‘Media Coverage’ Category

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!

Top Trademark Trends of 2016

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

Looking back on 2016 from a trademark perspective, the year rather quiet compared to 2015 and what is in store for 2017. With a lot on tap for next year from the USPTO and the Supreme Court in the world of trademarks, 2016 saw the continued trends of application filing increases and sleeker logos from companies for a more mobile world.

US trademark filings increase again. For the seventh year in a row, the number of trademark application filings submitted to the US Patent and Trademark Office (“USPTO”) has grown. The increase may have slowed from last year’s surge of nearly ten percent, but the trend of more businesses investing more to create and protect brands continued nonetheless. Given the consistent filing rise over the last few years, the overall number of active US trademark registrations sits at an all-time high, nearly 2.2 million.

Presidential election themes generate scores of trademark filings. November’s election generated hundreds of trademark filings. From “Make America …. Again” to “Make …. Great Again,” from “Deplorables” to “Bernie” and “Walls” to “Putin,” and more than one hundred filings featuring the term “Trump,”election themes and catchphrases provided the basis for many application filings. When the new administration takes office in January, two areas could affect trademark owners the most: USPTO operations and international trade deals that include trademark and intellectual property provisions.

Changes on tap for the USPTO. In 2017, the USPTO will see several significant changes besides a new Director with the new administration. There are some fee changes on tap that will primarily affect filers who use paper instead of the USPTO’s electronic systems. The Trademark Trial and Appeal Board has a new rules package that takes effect mid-January and provides for testimony by affidavit, electronic service of documents, and some other procedural changes intended to reduce the costs and time of litigation. Other rule changes will tweak the declaration format used by signatories.

Supreme Court to decide whether the USPTO’s refusal to register “disparaging” trademarks is unconstitutional. In December of 2015, 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 section of the Lanham Act trademark statutebarring registration of disparaging terms, Section 2(a),  violates the First Amendment’s protections for private speech. The Supreme Court will hear the case in January, and the outcome will likely affect the years-long saga involving the Washington Redskins trademarks as well.

Logos get sleeker. Instagram and Uber unveiled major logo redesigns. Taco Bell, MasterCard, Subway, NASCAR, and Netflix tweaked their logos. Most of these changes represented a shift towards simplicity and sleekness, as such designs that are easier to read on small screens. As more brand interactions are online and mobile, look for other brands to continue the trend of simplifying their logos next year as well. 

Scams targeting trademark owners proliferate. The number of bogus solicitations, questionable offers, and outright scams targeting trademark owners continued to expand, with slow progress in cracking down on the operators. While the number of these offerings seems to keep growing, in 2016 several individuals in California were indicted and charged with money laundering and other crimes in connection with a scheme to launder the proceeds of a mass mailing scam targeting holders of U.S. trademarks. And in New Zealand, after efforts by the New Zealand Commerce Commission, refunds of over NZ$600,000 were made to individuals taken in an online trademark directory scam from ‘TM Publisher.’

On tap for 2017. In many ways, 2016 was a static year in trademarks between 2015, which featured a major Supreme Court trademark decision, and 2017, which will feature another top court case, as well as the implementation of several new sets of rules and fees from the TTAB and USPTO. With the contentious presidential election in the rearview mirror, I believe that 2017 will also bring significant growth in the number of trademark filings and trademark disputes.

© 2016 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 2,500 U.S. trademarks for clients and has represented dozens of parties in trademark disputes.

Past issues of Top Trademark Trends:


Beware of new scam from IPWT or IPTWO targeting trademark owners

Posted by ipelton on: September 5th, 2016

Another new scam targets trademark owners. This one is from IPWT, IPTO, or In the fine print they call themselves “Intellectual Property World Trade Organization.” In fact, they are a scam.

This offer references Patent and WIPO and serial numbers official sounding numbers and information. But it provides zero value to my knowledge. I have never spoken to or read about a trademark professional who has used IPWT services.

When with the USPTO, FTC, Department of Justice, SBA, U.S. Postal Service and other government organizations make a real effort to crack down on these scams and protect consumers and trademark owners?

