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Ride the Super Bowl Coattails, Safe From Suits

Laurie Kulikowski
02/02/11 – 08:00 AM EST
NEW YORK (TheStreet) — Entrepreneur Paul King, CEO of Hercules Networks and the creator of the goCharge automated mobile-device charger, is using his product’s participation in the Super Bowl to spread the word about his growing business.

King, who launched the product in 2008, says he will be sending an email blast to clients and prospective clients noting the inclusion of a kiosk within AT&T’s(T) designated area at the Bowl.

The goCharge automated charging machines for mobile devices will be at the Super Bowl this year, but not by claiming to be of the Super Bowl.

“We are coming up with a flier that turns goCharge into a cartoon character and it says ‘goCharge is at the Super Bowl making sure you’re charged up during the Big Game,’” King writes in an email to TheStreet.

Note that: “Big Game.” In addition to being an example of how smaller businesses get in on Super Bowl promotion action, King’s flier hints at a way not to run afoul of National Football League lawyers on the lookout for trademark infringement of one of the most well-known events in the U.S.

Businesses that are most wary of litigation could advertise using only a synonym such as “Big Game” instead of risking NFL ire with “Super Bowl.”

“The Super Bowl is obviously a well-known trademark, and the NFL is rather aggressive in enforcing it with businesses large and small, local or national. It is a very important asset to them,” says attorney Erik Pelton, who has helped many small-business owners with trademark disputes. While most trademark enforcement takes place near the game itself, the NFL has “an army of lawyers and has invested a lot of money in obtaining exclusive licenses for all types of products and services. And therefore they invest a lot of money in guarding those trademarks.”

At the bottom of the NFL website is a disclaimer that the acronym and shield design are “registered trademarks of the National Football League. The team names, logos and uniform designs are registered trademarks of the teams indicated.” (Business owners can search the U.S. Patent and Trademark Office website to find further trademarks.)

But it isn’t just “Super Bowl” and team names that are protected. Even slogans and catchphrases such as “cheesehead,” meaning a Green Bay Packers fan, is a registered trademark, Pelton says.

Still, there is a difference between what would get businesses in actual legal trouble and what would get them in trouble based on the NFL guidelines, says trademark and entertainment attorney Ken Basin, of Greenberg Glusker Fields Claman & Machtinger in Los Angeles.

The NFL aggressively sends out cease-and-desist letters if “Super Bowl” is used without permission in a commercial context, but retailers aren’t necessarily in legal muck if they do use the term, Basin says.

Individuals and businesses are protected under the First Amendment in what’s called “nominative fair use,” in which a trademark is allowed to be used if it describes a phrase and lacks commercial intent, Basin says. For instance, an electronics store ad could suggest to customers that they “Come get your TV before the Super Bowl,” because it is describing an event.

There are also creative ways small businesses can refer to, uh, that event on Sunday without using trademarks, experts say.

David Johnson, CEO of Strategic Vision, a publicity and marketing firm that works with small companies, says he often advises clients on how to maximize potential with big events such as the Super Bowl.

The trick, he says, is to come up with a clever play on words so consumers clearly understand that the ad is in relation to the Super Bowl — but never use the exact terms.

Consumers seeing the word “super” in an advertisement will consider it a tie-in to the Super Bowl, for example, even though the business is not using the Super Bowl logo.

“It does work,” Johnson says.

People at businesses such as financial or technical services firms can use social media to discuss the Super Bowl and its advertisements or run contests, he adds, because “right now social media is still considered media in that it’s protected by the First Amendment. Right now it’s a way to promote [your firm] without running afoul of the trademark laws.”

“We have [clients] go on and talk about the Super Bowl commercials. They are actually talking about the Super Bowl but not tied in to [their own] advertising,” Johnson says.

When crafting the goCharge promotion, King says, he did not contact the NFL for permission.

“We didn’t think we were saying anything controversial or untrue. We’re basically saying we’re going to be there for you at the Super Bowl,” he says.

And that may be the best lesson goCharge can provide: For any event, business or known trademark such as “Super Bowl,” think about what you’re doing before you do it.

