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Archive for July, 2017

Last week, the USPTO held a round table hearing on this issue of scams targeting trademark owners. While I was unable to attend, our firm made a statement in the public record at the hearing.  In addition, Law360 covered the hearing and the issues involved. Their article, Trademark Law’s Scam Problem Not Getting Better, quotes me and others discussing the relevant issues.

“Many public records are available online, but these scams target consumers in a way that is more tricky and deceptive than most other gimmicks,” Erik M. Pelton, a Washington, D.C.-area trademark attorney who has written extensively on the issue, told Law360 ahead of Wednesday’s hearing.

“I am optimistic that they can be stopped,” Pelton said. “While I commend the USPTO for spreading information about them in recent years, that alone clearly isn’t enough. If these scams weren’t profitable, they wouldn’t be proliferating.”

Do you have any fresh ideas for stopping these scam operators? Let me know!

Our firm will be making the following comments in today’s USPTO public roundtable on fraudulent trademark solicitations. (Agenda here.) Tune into the webcast at 2:00 PM EDT here.

 

Comments from Erik M. Pelton & Associates, PLLC Regarding Fraudulent Trademark Solicitations 

Since 1999, Erik M. Pelton & Associates, PLLC® has registered more than two thousand U.S. trademarks for clients who are overwhelmingly small businesses. The firm is also the owner of numerous trademark registrations.

As the owner of several trademark registrations, EMP&A frequently receives mailed solicitations from entities calling themselves “Patent & Trademark Agency” or something similar promoting registry or directory services, or offering to handle trademark maintenance documents. On a weekly basis, the firm regularly fields calls or emails from clients questioning the documents or invoices received from entities such as the “Patent & Trademark Bureau.” Others call or email asking about the status of their trademark registrations and maintenance documents prompted by similar mailings. Many clients are confused because they were under the impression that they had already paid the government fees to register their mark or maintain their registration, or because they believed that their lawyer was on top of the matter and would notify them of any issues. 

As a firm, our awareness of these solicitations is but a drop in the ocean. While we warn clients of these solicitations in our application and registration updates, it is impossible to know how many trademark owners take those to heart or even read these warnings. More troubling, it is impossible to know how many victims respond to these solicitations, either. While we have occasionally heard from upset trademark owners, we believe that the majority either do no realize that they have been duped, or are too embarrassed to admit that they have been defrauded.

The various services offered in these directory solicitations are problematic in many ways, perhaps most obviously in that they offer no value to trademark owners in exchange for large amounts of money. In years of discussing the solicited directory services with hundreds of trademark attorneys and thousands of trademark owners, we have not once heard anyone suggest that the directory services offered in these solicitations have any significance or purpose. Solicitations concerning trademark registration maintenance obfuscate the actual nature of services offered: it is never clear whether these solicitations are offering actual legal services providing legal advice about use, specimens, and other issues. If so, they rarely conform to rules of professional conduct concerning attorney advertising and solicitation. If not, their prices are extreme.

Taken as a whole, these solicitations impose great costs on the trademark registration system. The majority of trademark owners are small businesses, for whom the costs of trademark registration and maintenance are significant. The expenses imposed by these solicitation schemes interfere with the decision-making process of small businesses regarding the management of their trademark portfolios.

The misinformation and confusion caused by these solicitations negatively affects the ability of trademark owners to make informed choices about management of their trademark rights. Every dollar spent in response to a solicitation is a dollar not spent on effectively managing one’s trademark portfolio or growing one’s business.

Furthermore, these schemes dilute the messaging from the USPTO and the value of legitimate trademark services. A decision not to renew a registration or file a new application based on the costs, whether real or perceived, of a solicitation undermines the accuracy of the Register. At this moment, perhaps a nadir in public trust of government institutions and leaders, the integrity of the trademark register is more important than ever. Limiting public access to trademark data is not a viable option and warnings have proven ineffective. Instead, we implore the agencies here today to work together to stop these scam operations from preying on unsuspecting trademark owners.

Respectfully submitted,

Erik M. Pelton

Erik M. Pelton & Associates, PLLC®

 

Recent Client Trademark Registrations Vol. 102

Posted by ipelton on: July 24th, 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 16 U.S. Patent and Trademark Office registrations.

  • Trademark image – Dog food; pet food; pet treats; dog biscuits
  • ULTRA SONIC – Car wash services; car detailing services
  • NORTH SCOTTSDALE WEALTH ADVISORS – financial planning services, namely, providing investment advice and management; investment advisory services
  • Trademark image     – Fresh avocados; raw avocados; unprocessed avocados
  • GLOBAL HEALTH SCIENCE INSTITUTE – Biomedical research services
  • CAT 5 ROOFING – roofing repair and replacement services; Construction and repair of buildings
  • DROP AND GIVE ME 20 –  Downloadable podcasts and downloadable audio files in the fields of military, business, and entrepreneurs
  • AUMNIE – athletic apparel, not including apparel featuring technology or product features for heat management, thermal insulation, waterproofing, wind protection, namely, shorts, shirts, pants, bras, undergarments, jackets, tops, dresses
  • ASK 4 THE SHEEP – Providing information about security services for the protection of property and individuals in the fields of guest room privacy, traveler safety, and computers
  • Trademark image    – Providing information about security services for the protection of property and individuals in the fields of guest room privacy, traveler safety, and computers
  • LIL NO PEEP – Providing information about security services for the protection of property and individuals in the fields of guest room privacy, traveler safety, and computers
  • KING OF BASMATI – Rice
  • Trademark image     – Counseling in the field of mental health and wellness
  • M4 FITNESS – Physical fitness instruction and consultation; personal training services, namely, strength and conditioning training, personal fitness training; providing coaching in the fields of nutrition and health
  • REMINE – Computer software and hardware for data gathering, analyzing, sorting and displaying in the fields of real estate and lending; Computer software for analyzing real estate and lending data and monitoring real estate records and data in the fields of real estate and lending
  • Trademark image–  Computer software and hardware for data gathering, analyzing, sorting and displaying in the fields of real estate and lending; Computer software for analyzing real estate and lending data and monitoring real estate records and data in the fields of real estate and lending

Top Trademark Registration Challenges (video)

Posted by ipelton on: July 21st, 2017

In this video, former USPTO examiner Erik Pelton discuss the trademark registration process and the top three challenges faced by applicants, including responding to refusal office actions.

What is protectable as a trademark? (Video)

Posted by ipelton on: July 19th, 2017

I recently posted a new video on my YouTube channel (www.youtube.com/tm4smallbiz)