Archive for May, 2017

Barcelona reflections after INTA #INTA17

Posted by ipelton on: May 26th, 2017

Some random thoughts on the way home from Barcelona:

  • Barcelona is a wonderful city. The architecture, views, arts, history, transportation, people, culture, diversity, and food were are noticeable and tremendous. I can’t wait to return some day.
  • Meeting people with different backgrounds from all over the world that share a connection to trademarks is wonderful. The global reach of the conference is amazing.
  • Is 12,000 official attendees plus thousands more unregistered too many? I becomes difficult to meet people and find things and navigate the conference parts and venues when it is so large.
  • A little more communication would go a long way. While there were signs aplenty, a few more details about the best ways to get places, or the amount of time to allow, would have helped make the experience even better (for example: Metro stop to convention center; directions to Finale).
  • Hosting MEET THE BLOGGERS for the sixth year in row with esteemed colleagues (Welch, Schwimmer, Chestek, Oppedahl, Coleman) is a tremendous honor and tremendous fun. Connection with other fun, smart, and interesting trademark people is the highlight of the meeting for me.
  • The cost is tremendous. Perhaps – given the amount of sponsorship that appears to be involved – costs could be lowered or attendees from small firms and smaller companies/entities could be discounted. Many would have liked to attend but could not afford the price. Or perhaps a cheaper conference registration could be available for attending a committee meeting and two or three CLE panels?
  • In 2017, standard lecture panels should be the exception, not the rule, at legal conferences.
  • Slides with case law summaries should generally be prohibited.
  • Sessions featuring debates, audience participation, and interactive exercises should be encouraged.
  • I urge INTA and its committees to explore not only the effect of trademarks on brands and lawyers, but on public interests and justice throughout the world. These topics are more important than ever and the actions and policies of INTA and its members could have an enormous impact in the leading the way to make the world an even better place for people, for businesses, and for justice as a whole. In recent years, INTA has increased its attention to diversity and to pro bono work; while I applaud them for it there is still a long way to go in a variety of manners.

Veteran INTA tips for newbies:

  • Wear comfortable shoes
  • Bring far more clothing than you think you need. Changing and refreshing are useful to keep going!
  • Don’t over schedule meetings; and
  • Don’t forget to bring home gifts for the office staff

Meet The Bloggers XIII

Interesting BARCELONA trademarks (a mini INTA guide)

Posted by ipelton on: May 25th, 2017

This weekend, the INTA International Trademark Association annual conference kicks off in Barcelona, Spain. Here a some interesting trademarks with a connection to the city of Barcelona (click marks for USPTO records).

  • Mark Image – registered for long list of goods and services
  • BARCELONA – registered for cement tiles
  • Barcelona Bra – registered for bras; lingerie
  • Mark Image– registered for musical instruments
  • Mark Image – registered for advertising, marketing and promotion services
  • BARCELONA – registered for live plants, namely lavenders
  • Mark Image– registered for restaurant and bar services
  • Mark Image– registered for Cultural activities, namely, organizing community festivals featuring ethnic dances, art exhibitions, services of organization and running of exhibitions for cultural or educational purposes, namely, to promote and educate about Catalonia and its history, economy, tourist attractions, geography, restaurants, social life and customs; organizing community sporting and cultural activities; arranging and conducting of courses, educational conferences, colloquiums, seminars, symposiums and training workshops in the fields of Catalonia’s cultural and tourist attractions; organization of trade fairs and exhibitions for educational, cultural and training purposes, and more
  • Mark Image– registered for Badges of precious metal; Chronographs for use as watches; Chronometers; Costume jewelry; Gemstones; Jewelry made in whole or significant part of precious metals, gemstones, glass, plastic or metal; Jewelry and imitation jewelry; Key rings of precious metals; Synthetic precious stones; Watches, clocks



Recent Client Trademark Registrations Vol. 100

Posted by ipelton on: May 22nd, 2017

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.]

Last month, our clients were issued 26 U.S. Patent and Trademark Office registrations.