“Use common sense. Think about what the NFL’s interests are and see how others creatively get around using the brand names of the NFL. It is entirely possible to have a promotion that fairly clearly references the Super Bowl but doesn’t step on the NFL’s toes,” Pelton says. “Basically the easiest thing to do is to avoid using team names, team logos and the phrase ‘The Super Bowl’ and any other trademarks that are protected.”

An NFL spokeswoman did not respond to an email sent by TheStreet. A representative of AT&T did not respond to a request for comment by email.

– Written by Laurie Kulikowski in New York.

Small Business ‘Trademark Bullying’ Comments Made Public
PR Newswire
04/05/11 – 07:40 AM EDT

FALLS CHURCH, Va., April 5, 2011 /PRNewswire/ — For the first time, recent comments submitted to the government about abusive trademark litigation tactics and their effects on small businesses have been made available to the public, said Erik M. Pelton, managing partner of the trademark law firm Erik M. Pelton & Associates (or “EMP&A”).

Last fall, the United States Patent and Trademark Office (“USPTO”) issued a request for comments about “trademark bullying” as part of a congressionally mandated investigation into growing concerns that small businesses and entrepreneurs are unfairly disadvantaged in trademark disputes. The USPTO request defined a “bully” as “a trademark owner that uses its trademark rights to harass another business beyond what the law might be reasonably interpreted to allow.”

Though the USPTO has yet to publish any findings from the study, trademark law firm EMP&A has publicly posted the comments from more than 40 different businesses, individuals, and organizations. EMP&A obtained these comments through a records request under the Freedom of Information Act.

“The comments offer insight into the deeply conflicting views about whether small businesses and entrepreneurs are treated fairly in the trademark system,” said Pelton. Many small businesses submitted comments describing their own encounters with “trademark bullies.” For example, Rock Art Brewery, a Vermont micro-brewery that has been making VERMONSTER® brand beer since 2006, described how it had to overcome allegations of trademark infringement it received from the makers of MONSTER energy drink in late 2009. Rock Art’s case received significant media attention, which helped inspire the congressional study.

Pelton said comments from several larger companies tended to dismiss the idea that small businesses faced a pattern of “bullying.” For example, Intel Corporation characterized the experiences of small businesses as a “subjective impression of being ‘bullied’” that could be reduced by “additional education in the area of trademark law, particularly targeted to individuals and small businesses…,” but not all large companies shared this view. eBay, Inc. also acknowledged some factors that have encouraged the practice of trademark bullying: “Trademark bullies are successful in obtaining settlements against trademark owners, even where the trademark infringement claims asserted are questionable, because defending parties are either not capable, financially or otherwise, or willing to deal with the risks and uncertainty involved in litigating a trademark dispute.”

EMP&A has also submitted its own comments to the USPTO. Erik Pelton, EMP&A’s founder, became interested in the issue after some of his own small business clients had to overcome questionable claims raised by larger companies. “Lately we have seen many small businesses struggle with the tough choice of either enduring years of expensive litigation to defend their valid trademark rights or agreeing to rebrand their products under threat from an opponent with deeper pockets,” Pelton said. “Either way, small businesses and entrepreneurs are forced to divert time and resources away from growing a successful business.” Since more than half of all Americans are employed by companies with less than 500 employees, Pelton is concerned that trademark litigation policies, which unfairly burden small businesses, have become a significant drain on the growth of the economy.

To date, the USPTO has not published the results of its study, but EMP&A has already filed a new FOIA request seeking its release. In addition, Pelton recently wrote to Senator Patrick Leahy, Chair of the Senate Judiciary Committee, urging the committee to hold hearings on abusive trademark litigation tactics and their effect on small businesses. According to Pelton, “Congress needs to ensure that the experiences of America’s small businesses and entrepreneurs have been taken into account.”

About Erik M. Pelton & Associates, PLLC

EMP&A is a boutique trademark law firm in Falls Church, VA, representing businesses and entrepreneurs around the world. The firm has registered more than 1,400 trademarks, and has successfully represented clients in numerous trademark disputes. This week, EMP&A’s founder, Erik Pelton, will participate in a panel discussion with the Commissioner for Trademarks at the American Bar Association’s 26th Annual Intellectual Property Law Conference in Arlington, Virginia. EMP&A is a member of the National Small Business Association, and Mr. Pelton is on the board of directors of the Falls Church Chamber of Commerce. More information about the firm is available at http://www.tm4smallbiz.com.

