Blog

Archive for February, 2016

5 trademark tips when launching a website venture

Posted by ipelton on: February 23rd, 2016

Before launching a new website or new web business, there a few simple tips that business owners can take to help make success (both branding and legally) more likely.

  1. Choose a name that is (a) creative and unique in your industry, and (b) that is easy to remember and easy to spell. NOTE: in many industries finding a unique name can be quite difficult, but don’t give up as it is tremendously important and valuable.
  2. Choose a name with a corresponding domain name available to acquire. Since a website is primarily accessed via the web, having a correlating domain name is important. Generally the .com is what people expect to see. A domain name ending in .us or .me is not going to be automatically recalled by consumers. While domain names may not be nearly as important in a few years as browsers and devices get more sophisticated and intelligent, for now consumers still expect to see the correlating .com domain.
  3. File a trademark application with the USPTO to protect the name as soon as possible – and before the site launches.
  4. Use the proper trademark symbol (TM or SM, probably SM) with name on the site.
  5. Register several variations of the domain name if possible (.net,;.biz; if two words, with and without a hyphen, etc.). While it may be unlikely that you will use the other variations, it is better (and cheaper) to control their destiny instead of fighting someone else who tries to use them.

CASE STUDY: Launch of The Ringer website from Bill Simmons.

Here is a recent discussion on the Bill Simmons podcast regarding some of these challenges for his new site, The Ringer™. (Start at 9:50.) Note that he filed a trademark application for THE RINGER with the USPTO several weeks before the public announcement.

Recent Client Trademark Registrations LXXXV

Posted by ipelton on: February 19th, 2016

The following is another update of recent Erik M. Pelton & Associates client trademark registrations obtained from the public records of the USPTO so readers can see real  examples of brands and marks which are being protected – and the wide range of variety in brand names, logos, products and services. [Click trademark or logo to open USPTO records in a new window]

  • Trademark image– Beer
  • Trademark image– Online retail store services featuring car cleaning and vacuuming equipment
  • FINANCE FRENZY – Educational services, namely, conducting seminars in the field of business and finance, business simulation exercises for educational purposes, Workshops featuring business game simulations, business education, namely, developing and facilitating custom business simulation exercises for companies
  • Trademark image –  computer software and mobile software for data processing and analytics in the field of health care and patient care
  • Trademark image – Drug testing kits that contain medical diagnostic reagents and assays as well as collection cups, collection kits, gloves, and specimen bags for testing bodily fluids
  • FUN JUNKY – Stickers
  • EMPLOYEESCREENIQ UNIVERSITY – Online educational and training services, namely, conducting informal programs in the fields of pre-employment background screening, substance abuse screening, investigative services, employment background screening updates and news, employment background screening industry legislative updates and news; online training in the fields of pre-employment background screening, substance abuse screening, investigative services, employment background screening updates and news, employment background screening industry legislative updates and news and distribution of course material therewith in the nature of articles and videos in the fields of pre-employment background screening, substance abuse screening, investigative services, employment background screening updates and news, employment background screening industry legislative updates and news; on-line journals, namely, blogs in the fields of pre-employment background screening, substance abuse screening, investigative services, employment background screening updates and news, employment background screening industry legislative updates\
  • WE LEND MORE THAN THE BANK – Credit and loan services; factoring agency services; accounts receivable financing
  • NUDE FUDE – Restaurant services
  • Trademark image – Charitable fundraising for others
  • THE ULTIMATE CATCH – Distilled spirits
  • THE TRIBE OF DIAMONDS – photography services; Educational and entertainment services, namely, providing seminars and speaking services in the field of women and photography
  • NO SHORTCUTS – Pre-employment background screening and investigative services
  • PROJECT VETRELIEF – Charitable foundation services, namely, providing financial support to United States service members, veterans and their families for utility bills, home repair and maintenance, mortgage and rent support, food, gas, and living expenses
  • Trademark image– Charitable foundation services, namely, providing financial support to United States service members, veterans and their families for utility bills, home repair and maintenance, mortgage and rent support, food, gas, and living expenses
  • Trademark image-Jewelry

The solicitation below from the “International Patent and Trademark Service” is yet another bogus offer for a directory that has not real value or utility. In my 16 years counseling trademark client’s, I have never once recommended registering in a private directory o trademarks such as this. I have never once heard a trademark owner or attorney speak of any experience being a part of such a directory that benefited their trademark rights. The offer is not cheap, either. And it is a complete waste of funds.

IPTS mailer_redacted_001

You can search their trademark “directory” at http://ipts-register.com and good luck finding any successful brands listed there.

Both WIPO and the EPO warn brand owners about this solicitation. The USPTO warning page does not yet feature this one.

TPAC Meeting Summary – February 2016

Posted by ipelton on: February 15th, 2016

On Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

The committee was meeting for the first time in 2016 and FY2016.