  • Trademark image–  Clothing and apparel, namely, shirts and sweatshirts
  • BE A TEN – Bottled drinking water; Drinking water
  • BURST FOCUS – Coaching and training in the field of sales
  • WISDOM FROM THE DOWNSTREAM WIZARD – Providing a website featuring blogs and non-downloadable publications in the nature of electronic newsletters in the field of oil and energy
  • EARTH UNLIMITED – Wholesale and retail store services featuring natural stone tile, ceramic, porcelain, glass and decorative tile products, kitchen cabinets and counter tops, wood flooring
  • MRC – Safety helmets, safety hard hats, and parts therefor, namely, goggle retention clips for protective safety helmets and protective face shields for protective safety helmets
  • TH3RD BRAIN – Performing artist and talent management services and publicity and sales promotion services; business consulting, business management and providing commercial information in the music business field
  • REAL POLICE. REAL PROTECTION. REAL SIMPLE. – Providing a website featuring technology that enables users to match law enforcement security professionals with consumers, schedule law enforcement security professionals for assignments, and manage the staffing process of law enforcement security professionals; providing non-downloadable software for matching law enforcement security professionals with consumers, scheduling law enforcement security professionals for assignments, and managing the staffing process of law enforcement security professionals
  • CROSS – Hydroponic grow kit comprising of growing containers, container stands, plant supports, growing lights, light tents, growing medias, fertilizers and pest controls; modular hydroponic growing container
  • PATIENT JOURNEY MAPPING – Outsource service provider in the field of business analytics
  • GOFED – Design and development of on-line computer software systems in the fields of healthcare, medical services, medical supplies and government affairs; Providing an interactive website featuring technology that allow users to enter, access and synthesize information and generate reports for use in consulting with executives and businesses in the fields of healthcare, medical services, medical supplies and government affairs; Providing information relating to on-line non-downloadable software to facilitate electronic communication between individuals provided via the Internet in the fields of healthcare, medical services and medical supplies; Providing online spatial mapping of government health and medical facilities
  • Trademark image  – Design and development of on-line computer software systems in the fields of healthcare, medical services, medical supplies and government affairs; Providing an interactive website featuring technology that allow users to enter, access and synthesize information and generate reports for use in consulting with executives and businesses in the fields of healthcare, medical services, medical supplies and government affairs; Providing information relating to on-line non-downloadable software to facilitate electronic communication between individuals provided via the Internet in the fields of healthcare, medical services and medical supplies; Providing online spatial mapping of government health and medical facilities
  • CUPCAKE POLISH – Nail polish, nail lacquer
  • Trademark image – Online retail store services featuring nail polish and nail lacquer
  • Trademark image–  Automotive body panels; automotive parts, namely, hoods, doors, fenders, spoilers, trunk lids, interior dash panels, and lip kits featuring splitter, side skirt and rocker, and rear diffuser
  • O.N.E. – Eyewear; eyeglasses; industrial protective eyewear; safety eyewear
  • TRAIN DIRTY –   Vehicle driver training services; motor sports services, namely, performing and competing in motor sports events; providing a website featuring information in the field of motor sports events
  • NEUROGENIQUE– Non-medicated skin care preparations for non-neurogenic purposes and not for use in treating nerve or nervous system disorders
  • PRESTIGE – Paintballs
  • EPIC – Paintballs
  • RECRUIT – Paintballs
  • LEGENDARY – Paintballs
  • Trademark image   – Advice in the running of establishments as franchises; Franchising, namely, consultation and assistance in business management, organization and promotion
  • COUNTRY OVEN – Restaurant services; take-out restaurant services
  • RONIN – Protective face visors for hockey helmets
  • Trademark image       –  Hookah tobacco

Scam solicitations mailed to trademark registrants and applicants in the US continue to proliferate. A client this week forwarded me the offer below from “IPTA”, the International Patent & Trademark Agency.

The cost for a listing in the scam publication is a mere $2,356.00. This publication has no legal or other significance. Their website is under construction. The disclaimer doesn’t even make complete sense or have proper grammar.

Note that the USPTO will hold a roundtable covering scams that prey on trademark filers on July 26th.

