Archive for June, 2017

Today marks 8 years since the launch of this blog in June of 2009.  More than 1,000 posts later, this post from that first day is still quite useful, and I still give clients this advice all the time.

5 quick tips for protecting your brand

Posted by ipelton on: June 28th, 2009
  1. Choose Wisely – The more creative your brand name is, the greater the odds that it is unique.  More distinctive and create name or slogan is generally more capable of standing out among the competition and becoming a brand with real value. Which sounds like a more exciting brand, a more valuable brand: “Jim’s Gym” or “Vantage Fitness“? “Cincinnati Frozen Yogurt” or “fraîche”? “Joe’s Pizza” or “Pie-tanza”?  “” or “Google”?
  2. Use it – The more you use your trademarks – brand names, logos and slogans – the stronger and more distinctive they become and the more your likely customers are to remember your brand and to use it to tell others about it.
  3. Distinguish It – Use ALL CAPS, bold or italics to emphasize your brand as often as you can.  Then the customer knows exactly what your brand is.
  4. Register it – Registration enhances the protection and the value of your trademark assets.
  5. Create Google Alerts – An easy and free way to monitor for others copying your brand or commenting on it.  If you find a possible infringement, contact an attorney.

© 2009 Erik M. Pelton & Associates, PLLC.

Stay tuned next week for more analysis of this week’s Supreme Court trademark and First Amendment opinion in Matal v. Tam (aka The Slants).  One ramification may be changes to the way ‘scandalous’ or ‘immoral’ marks are reviewed by the USPTO.  Will this lead to a gold rush for dirty trademark? Perhaps. I imagine in the short term, yes there will be an increase in such filings.  But in the long terms it will have negligible impact (outside perhaps of the adult video and entertainment industry — prepare yourself for some interesting descriptiveness analysis!) as 99.9 percent of brands want to be clean and wholesome to attract maximum potential market share.

The following applications were filed with the USPTO on the very day (June 19th) that the Matal v. Tam opinion was handed down (click marks for USPTO records):

  • Mark Imagecandies (previously rejected by the TTAB and the Court of Appeals for the Federal Circuit)
  • GOOD SHIT – apparel
  • COME FUCK ME PUMPS – women’s shoes
  • FUCKABLE – underwear
  • NIGGER PLEASE – shirts
  • GOOD SHIT – Cigarettes; Cigarettes containing tobacco substitutes not for medical purposes; Cigarettes containing tobacco substitutes, not for medical purposes; Tobacco; Tobacco powder, namely, snus; Tobacco substitute; Tobacco substitutes
  • DICKSBYMAIL – bakery goods; On-line retail store services featuring gag gifts, novelties, gimmicks, candy, adult toys, clothing, anonymously sent items.; Online retail bakery shops; Retail shops featuring gifts, candies, and novelty items
  • FUCK YOURSELF – sex toys
  • TOTALLY F*ING BRUTAL – Hats; Pants; Shorts; T-shirts
  • NOFUX CLOTHING COMPANY LLC – Pants; Shirts; Shorts; Athletic pants; Athletic shirts; Athletic shorts; Board shorts; Body shirts; Boxer shorts; Dance pants; Denims; Dress pants; Golf shirts; Gym pants; Gym shorts; Snow pants; Snowboard pants; Sports shirts; Sweat pants; Sweat shirts; T-shirts; Track pants

In a case handled by our firm, the TTAB recently affirmed the refusal of the mark LITTLE MERMAID for use in connection with dolls. Will this decision have ramifications for other public domain names? For other goods? We will have to wait and see.

The key quotes, in my opinion, from the decision:

“Similarly, a fictional public domain character like the Little Mermaid of the Hans Christian Anderson fairy tale is not necessarily linked to a specific commercial entity and may be presented in various embodiments because prospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale). ” Citations omitted.

“The record supports the conclusion that prospective customers immediately know that dolls described as or named LITTLE MERMAID refer to the fictional public domain character, and other doll makers interested in marketing a doll that would depict the character have a competitive need to use that name to describe their products.” Citations omitted.

“In summary, when consumers encounter a doll displaying the LITTLE MERMAID mark, the evidence before us persuades us that they will understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid, rather than perceiving LITTLE MERMAID as a mark identifying the commercial source of the goods. Accordingly, we find that LITTLE MERMAID when proposed for use in connection with dolls is merely descriptive.”

The full decision and case history can be found here on TTABvue.

Recent Client Trademark Registrations Vol. 101

Posted by ipelton on: June 16th, 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 14 U.S. Patent and Trademark Office registrations.

  • Trademark image – Clothing and apparel, namely, shirts and tank tops
  • WE BRING THE CHANGE TO YOU – Mobile Automotive maintenance and repairs provided at the customer’s location, including oil change services, tire rotating and balancing, Vehicle parts replacement, namely, windshield wipers and air filters
  • PHILOPSYCHONOMICS – Providing a website featuring information and consulting services in the field of business management
  • Trademark image –  Retail store services and online retail store services featuring precious jewelry
  • RUN, HEIFER, RUN! – Clothing and apparel, namely, shirts and tank tops
  • OFF DUTY BLUE – 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
  • ZOMBIE TINKER BELL – Dolls, toy figures
  • THE ART OF GIFTING – retail store services, namely, online store services featuring flowers and gift items
  • RISK FREE PAINTING – painting; exterior painting services
  • SIZR – Online content and image delivery via a global computer network
  • STUDENTS GOING THE EXTRA MILE – Providing a website featuring information and stories in the field of education
  • MOON TECH – Filled ink cartridges; filled toner cartridges; printer ink; print supplies, namely, filled ink cartridges, laser printer toners; toners; cartridges, namely, filled ink and toner cartridges; toner refills, namely, filled toner cartridges; toner refills for printers and photocopiers, namely, filled toner cartridges

The day before the NBA finals began, the Cleveland Cavaliers filed 22 new USPTO trademark filings on May 31, 2017. See USPTO TESS search results below.

Did the Cavaliers jinx their chances? (As I write this, they trail 3-0 to the Golden State Warriors.) The applications are mainly for a new crest versions of their logo designs.

Mark Image    Mark Image

Related posts:

News Roundup – and SUPER BOWL trademark “jinx” means Packers will lose today