‘Articles’ Category

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.

Related Story:

In May 2011, the Trademark Trial and Appeal Board (“TTAB”) released the long-awaited 3rd Edition of its Trademark Trial and Appeal Board Manual of Procedure (“TBMP”).[1] This guide summarizes and highlights the most significant changes included in the 3rd Edition of the TBMP, providing particular attention to new and significantly revised sections.

The TBMP was created to “serve as a comprehensive and ready resource for practitioners.”[2] Though the TBMP is neither a binding authority nor a substitute for controlling statutes, rules, or decisional law, it contains invaluable depth and details regarding the Board’s practice and procedure.

The 3rd Edition provides a well deserved update of the Manual. Following the release of the 1st Edition in 1995, the 2nd Edition of the TBMP was published on May 1, 2003 and revised once, in March of 2004. During the years between the 2nd and 3rd Editions, the TTAB issued more than 300 precedential decisions as well as a significant package of rules changes that took effect for proceedings commenced on or after November 1, 2007. The 3rd Edition incorporates amendments to the Trademark Rules of Practice, the Trademark Act, and the applicable Federal Rules as of November 15, 2010. Many of the most significant changes in the 3rd Edition relate to five topics:

  • 2007 changes to the Trademark Rules of Practice;
  • using ESSTA for electronic filing of TTAB documents;
  • Accelerated Case Resolution (“ACR”) options;
  • expanded precedents concerning Madrid Protocol applications; and
  • expanded details regarding concurrent use proceedings.

At more than 1,300 pages, the 3rd Edition is the most comprehensive version of the TBMP to date.  Its creation was a massive undertaking lasting several years and requiring the efforts of many Administrative Trademark Judges and other staff members. The TTAB has indicated its intent to provide more frequent updates in the future. 

In this 24 page guide, we have summarized most of the additions and changes included in the 3rd Edition.  We have underlined or otherwise emphasized changes that we consider to be particularly significant or interesting. Sections that were unchanged in the 3rd Edition have been omitted from this guide. Though many of these changes may already be well-known to frequent TTAB practitioners, we expect that a quick review of this document will bring to light several previously unknown or long-overlooked changes, even among the most experienced TTAB veterans.

Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), 3rd Edition

[1] The full text of the TBMP is available at

[2] Chief Administrative Trademark Judge J. David Sams, Preface to TBMP (2nd Ed.), May 1, 2003.