  • New chairperson: Dee Ann Weldon-Wison
  • New members:
    • Mei Lan-Stark
    • Lisa Dunner
  • Other members:
    • Jody Drake
    • Ann Chasser
    • Timothy Lockhart
    • Jonathan Hudis
    • Deborah Hampton
    • William Barber (vice-chair)

OCFO Budget Update (Frank Murphy, Deputy Chief Financial Officer)

  • The FY17 budget was released by the White House last week.
    • Includes hiring of 63 new trademark examiners and 1 TTAB administrative judge.
    • Decreases IT funding from FY16 by $4.6 million.
  • The FY16 budget currently estimates $279.8 million in trademark fees.
    • Trademark fees through 12/31/2015 were down 1% over the prior FY.
  • The USPTO is already beginning to plan or the FY18 budget.
  • USPTO is currently drafting the notice of proposed rule making (NPRM) regarding fee increases, and it will be published in the spring.
    • The rulemaking is anticipated to have an effective date of January 2017.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • Commissioner Denison testified on February 11, 2015, regarding the HAVANA CLUB trademark issues.
  • There is unlikely to be any real movement on legislative issues in this presidential election year.

Trademark Operations – Commissioner Mary Boney Dennison

  • Major USPTO power outage event in December was not caused by an IT issue.
    • It affected all USPTO computer systems.
  • Pendency goals meet on exceed targets.
  • Q1 FY2016 filings were up 12.6% over the prior year.
    • USPTO is predicting a 7% increase in filings for the entire fiscal year.
  • USPTO has seen a 3% increase (to approx. 84%) in number of applications that are prosecuted entirely electronically from start to finish.
  • TEAS RF accounts for approximately 50% of all new applications.
  • There are 474 Examining Attorneys currently, approximately 85% of them telework full time
    • 43 new attorneys were hired in FY2015.
    • USPTO plans to hire 60 in FY2016 (20 began in November, and other 20 or so start this month).
  • USPTO recently hired Deloitte Consulting to help examine and improve customer service.
  • Fee increase proposal
    • A 60 day comment period will follow the NPRM this spring.
    • Some changes to the proposals have been made following feedback in the fall.
  • Post-registration amendments to identifications due to technology evolution:
    • Since September 1, 32 petitions have been received.
    • 11 examples have been posted by USPTO.
  • Post-registration use pilot update: the pilot, which studied the actual use of marks for their registered goods upon filing of Section 8 renewals, will be the subject of an upcoming proposed rulemaking to make random audits of Section 8 filings a permanent practice, as well as to increase the solemnity of the Section 8 affidavit.
    • The USPTO is still considering other options including a shortened expungement proceeding.
  • The USPTO has conducted several “Trademark Tuesdays” featuring live video chats with interested users at the USPTO’s regional offices.

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • The TTAB currently has 23 Administrative Judges and 13.5 interlocutory attorneys.
  • TTAB new case filings are up the first quarter of FY2016 over the numbers from prior year, and expected to remain up throughout the fiscal year.
  • Details regarding current pendency measurements are in the slides (below).
  • Notice of Proposed Rulemaking featuring a new Rules packaged is expected to be published in March. There are four main goals/elements:
    • Leverage the use of technology and electronic communications.
    • Remove plaintiff’s obligations to serve notice on the defendant.
    • Discovery changes, including encouraging earlier completion of discovery and moving the deadline for filing a motion for summary judgment to prior to the first date to serve pre-trial disclosures.
    • Add trial testimony efficiencies, for example allowing parties to submit testimony by affidavit (instead of deposition) but subject to possible cross-examination.
  • The Board will be doing outreach this spring regarding the new rules.

IT Update Chief Information Officer John Owen II & Manager Raj Dolas

    • Explained the details regarding the power outage, and recovery, in December.
      • No data was lost, unless there was a transaction “in process” at the time of the outage it is possible that it was not recorded.
      • Eventually, all systems will be moved to the cloud as that reduces vulnerability. But ‘legacy systems’ cannot be moved to cloud.

Trademark Public Advisory Committee meeting slides | Feb. 12, 2016 by Erik Pelton

 

I ♥ _____ (not just NY) trademarks in honor of Valentines Day

Posted by ipelton on: February 14th, 2016

Perhaps the first was I ♥ NY.  It was created in 1977 and seems to keep growing in popularity. The NY tourism board does a great job promoting it, and no doubt makes a considerable amount in licensing the logo for use on many types of goods.

As a result, there are a myriad of spin-offs. Including those below which are registered (or pending) at the USPTO. [Click marks for USPTO records.] Some make creative designs with a heart. Some play directly off the image of the iconic I ♥ NY design.

  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image
  • Mark Image

 

For a fun related read, see: Why Are Heart-Shaped Logos So Popular (Slate)