See sample form that they are mailing to some trademark holders below:


If you have been taken by this scam, I suggest that you file a complaint with the FTC, write a letter to the USPTO Commissioner, and contact law enforcement.

Beware of such scams. Read the fine print. Contact your attorney. Report scams to the FTC and USPTO.

According to USPTO records from the T.E.S.S. database, the USPTO received 370,271 trademark applications in 2015*.  This is a record for the number of US applications filed in a year. It also represents a jump of approximately 10% over the prior year (depending on which numbers are used). 2015 also appears to have been a record year for the number of registrations issued: 213,736.

FireShot Capture - Record List Display - http___tmsearch.uspto.gov_bin_showfield

In 2014, the USPTO saw approximately 345,000 new applications (In January 2015, my search found 336,239 but the number showing 2014 filing date has likely increased due to some foreign filings and divided applications).

With the rate of growth in application filings and registrations issued, the USPTO trademark register indicates steady and increasing growth in the economy.

* Data from TESS search on January 6, 2016

See also:

TPAC Meeting Summary – September 2015

Posted by ipelton on: September 29th, 2015

On Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

The Friday meeting marked some firsts and some lasts. This was the first time USPTO Director Michelle Lee was able to attend the meeting and address the committee. The meeting also marked the end of the fiscal year (September 30th) and saw the end of the TPAC term of three members of the committee: Dee Ann Weldon-Wilson, vice chair Kathryn Barrett Park, and chair Maury Tepper.

Comments from the Director – Undersecretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee

Director Lee expressed her appreciation for the committee’s work, and noted that she once served on TPAC’s patent counterpart, the Patent Public Advisory Committee. The Director told the committee about upcoming openings of regional offices in Silicon Valley and Dallas, both set for this fall. The offices will play a big role in the PTO’s continuing educational outreach efforts. The Director also noted that the PTO expects to continue normal operations if Congress does not pass a budget or continuing resolution next week.

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • The TTAB is meeting its goals for shortening the pendency for cases and motions before the Board.
  • The Board is not making any major changes in the wake of the Supreme Court’s decision in B&B Hardware v. Hargis. The Board is likely to be more nuanced in its use of language and more clear in its opinions about how submitted evidence factors into its decisions, however, in a nod to the Supreme Court’s holding that TTAB decisions can be preclusive.
  • The Board is going to continue public outreach efforts. In particular, the Board will continue holding oral arguments in public forums, including one coming up at Loyola Law School in California.
  • As the Board has discussed for some time, it is likely that we will see rules changes concerning process and procedure soon, possibly as early as year. We learned that TPAC has already seen draft copies of the proposed rules. The Chief Judge expects that as a result of B&B Hardware, discovery at TTAB may expand, but only in those where use in commerce is really at issue.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • There isn’t currently a lot of trademark activity in Congress, although the Washington football team’s name is still an issue. H.R. 3487, introduced by DC’s non-voting member Del. Eleanor Holmes-Norton, attempts to strip the NFL’s anti-trust exemption as long as the name stays in use.
  • Congress has been very involved with the USPTO’s efforts at the World Intellectual Property Organization (WIPO), which was discussed in more detail later in the meeting.
  • Colarulli provided some more insight into the Congressional budget talks. He noted that the PTO would need authorization from OMB to stay open if there was no continuing resolution. He expressed optimism that there would be no shutdown.
  • There was discussion about a provision in a pending patent litigation abuse bill that concerns trademark appeals. The bill would change jurisdiction for certain TTAB appeals. In cases where the appellant appealed to the district court instead of the Federal Circuit, the bill would send any appeal of the district court judgment to the Federal Circuit instead of the appropriate regional circuit court. The PTO expressed support for the bill, while members of the committee disagreed, citing concerns of the IP bar.
  • Finally, committee discussed the current state of the Copyright Office, including possibility of putting it under the USPTO agency.