All the comments obtained from the USPTO, along with a copy of FOIA request itself, have been published online for the public on the firm’s IPelton® blog at http://ipelton.wordpress.com or http://bit.ly/USPTOFOIA.

Contact:

Erik Pelton (703) 525-8009

SOURCE Erik M. Pelton & Associates, PLLC

F.C. Business News & Notes

By Sally D. Cole  
Tuesday, March 02 2010 08:04:16 PM

F.C. Files for Trademark Protection of ‘The Little City’

Erik M. Pelton & Associates, PLLC have filed the trademark applications on behalf of the Falls Church City Economic Development Authority for “The Little City” slogan and logo created by the Falls Church-based advertising agency SmithGifford. The slogan and logo were used in conjunction with the City’s Watch Night event New Years’ Eve and most recently with the Washington Area Music Association’s Wammies’ which took place at the State Theatre this past weekend. EMP&A is a boutique trademark law firm in Falls Church which was founded by Erik Pelton. Pelton donated his legal services to file three federal trademark applications on behalf of the EDA. “There is only one ‘Big Apple,’ and now there will be only one place known as ‘The Little City,’” Pelton said. The firm has represented more than 1,000 trademarks. For information about the firm visit www.tm4smallbiz.com.

News-Press Commences 20th Year This Week

The Falls Church News-Press commences its 20th year of consecutive weekly publication this week. The “Volume 20, No. 1″ edition of the tabloid will hit newsstands on Thursday. The first edition of the FCNP was published in March 1991. In the ensuing years, it has been named the City of Falls Church, Virginia’s “Business of the Year” award twice, while its founder, owner and editor Nicholas F. Benton was named the City’s “Businessman of the Year” and twice named the “Pillar of the Community” by the Falls Church Chamber of Commerce. The newspaper has also been honored for its contribution to the region with a number of special recognitions from the Virginia State Legislature and from Falls Church’s Citizens for a Better City civic association. In 2007, the Washington City Paper called the FCNP the region’s “Best Remnant of the Liberal Media,” and in 2009, it was formally endorsed by the National Gay and Lesbian Chamber of Commerce as a “Certified LGBT Enterprise.” Since being founded by Benton in 1991, the circulation of the paper grew from 7,500 to its peak of 36,500. Since 2001, the newspaper’s managing editor has been Jody Fellows.

F.C.’s FIRSTFriday Events

FIRSTfriday of Falls Church events are taking place at a number of local businesses this Friday, March 5. Art exhibits will be held at Art and Frame of Falls Church, Curves, Stifel & Capra, Stacy’s Coffee Parlor and ArtSpace Falls Church. A number of additional businesses are also offering entertainment and special FIRSTfriday discounts. For details visit www.firstfridayoffallschurch.com.

Franchise Expo Set for Next Month in D.C.

Entrepreneurs interested in franchise opportunities may consider attending the International Franchise Expo which will take place at the Walter E. Washington Convention Center in Washington, D.C. April 9 – 11. The event offers the opportunity to visit hundreds of franchise concepts, attend free seminars, see and sample franchise goods and services, and meet with executives about starting a new business. To learn more about the conference or to register, go to www.ifeinfo.com.

F.C. Chamber Gala & Auction This Saturday

The Greater Falls Church Chamber of Commerce’s Annual Awards Gala and Silent Auction will take place this Saturday, March 6, from 6 – 11 p.m. at the Arlington Hilton. The evening will include a reception, a silent auction with items donated by local businesses including Argia’s, Foxcraft Design and Kendall’s Cakes as well as the companies listed in the Chamber’s advertisement elsewhere in this edition of the Falls Church News-Press, the Awards Ceremony, a live auction hosted by Ireland’s Four Provinces owner Colm Dillon and live music from Soul Gravity sponsored by Tori McKinney. Tickets to the event are still available. Contact the Chamber at 703-532-1050 or info@fallschurchchamber.org or visit www.fallschurchchamber.org.

What Are the Best and Worst Company Logos?

