Archive for July, 2016

Tip: Avoiding Chinese domain name scams

Posted by ipelton on: July 28th, 2016
This month, I have received several inquiries from people who received emails purporting to be about other companies trying to register domain names in Asia that correspond to their domain names or trademarks.

The emails look something like this:

Dear Mr./Ms.,

We are a service agency for registering domain names. Our center received an application from Rose Zhu International today. They applied for the registration of {your trademark} as their Brand Name and some top-level domain names. But we found the main body of domain names is same as yours. We are not sure about the relationship between you and them. As the registrar, we have the duty to inform you the case.
Now, we are processing this application. Our center needs to confirm whether this company is authorized by your company. If so, we will continue the next step of registration. If not, please let me know as soon as possible in order that our center can deal with this problem timely. We await your prompt reply.
Or they look like this:
Dear Sir or Madam,
We are the department of Asian Domain Registration Service in China. Here I have something to confirm with you. We formally received an application on {insert date} that a company claimed “Num & Alg Group LTD” were applying to register erikpelton as their Brand Name and some domain names through our firm.
Now we are handling this registration and after our initial checking, we found the names are similar to your company’s, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we would finish the registration at once. But if you did not authorize, please let us know within 7 workdays, so that we could handle this issue better. After the deadline, we will unconditionally finish the registration for “Num & Alg Group LTD”. I am looking forward to your prompt reply.
If you receive any such email, copy and paste a sentence or two from the email into a search engine and read all about others who have received the scam.
DO NOT RESPOND TO THESE EMAILS. They are a total scam as far as I know, and as far as every single report I have ever read about them. No client of mine (more than 2,000 US trademark registrations) has ever had to shut down a .CN website to do infringement. If someone else did a .CN domain name that corresponded with your trademark, it would only be a concern if the domain owner used the domain, and used it in a way that competed with your business/trademark.  And if they did so, you would likely have rights under the UDRP to file a complaint and seek a transfer of the domain name.
If you have any evidence showing that these solicitations are real – and that they really relate to legitimate registration of a .CN domain name – please advise. Otherwise, stop wasting any time or energy on them.

5 trademark lessons from Pokemon GO

Posted by ipelton on: July 21st, 2016

Unless you have been under a rock for two weeks, you have heard for the summer gaming fad, Pokemon Go. Like or not, the fad is here for a while this summer (will it last longer than the “ice bucket challenge” of a few summers ago?).

Here are five trademark lessons from the Pokemon Go mania:

  1. Be prepared. File trademark applications with the USPTO early, before commerce (based on an “intent to use”) so that when the product or service launches protection has already begun and it is more difficult for someone (or a competitor) to cause trademark problems. Nintendo Co. Ltd. filed three US trademark applications for the Pokemon Go logo on March 3, 2016.
  2. Old brands can become new brands. Nintendo’s first POKÉMON trademark applications were filed in December of 1997. The brand never went away, but Pokemon Go is certainly a new resurgence. Many “old” brands are still valuable and strong brands. (For example: Ford, Macy’s, Jack Daniel’s, Paramount Pictures, NBC, and many others.) It also helps that Pokemon is a unique and strong name.
  3. Defining the goods and services in USPTO applications is critical. To receive proper and full protection, the USPTO applications, and registrations, must describe the good and services used with the trademark thoroughly and accurately. Here, Nintendo’s attorneys filed three separate Pokemon Go applications to cover video game devices, online gaming services, and video game software.
  4. Ensure that ownership is proper. The Pokemon Go game is reportedly a partnership of several companies. The trademark applications were filed by Nintendo Co. Ltd. Proper ownership of trademarks- and proper documentation – is especially important in joint ventures and other business relationships involving multiple entities.
  5. Use proper trademark symbols. On the website, the Pokemon Go logo appears with a ‘TM’ next to it to indicate that it is a trademark. Use of the proper trademark symbols strengthen the brand with consumers and under the aw.

Mark Image

Recent Client Trademark Registrations XC

Posted by ipelton on: July 19th, 2016

Here 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]