USPTO Budge Update – Tony Scardino (Chief Financial Officer)

  • Fiscal Year 2015 closes at end of this month, and the budget for 2017 was just submitted to OMB.
  • Revenues were in line with projections. Although application numbers were up, the reduction of certain trademark fees implemented January 17, 2015 reduced overall revenue a drop.
  • This year, the PTO made use of “overflow” money to help pay for continued development of the IT systems.
  • USPTO is conducting a biennial review of all its fees, including some proposals to adjust trademark and TTAB fees. A decision on whether to propose changing any fees next year will be coming soon, and must be made at least 30 days before the start of the next presidential administration.

Trademark Operations – Commissioner Mary Boney Dennison

  • Commissioner Denison thanked the outgoing members of the committee with certificates of appreciation.
  • The Commissioner noted that filings are up, pendency goals are within targets, and quality goals are above targets, too. Filings are up10.8% above last fiscal year (prediction had been 6%), and the PTO expects 7-8% increases annually from 2016-2020.
  • The PTO employs 456 examining attorneys. 85% of EAs telework full time from 29 states. The PTO hired 43 new EAs this year, and will have 20 new EAs starting in November. Trademarks is also likely to hire approximately 30 in the next few months.
  • New hires now go to an entirely new law office rather than be divided among existing law offices. This is part of an ongoing pilot training program.
  • Trademarks has a new administrative position: Deputy Commissioner for Trademark Administration, for which Trademarks will be interviewing candidates soon. This position will include IT oversight.
  • Trademarks is working on a plan for enhancing customer service, including website instructions. The Trademarks will have a training day in April 2016 for all employees.
  • Commissioner Denison shared updates on two additional pilot projects at the PTO. First, the PTO is exploring post-registration ID changes due to technology evolution (i.e., subbing out 8-track tapes for MP3s). The pilot program commenced on Sept 1. See the PTO website for more details.
    The PTO also concluded its post-registration use pilot, which studied the actual use of marks for their registered goods upon filing of Section 8 renewals. The PTO is still considering its next options. Random audits of registered marks are the most likely plan for now.
  • Finally, public outreach efforts continue. A “Basic Facts” video had 345,000 views online, and bar association roundtables will be held at the new satellite offices in Silicon Valley and Dallas.

International Policy – Shira Perlmutter and Amy Cotton

  • The PTO’s International Policy team has been very busy dealing with the World Intellectual Property Organization and the members of the Lisbon Treaty on Geographic Indications.
  • Lisbon Union countries have not been adequately supporting implementation through fees, which the PTO believes has resulted in U.S. patent and trademark owners subsidizing the WIPO’s work under the treaty.
  • New regulations were adopted this spring over the strong objection from the U.S. and other countries. These regulations create perpetual protection once on the international register and prohibit those indications from becoming generic, which is all antithetical to U.S. principles of IP law.
  • The U.S. is exploring alternative approaches, and may be prepared to ‘block’ the WIPO budget over these issues.
  • The EU is undergoing changes in its IP system. The EU’s trademark office, OHIM (Office for Harmonization in the Internal Market) will soon be reorganized. There were also several new regulations passed as part of a new directive. The EU now has a “traditional terms” refusal, which will refuse marks that contain traditional terms such as “Chateau.”

IT Update Chief Information Officer John Owen II & Manager Raj Dolas

  • The IT updates and development of TMNG (Trademark Next Generation) continues, although slowly. The project is facing a lot of difficulties dealing with both the old legacy systems and the new systems, and the team is constantly discovering new problems with merging the two systems. Right now, much of the work is focusing on the back-end and systems for the Examining Attorneys and trademark staff.
  • The IT team has rolled out a new Trademark ID manual. The team has also finished the big task of migrating all images (5+ million) and documents (200+ million) from the legacy system to the next generation system.
  • The team has also increased the size limit for attachments in the legacy system, making filing responses with evidence easier.
  • The IT team received a lot of questions from the committee about the timeline of updates and problems the team faces, as this portion of the meeting has some of the greatest impact on trademark owners and trademark law practitioners.

2015 09 25 TPAC Handouts