TPAC meeting summary – May 2017

Posted by ipelton on: May 12th, 2017

Last 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, as reported by Associate John C. Heinbockel:

  • The Office is in good fiscal shape: Paid fee classes have increased 7.5% over the previous fiscal year, and the Office currently has about 4 months of operating reserve saved in the event of a budgetary/funding crisis.
  • The Office is working hard to eliminate paper filings: Currently 99.7% of all applications are submitted electronically, but fewer are completed entirely electronic throughout the application process. Commissioner Dennison is now personally calling some applicants that submit on paper to find out why.
  • The Office is adjusting to a new political climate: The Office was able to get in all its hiring for the fiscal year before the hiring freeze (now lifted) was put in place. The Office will look very carefully at its hiring needs in the future. The Office has also established a “regulatory reform” working group and is considering expanding its operating reserve beyond the current four months.
  • Plain language and clarity: The Office is serious about improving the clarity of its trademark information systems for pro se applicants. The Office has simplified the language in the filing declarations. For example, the USPTO recently reworded the TEAS filing form button labeled “Save Portable Data” to “Save Form.” The Office also recently rolled out a “Maintenance” tab on TSDR to clearly display deadline dates for filing renewal documents.
  • Trademarks Next Generation is a mess: The Office has been talking about its upgraded computer and information systems, Trademarks Next Generation, for years, and progress has been very slow going. The Office is now in Phase 2, which involves rolling out Examining Capabilities that were deferred from Phase 1. But there appear to be many problems, including a text editor so dysfunctional that the Office is considering scrapping it (after years of development) and going to an “off-the-shelf product such as Microsoft Word.” The Office has still not identified all its user requirements and is also having problems with data corruption.
    • The Office knows it: There is a new portfolio manager in charge of TMNG, and the Office has brought in consultants from Ernst & Young to independently review the TMNG program.
    • It’s not all bad news: The Office has put a lot of effort into the myUSPTO platform, which continues to deploy new enhancements. myUSPTO now allows users to track applications and registrations on the same docket and will soon be able to handle up to 1000 applications/registrations. myUSPTO will also roll-out a simple Gazette monitoring service later this summer. There is also a trademark notification app available via GitHub that pushes notifications about status changes on tracked applications.
  • Fraudulent solicitations in the cross-hairs: In the wake of several convictions related to fraudulent trademark solicitations, the Office is continuing efforts to protect consumers. There will be a round table held on July 26, 2017, to which the Office has invited representatives from the FTC, Customs & Border Patrol, US Postal Inspectors, the SBA, and the DOJ. The Office has also reached out to its international partners in the TM5. Warnings about fraudulent solicitations are now more prominent in USPTO filing receipts, and the Office includes similar warnings to applications and registrants at almost every step of the registration process.
  • TM5 Bad Faith Filings: The Office is also working with its partners in the TM5 to minimize bad faith filings. There is TM5 meeting open the public on this topic on May 21, 2017, at INTA in Barcelona.
  • Too early to judge impact of new TTAB rules: After new rules went into effect in January, it’s too early to measure what impact the rules will have pendency statistics. Since the rules were put in place, Extensions of Time to Oppose are down, but Judge Rogers thinks this is a normal fluctuation, rather than a consequence of the new fee. There are a number of ESTTA changes upcoming that should bring efficiencies, however, including increased automated institution of cases and additional form questions that will limit filing of untimely motions.
  • New Nonuse and Abandonment Proceedings are in development: The Board has drafted a Request for Comments that is being cleared concerning a new streamlined cancellation proceeding for handling abandonment and nonuse claims. These proceedings would be expedited reviews of very limited issues and could be resolved in as many as 170 days (40 days to answer, 40 days for rebuttal, 90 days to decision). Discovery would be limited to standing, and proceedings could be converted to full cancellations if evidence of use is produced by the respondent. There are still, however, many issues to work out. Discussions with stakeholders continue.

TPAC SLIDES May 5, 2017 USPTO Trademark Public Advisory Committee by Erik Pelton on Scribd

June 2016 TPAC photo via @USPTO on Twitter