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Top Trademark Trends of 2015: Supremes, Slants, Swiftmas, and more

Posted by ipelton on: December 30th, 2015

Top Trademark Trends™ of 2015

By Erik M. Pelton (Erik M. Pelton & Associates®)

In 2015, the field of trademarks featured many developments. Two major court cases featured significant developments but left much unsettled. Nearly every major story in the news was followed by related trademark issues. In all, 2015 was an exciting year for trademarks.

US trademark filings increase again. For the sixth year in a row, the number of trademark application filings submitted to the US Patent and Trademark Office (“USPTO”) has increased. However, this year’s increase of nearly ten percent was even larger than those of the last several years. As a result of the increased filings in recent years, the overall number of active US trademark registrations sits at an all-time high, nearly 2.1 million.

Supreme Court weighs in on trademark law. In March, the Supreme Court issued its first significant trademark ruling in years. B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). The Court held that proceedings at the Trademark Trial and Appeal Board (“TTAB”) of the USPTO have a preclusive effect in later District Court actions when the proper conditions are met; it may take a few years before we know the full ramifications. In the short term, it means that the decision for some trademark plaintiffs whether to file a claim at the TTAB or in District Court may be more complicated, and the stakes may be raised in all trademark disputes as the consequences are more significant.

Refusal to register “disparaging” trademarks held unconstitutional. In December, the Court of Appeals for the Federal Circuit (“CAFC”) held that the USPTO was wrong to refuse to register the name of a band, The Slants, on grounds that the name is disparaging. The CAFC held that the portion (in Section 2(a)) of the Lanham Act statute barring registration of disparaging terms violates the first amendment protections for private speech. The case could be appealed to the Supreme Court in 2016, and will likely affect the years-long saga involving the Washington Redskins trademarks.

Google and other logos get sleeker. Google unveiled a major logo redesign, but the design change was minimal. The significance of the change is that it created a more streamlined and sleek design package. In 2015, Verizon, Facebook, Spotify, OpenTable, and others also made subtle tweaks to their logos, all of made for simpler designs that are easier to read on small screens. As more brand interactions are online and mobile, look for other brands to simplify their logos next year as well.

Pop culture reflected in trademark applications. Major events in the news throughout the year were reflected in trademark application filings. For example, there were filings for Je Suis Charlie, Cecil the lion, Caitlyn Jenner, Donald Trump’s Make America Great Again, and Deflatriots. Taylor Swift also made news by filing scores of new trademark applications in 2015, including SWIFTMAS.

On tap for 2016. I predict that next year in trademarks will include further developments in the Redskins and Slants cases regarding allegedly disparaging trademarks, an increase in some USPTO trademark filing fees, and a meeting of the five largest trademark offices (the ‘TM5’) in China next fall. Despite a contentious presidential election, companies will continue to innovate and to invest in new trademarks.

© 2015 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2015, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a high school class.

Past editions of Top Trademark Trends™:

I frequently advocate on this blog that we should practice what we preach.  Many trademark law firms don’t have good slogans or logos. Many trademark law firms have not registered their trademarks with the United States Patent and Trademark Office.

Not so here at Erik M. Pelton & Associates!  Just added to our roster of registered trademarks: THE NONTRADITIONAL TRADEMARK LAWYERS®.

Get it? It is a double entendre, which makes for a fun, memorable and good trademark.

  • Nontraditional trademarks are source indicating things that are not words or designs, such as sounds, colors, shapes, mascots, uniforms, packaging, and more.
  • Nontraditional lawyers are different from traditional law firms. They use technology to provide more efficient services – the internet for research, email for communication, networks for document storage, and online systems for filing. They charge flat fees. They are smaller and nimble. They publish blogs, create apps, and use social media. They build and use proprietary software for managing dockets and deadlines. Their attorneys answer the phones and return messages promptly.

At Erik M. Pelton & Associates, we are nontraditional. And we have a great deal of experience protecting ‘nontraditional’ trademarks!

86165322 reg cert_001

Boston Marathon trademarks

Posted by ipelton on: April 14th, 2014

This week marks the 1 year anniversary since last years Boston Marathon terrorist bombings. Next Monday, the race will be run again – for the 118th time.  And I will be on the starting line in Hopkinton! I am running to raise money for Boston Medical Center.

The Boston Athletic Association runs the race and owns the trademarks, including these [click for USPTO records]:

  • Mark Image
  • BOSTON MARATHON – registered since 1985 for “ENTERTAINMENT SERVICE, NAMELY STAGING MARATHON RACES.” Used in commerce since 1897!

 

Last week I spoke at the New York State Bar Association and presented on “Trademark Bullying & the Streisand Effect“. The talk was very well received. My favorite feedback was that perhaps trademark attorneys, when counseling their clients about the risks of being “shamed” or having social media backlash after sending a cease and desist, should show my slides and present the stories of the “Streisand Effect” enumerated therein. Perhaps even strong-willed client CEOs would then recognize the risk of being shamed and re-visit a very aggressive trademark enforcement policy.