The recent backlash against the Gap’s rebranding served as a reminder of how effective — or disastrous — logos can be. From McDonald’s and Nike to Sears and Mercedes, a look at some of the best and worst of all time.

The Gap has found itself in a little marketing hot water, after replacing its longtime logo with a new one that Ad Age described as “something a child created using a clip-art gallery.” And that was one of the kinder reviews. After more than 20 years, the emporium of denim, khakis and other casual wear decided to shelve its iconic blue-box-with-white-text logo — and was immediately slammed across the Internet, even spawning parody Twitter accounts. To stop the bleeding, the company announced a crowd-sourcing project, inviting consumers to offer alternative logos. The fate of the new logo remains unclear.

It’s not the first time a major brand has faced backlash for fixing what may or may not have been broken. Last year, Tropicana was forced to abandon new packaging after a near-universal panning.

Both examples serve as case studies about why logos are such an important part of an overall brand message — for companies of all sizes. “A logo is some sort of graphic mark, an emblem utilized by many large corporations and organizations to promote public recognition of their firm and products or services,” says George Cook, an executive professor of marketing and psychology at the Simon Graduate School of Business at the University of Rochester. “The logo helps the firm initially gain attention and then continue to keep the company and its products or services at the consumers’ top of mind when they’re in the buying process. Some firms do a magnificent job of this, while other logos leave a lot to be desired.”

So what makes a truly effective logo? We rounded up a panel of experts and asked them to share their picks for best and worst.

The Best Company Logos

McDonald’s. The key is “memorability,” says Walter Guarino, an advertising and branding professor at Seton Hall University and president of SGW, Montville, N.J.-based integrated marketing firm. “If upon seeing the logo once or twice, I can remember it and what it stands for, it’s a winner in my book.” And those billions and billions of customers McDonald’s has served, whose eyes light up at the sight of those Golden Arches, can’t be wrong.

Nike. The iconic swoosh is probably the most famous company logo out there, and just for that, it deserves high praise and a place on our list. “Nike’s brand essence of ‘Just Do It’ is captured in its famous swoosh,” says Betsy Jordyn, president of Windermere, Fla.-based Accelera Consulting Group, which has worked with numerous Fortune 100 companies, including Walt Disney World. “The name Nike and the swoosh represent the Greek goddess of victory, which is a perfect fit for a company that is the world leader of sportswear provided to competitive athletes.”

Echoing that sentiment is Todd Simmons, executive creative director at Wolff Olins, a branding firm with offices in London, New York and Dubai. “At the risk of stating the obvious, what comes to mind immediately is the Nike swoosh,” he says. “Nike taught us all what a traditional logo can do on its own. I like that the logo is abstract and isn’t an overt visual translation of Nike, although it has its roots. The swoosh also makes any communication or product better when it’s placed on it — a benchmark for a great symbol.”

“The logo is 100 percent effective,” raves Ricardo de la Blanca Brigati, CEO of the DLB Group, a multinational advertising company that works with clients including the Cartoon Network and Kraft Foods. “The way the symbol is positioned gives consumers a sense of speed, a quality that obviously reflects the spirit of the company.”

Cook notes that Nike “paid a student $35 for their enduring logo. What a buy!” (Years later, as a thank you, Nike CEO Phil Knight gave the same design student an envelope full of stock options.)

The Geico Gecko. The famous insurance lizard is celebrating his 10th anniversary as a spokesman for Geico, and clearly, he and the company are doing something right. As Cook says, the logo is “cute,” and the related advertising generally features “humorous stories that we all can relate to and laugh about.”

FedEx. What is it about their logo that’s so impressive? True, it’s been part of the advertising landscape for so long that it’s probably hard for a lot of us to see it, but the way Ms. Jordyn explains it, “FedEx changed the shipping industry when it promised its customers ‘when it absolutely, positively has to be there overnight.’ Its logo communicates this promise with a hidden arrow — between the ‘E’ and the ‘X’ — which is a symbol of both speed and precision.”

You’ll be hard pressed to find any marketing executive who will say a bad thing about FedEx’s logo. “The use of the negative space to create a subliminal arrow signifying forward motion is brain-brilliant,” says Adam Hanft, a branding guru and CEO of Hanfts Projects.