  • TEAM GET IT IN – Online retail store services featuring clothing and apparel
  • RADIO 104 FEST – Entertainment services, namely, production of live entertainment events, namely, live music concerts and music festivals; entertainment services, namely, organizing and conducting live music concerts
  • Trademark image– providing regulatory, compliance and legal consulting to investment advisers; regulatory compliance consulting and reviewing standards and practices to assure compliance with financial laws and regulations for financial services firms and their representatives
  • ADVANCED REGULATORY COMPLIANCE, INC. – providing regulatory, compliance and legal consulting to investment advisers; regulatory compliance consulting and reviewing standards and practices to assure compliance with financial laws and regulations for financial services firms and their representatives
  • SMF – Arranging and conducting of concerts; Entertainment in the nature of music festivals; Entertainment services in the nature of presenting live musical performances; Entertainment, namely, live music concerts
  • GLISTEN & GLOW – Nail polish, nail polish top coat, nail polish base coat, cuticle oil, non-medicated cuticle balm, nail polish remover, cuticle removing preparations, skin lotion, hand scrubs, body wash, body spray, soaps, hand soap, bubble bath, nail care preparations, fragrances, cosmetics, nail lacquer, shampoo, hair conditioner, body oil
  • Trademark image –  Nail polish, nail polish top coat, nail polish base coat, cuticle oil, non-medicated cuticle balm, nail polish remover, cuticle removing preparations, skin lotion, hand scrubs, body wash, body spray, soaps, hand soap, bubble bath, nail care preparations, fragrances, cosmetics, nail lacquer, shampoo, hair conditioner, body oil
  • BIOMASS HRS. –  Installation of heat recovery systems
  • SMART BUSINESS GROWTH – business consulting services; business advisory services
  • TRAIN DIRTY DRIVE CLEAN – Vehicle driver training services
  • SENTAI – Pre-recorded digital media, namely, video cassettes, digital video discs, digital versatile discs, downloadable video recordings, DVDs and high definition digital discs featuring entertainment in the nature of motion picture films, television shows, and video entertainment
  • EMERALD ADVISORS & CONSULTANTS, INC. – Business consulting in the field of business operation sustainability; business consulting, namely, providing business solutions and strategies to businesses to operate in a more socially and environmentally sustainable manner, and helping businesses create and implement business operation and sustainability plans; business consulting, namely, conducting water, waste and energy efficiency plans; business consulting, namely, creating business operation and environmental sustainability metrics; consulting in the fields of marketing and branding; business services, namely, creating business operation and environmental sustainability reports; business services, namely, monitoring, measuring, and verifying business operation and environmental sustainability initiatives and impacts
  • THE HAIR GENIES – Lice removal from humans
  • Trademark image  –  Clothing namely shirts
  • IRONPLANE – Database design and development; Design and creating web sites for others; Design of home pages; Design of home pages, computer software and web sites; Design of homepages and websites; Design of information graphics and data visualization materials; Design, creation, hosting and maintenance of internet sites for third parties; Design, creation, hosting, maintenance of websites for others; Developing and hosting a server on a global computer network for the purpose of facilitating e-commerce via such a server; Web publishing, namely, creating a website and uploading it onto an Internet server; Web site design; Website design and development for others; Website design consultancy; Website development for others
  • FIELD GRADE – Headwear, namely, caps and hats, excluding headwear made for use by military and field officers
  • BUSINESS AS A SPIRITUAL PRACTICE – providing workshops and seminars in the field of business and leadership
  • PRIVACORE – Computer services, namely, providing search engine services for obtaining data on a global computer network; provision of internet search engines
  • RIVAH STYLE – art prints; printed photographs; decals and stickers; stationery; calendars

NETFLIX’s new “N” logo: Simple and Good

Posted by ipelton on: July 14th, 2016

My kids are on summer break, so they have been watching Netflix from time to time – and my daughter noticed the new ‘N’ logo this week. Children see logos and brands far more than most people realize. The new Netflix ‘N’ logo does not replace the NETFLIX text logo, but will be an icon for use on apps and elsewhere.1144

Cover art

The new ‘N’ could be a red carpet, which is a nice subtle suggestion of the movies. (Speculation from one article: “What really strikes me is the logo’s core visual metaphor. What is that ribbon? Is it a red carpet? Is it a celluloid film print? Is it the visualization of Netflix’s own stream, bouncing from them to servers to your own home?”)

The new ‘N’ is simple, but not too simple. A basic N with no features might be too simple. As a result, I like the new Netflix design.

Tip: Many businesses will need to consider app or small versions of their logos as more of the world moves to small screens and quick interactions (so loading time differences of nanoseconds are key as well). Google and others have done small revisions to simplify (shrink) their logos as well in recent years.

Trademark Tip: Searching logos at the USPTO

Posted by ipelton on: July 12th, 2016

When searching for images in the USPTO’s TESS trademark database, there are two ways to search: via the ‘description’ field and via the ‘design code’ field. Both are useful and many times both should be used.

The reason both should be used is that, for example, the image below could be described as a word with a smile below it. Or it could be a word with a line and arrow. Or both. If you online search terms in the description field of TESS, it is possible that the applicant and USPTO described the logo quite differently. (Here, the USPTO description currently reads: ‘The mark consists of the word “AMAZON” with an arrow under the word “AMAZON” that is pointing from the “a” to the “z”.’ and makes no reference to a smile.)

In the USPTO records, each image not only contains a description, but a design code. The codes are assigned by the USPTO in accordance with the USPTO’s design code manual.Different types of shapes and images and symbols have different codes – there are hundreds of them. For example, a search for the code 241720 will find all marks that have peace symbols in them (341 current registrations of them when I ran the search this week).

 The main trouble in searching designs is that there is no one way to describe or code them, most designs could be accurately described using a variety of different words. For example, how would you describe this image?
Of course, there is a lot of nuance and experience that goes into searching – and comparing – design images. Just one more reason that an experienced trademark attorney is a great investment.
For more tips like this, subscribe to the free weekly (brief) newsletter Tuesday Trademark Tip.