My slides and paper follow below.

Trademark Bullying & the Streisand Effect (Erik Pelton – NYSBA 2012 IP conference)

 

Top Trademark Trends of 2011

Posted by ipelton on: December 14th, 2011

2011 was a busy year for brand owners and those following the field of trademarks as trademark filings in the US increased and continued growth of the internet, social media platforms, and mobile applications impacts brand owners. Some of the biggest news stories of the year – from the passing of Steve Jobs to the “Occupy Wall Street” movement – also had trademark significance.

Celebrity trademarks continue to grow. Numerous celebrities made news in 2011 with their trademarks: ‘The Situation’ and Abercrombie are contesting the apparel company’s use of “The Fitchuation” and other parodies; Charlie Sheen filed numerous trademark applications after his well publicized blow up with CBS; and the Kardashian trademark empire continues to grow with the filing of more than 40 U.S. Patent and Trademark Office (“USPTO”) trademark applications. 

Political trademarks. Sarah and Bristol Palin made headlines for receiving registered trademarks in 2011 covering their names in connection with motivational speaking services. President Obama’s re-election campaign filed to protect its logos and also recently sued a merchandise maker for infringement. The death of Osama Bin Laden was followed by Disney trademark applications for SEAL TEAM 6; they were abandoned days later after the ensuing public relations backlash. In the last part of 2011, more than 20 “Occupy Wall Street” related applications were filed.

Steve Jobs. The October death of Apple Inc. founder and CEO Steve Jobs inspired many retrospectives about how he changed our culture over the 30 years by teaching us to THINK DIFFERENT®. Along the way, Jobs helped make several Apple brand names and logos among the most recognized and most valuable in the world: iPhone®, iPad®, Mac®, and many others. Many Apple product designs are also registered trademarks.

Mark Image    

.XXX domain names. In September, the ‘sunrise’ or pre-registration period began for the new .xxx top level domain name extension. Owners of registered trademarks and operators of adult websites were given the opportunity to secure .xxx domains before the full public release on December 6th.

New gTLDs. ICANN announced the long discussed launch of new generic top-level domain names (gTLDs) in 2011 with an application process commencing in 2012. Reaction ranged from excitement from some brand owners to serious concerns by many others as the procedures for protecting and blocking “.brand” domain names are convoluted, expensive, and not guaranteed to provide quick and affordable resolutions. As 2012 begins, look for last minute challenges to the ICANN plans.

Trademark filings increase. Through the end of November 2011, USPTO trademark application filings increased 6.5% over the same period last year. The increase may be a positive indicator for the economy’s growth as filing levels are approaching a return to the record high of 2008. At the close of FY2011, the USPTO register of trademarks contained 1,719,247 trademarks, an increase of 24.6 percent in just four years! 

Trademark bullies study released. In April, the Department of Commerce released the “Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting” study, which was mandated by Congress to assess the extent of trademark “bullying.” The study fell short of making sweeping recommendations or identifying any significant perceived problems and suggested (1) private sector pro bono efforts, (2) additional legal education programs for attorneys, and (3) enhancing outreach from government agencies. The study largely fell on deaf ears as Congress held no hearings and issued no reaction.

USPTO outreach. The USPTO continued growing dialogue and collaboration with its trademark users and applicants as it hosted several roundtables and the National Trademark Expo, and requested comments from the public on several proposed changes to its practices. USPTO online trademark systems continued to move into the future in 2011 with enhancements to the online trademark filing system and the availability of trademark records via the cloud.

Popular trademark words in 2011. Here are some of the most popular terms appearing in USPTO trademark applications filed in 2011 (through December 1st):

    • SOCIAL            753    
    • NETWORK  1,000
    • CLOUD             827
    • GREEN         1,607
    • MOBILE          708
    • BOOK               606

Louboutin’s red soles put to the test. In 2008, designer Christian Louboutin registered a mark consisting of red sole in connection with “women’s high fashion designer footwear.” Earlier this year the designer sued Yves Saint Laurent for infringement based on YSL’s all red shoes which included a red sole. The court not only failed to side with Louboutin, it indicated that the registration could not be enforced and might be cancelled. The case has since been appealed to the Second Circuit and will be watched by many fashion brands.

What to look for in 2012. Expect even more trademark disputes between brand owners related to social media and mobile applications as their use continues to grow. Louboutin’s appeal will be closely watched as the lines between fashion, aesthetics, and brands continue to blur. The biggest trademark story of 2012 will likely be the launch of the new top level domains and the challenges and opportunities they will present to brand owners.

About Erik M. Pelton: Erik Pelton is the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. Established in 1999, the firm has registered more than 1,500 U.S. trademarks for clients and represented dozens of parties in trademark disputes. In 2011, Erik presented on trademark and social media issues to a variety of audiences, including the Harrisburg University Social Media Summit, Business of Software, and American Bar Association.

© 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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