“All-time best in my opinion,” echoes Erik Pelton, a top trademark attorney in Arlington, Va.

CBS. Hanft particularly likes this one, noting that the “eye gazes at us from the 1950s with authoritative brilliance and unblinking courage that is all the more relevant right now.”

Playboy. “Say what you will,” Hanft says. “Marshal the full armamentarium of sexist weaponry. This whimsical masterwork continues to instantly communicate the national value system of Heffnerica.”

The Worst Company Logos

Sears. Kelly Day, associate creative director at Bailey Gardiner, a San Diego-based marketing agency, passionately hates the Sears logo. Why? It’s confusing. “Not only is their current logo bad, what makes it even worse is that some of their older logos were really, really good,” Day says. “Instead of building on its own history and using a logo that relates to its roots as one of the oldest and most-trusted brands, it went generic. It chose a logo that makes it blend in with JCPenney’s, Kohl’s and all the other large, forgettable department stores. Such a shame.”

Coca-Cola. It might seem crazy to knock Coca-Cola’s logo — after all, it’s one of the world’s most recognizable brands. But the drink has thrived in spite of the logo, not because of it, according to de la Blanca Brigati. “The letters and the red and warm colors are opposite to what the company should stand for.” It would have been better, or made more sense, had Coca-Cola adopted something blue, as Pepsi did, which would connote a refreshing, cool drink.

Kellogg’s. “This is another extremely successful company that could have a better logo,” de la Blanca Brigati says. “The logo doesn’t send consumers any sort of message, and it doesn’t portray much of what the company stands for. It’s not that the logo is bad, but considering the company, it should be much better.”

Mercedes. “Yes, it’s iconic,” Hanft says, “but only because of the car that it adorns. Otherwise, the three-part symbol is cold and remote, communicating no values and tapping into no brain orchestra of emotion.”

Edsel. We’re reaching back a bit to the infamous car named after Henry Ford’s son, which was made between 1958 and 1960, but it has to be mentioned, Guarino says, “because it’s among the top of the worst heap. They did nothing right with that car from the start.” The logo was particularly awful, he says. “The weird-shaped E with the name of the brand tucked more than halfway down the letter did absolutely nothing to stand out. Occasionally, they used it without the brand name, showing just the ‘E’ with six hard to count ‘em circles around it. I never understand what the circles were for, or why you would take the risk of thinking people would remember the car’s name from just the first letter.”

Of course, the problem with trying to create a list of bad logos, Guarino says, is that “there are so many forgettable logos out there that it’s hard to comment on them.”

Geoff Williams is a regular contributor to AOL Small Business and has been writing about business issues for publications like Entrepreneur for over a dozen years now. He is also the co-author of the book Living Well with Bad Credit.

Trade mark bullies report dubbed disappointing

04 May 2011

Eileen McDermott and Karen Bolipata, New York

US trade mark practitioners have expressed disappointment with the Department of Commerce’s report on trade mark litigation tactics, which was published more than one month late

The report was undertaken in response to a mandate by the Trademark Technical and Conforming Amendment Act of 2010, which was signed into law in March last year.

The law required the Department of Commerce, in consultation with the Intellectual Property Enforcement Coordinator (IPEC), “to study the extent to which small businesses may be harmed by abusive trademark enforcement tactics”.

The report made three recommendations for dealing with the adverse impact of trade mark litigation tactics on small businesses, although it…

Lawyers await trade mark bullying study

19 April 2011

Karen Bolipata, Washington DC

The USPTO is in the final stages of drafting its Trademark Litigation Tactics study, which is now more than a month overdue

The study was due to be presented to Congress on March 17 – the anniversary of the act that created it. A spokesperson for the Office said yesterday it was going through final clearances and will be sent to the Hill “very soon”.

Aimed at small businesses, the study was initiated following the Trademark Technical and Conforming Amendment Act of 2010.

The report focuses on “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner”.

The USPTO solicited comments from US trade mark owners, attorneys and industry groups such as INTA, the ABA and AIPLA.

Despite missing the deadline, the study doesn’t seem to be widely anticipated, said Erik Pelton, a trade mark attorney who has written extensively about the issue.

“I think there was not a…

Some of our Client’s Registered Trademarks