston Strong” messages today on its buses.

Any effort to try to stop others from promoting the same BOSTON STRONG message is appalling. I would encourage Kerim Senkal and Born Into It, Inc. to immediately abandon these applications and to indicate that they will not attempt to stop anyone else from using the phrase for charitable or other causes.

[Click for USPTO records:]

Boston Strong – for ‘clothing and accessories’ filed by Born Into, Inc.

BOSTON STRONG – for ‘Imprinting messages on T-shirts; Imprinting messages on wearing apparel, accessories and mugs; Imprinting of decorative designs on T-shirts’ filed by Senkal Kerim

Photo via Michelle Andrews.

Photo via Michelle Andrews. / Boston Magazine

Interesting trademark:

BOSTON MARATHON® – in use since 1897!

Recent client trademark registrations LV

Posted by ipelton on: April 22nd, 2013

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]:

  • FLASH TAG – Blank USB flash drives
  • FLASH KEY – Blank USB flash drives
  • METRO LIVING – real estate brokerage services
  • Trademark image- Barbecue sauce; Barbeque sauce; Chili sauce; Dipping sauces; Hot chili pepper sauce; Hot sauce; Picante sauce; Salsa; Sauces for barbecued meat; Tomato-based salsa
  • Trademark image- restaurant services
  • Trademark image- Educational services, namely, conducting business training and workshops in the field of business leadership development; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of business leadership development
  • ACCELERATE YOUR LEADERSHIP POWER – Educational services, namely, conducting business training and workshops in the field of business leadership development; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of business leadership development
  • DIGITAL TRADECRAFT – Computer and information technology security consultation; research and development services in the field of computer and information technology security; testing, analysis and evaluation of computer and information technology security systems
  • UNITY RECOVERY CENTER – Addiction treatment and rehabilitation services for alcohol and drug addicted patients
  • UNITY REHAB – Addiction treatment and rehabilitation services for alcohol and drug addicted patients
  • CASH FLOW FOR LIFE - Employment recruiting in the field of real estate
  • RENT CHECK ADVISOR – Financial review and reporting regarding check writing history; tenant screening services, namely, review of financial history of writing bad payments
  • QUALITY STACKED – restaurant services
  • THE SALESMAN’S GUIDE – Series of books providing sales leads to companies and individuals in the apparel and hospitality industries
  • REDCAB - coffee beans; ground coffee beans
  • SHAKARADO – coffee based beverage
  • DARK VOODOO – coffee based beverage
  • THE HEAVY – coffee beans; ground coffee beans
  • THE BOSS - coffee beans; ground coffee beans
  • DIETBET - Entertainment services, namely, arranging and conducting on-line competitions and contests in the field of health, fitness, weight loss, and social dieting; Contests and incentive award programs to encourage individuals, employees, and organization members to set and achieve goals in health, fitness, and weight loss
  • ISVCON - Organizing or conducting conferences in the fields of software, software development, and software vendors for business purpose
  • VERITAS - cigars
  • HEART, HEAD & HAND – Business training, coaching, seminars, and workshops in the fields of leadership and professional communication
  • GREEN TRAINING U.S.A. – Training and education, namely, providing classes and seminars in the field of environmental services, energy, technical, business, building performance, and electricity, and printed materials distributed therewith; online training and education, namely, providing classes and seminars, in the field of environmental services, energy, technical, business, building performance, and electricity, and printed materials distributed therewith
  • CLASSIC REALTY – real estate brokerage
  • Trademark image – real estate brokerage
  • CLASSIC REALTY – THE NAME SAYS IT ALL – real estate brokerage
  • ILCA – association services, namely, promoting the profession of lactation consultancy and breastfeeding, through education, professional development and advocacy for members and the public; promotional services in the field of breastfeeding and lactation consultancy; Internet services, namely, an online store in the field of breastfeeding and lactation consultancy products; Internet services, namely, providing online directories in the field of breastfeeding and lactation consultancy products and services
  • INTERNATIONAL LACTATION CONSULTANT ASSOCIATION – Association services, namely, promoting the profession of lactation consultancy and breastfeeding, through education, professional development and advocacy for members and the public; promotional services in the field of breastfeeding and lactation consultancy; Internet services, namely, an online store in the field of breastfeeding and lactation consultancy products; Internet services, namely, providing online directories in the field of breastfeeding and lactation consultancy products and services
  • Trademark image – Association services, namely, promoting the profession of lactation consultancy and breastfeeding, through education, professional development and advocacy for members and the public; promotional services in the field of breastfeeding and lactation consultancy; Internet services, namely, an online store in the field of breastfeeding and lactation consultancy products; Internet services, namely, providing online directories in the field of breastfeeding and lactation consultancy products and services
  • Trademark image- pre-employment background screening services
  • Trademark image- Locksmithing, namely, custom fabrication of keys or locks
  • MASTERING THE ART OF INNOVATION – Computerized on-line ordering services in the field of imprinted promotional products, apparel, signs, auto vinyl, window and interior wall vinyl, thermal and digital films, applique, tackle twill, rhinestone transfers, and rhinestud transfers; Distributorship in the field of promotional products, apparel, signs, auto vinyl, window and interior wall vinyl, thermal and digital films, applique, tackle twill, rhinestone transfers, and rhinestud transfers; online retail store services featuring customized promotional products, signs, and apparel; Custom printing services; embroidery services; vinyl printing and plotting services for window and interior walls and automobiles; screen printing services; digital transfer printing services; monogramming services; Dye-sublimation printing services; engraving services
  • Trademark image- Computerized on-line ordering services in the field of imprinted promotional products, apparel, signs, auto vinyl, window and interior wall vinyl, thermal and digital films, applique, tackle twill, rhinestone transfers, and rhinestud transfers; Distributorship in the field of promotional products, apparel, signs, auto vinyl, window and interior wall vinyl, thermal and digital films, applique, tackle twill, rhinestone transfers, and rhinestud transfers; online retail store services featuring customized promotional products, signs, and apparel; Custom printing services; embroidery services; vinyl printing and plotting services for window and interior walls and automobiles; screen printing services; digital transfer printing services; monogramming services; Dye-sublimation printing services; engraving services
  • OWN YOUR OWN ER – Franchising in the field of emergency room services, namely, offering business management assistance in the establishment and operation of emergency rooms; marketing, namely, direct marketing services and marketing consulting in the field of emergency room franchises
  • CONCIER - Franchising in the field of emergency room services, namely, offering business management assistance in the establishment and operation of emergency rooms; marketing, namely, direct marketing services and marketing consulting in the field of emergency room franchises
  • Trademark image- Retail store services featuring memorabilia, namely, clothing and jewelry; computerized on-line retail store services featuring memorabilia, namely, clothing and jewelry