‘smar(tm)ark® newsletter’ Category


Welcome to smar(tm)ark,the new monthly newsletter from Erik M. Pelton & Associates, PLLC.

smar(tm)ark is a free resource for current and former clients, as well as others who have requested information about trademarks.  If you wish to unsubscribe, see the instructions at the bottom of this email.  Your email address and information will never be sold to a third party.

Your brands and intellectual property are among the most valuable assets of your business, and many steps to grow, protect, and enhance your brand are simple, inexpensive, and do not require an attorney. smar(tm)mark will provide tips and information about trademark, copyright and brand protection, and provide readers with tools to increase the value of their brands.

Trademark Tip: Customs Registration

Owners of federal trademark registrations for goods can file their trademarks with U.S. Customs and Border Protection.  Customs agents will then be on the lookout for infringers and knock-offs – policing your trademark for you.  Customs recordation is simple and government fee is just $190 per International Class of goods. More information is available at the Customs and Border Protection official website.

As a further benefit, trademarks recorded with Customs show up in their database which could deter would-be importers of counterfeit goods.  While there is no guarantee that Customs will catch an infringing shipment, the potential value of such a catch far outweighs the $190 filing fee.

If your company manufactures or sells branded goods, the cost of having a trademark registration and recording it with U.S. Customs will pay for itself many times over if just one infringing shipment is blocked or avoided.  This inexpensive tool to protect your products and brands is worth considering, especially if you do business in China or other countries that are often sources of knock-off products.

Trademarks in the News:MARCH MADNESS

The NCAA has created a veritable branding slam dunk with MARCH MADNESS® and THE ROAD TO THE FINAL FOUR®. In offices and schools across the country this month, people filled out their basketball brackets hoping to guess this year’s big upsets.  According to legend, the MARCH MADNESS® name was actually used for decades in Illinois high school basketball before NCAA television commentators began using it. The catchy phrase stuck and the NCAA struck a deal to share use and ownership of the trademark.

MARCH MADNESS® is an terrific brand.  The idea of “madness” is fun, the phrase is fun to say and has two words starting with the same MA- sounds, and it is unique. The slogan does not automatically tell the consumer anything about basketball or a tournament of teams, only that it happens in March and that it is madness. [A phrase that is too descriptive is weaker and unlikely to be unique.] Yet because  is such a good name and so well marketed, everyone knows what it is. Of course, a successful product is necessary for a great brand, and both casual and devoted fans love the excitement of the tournament and the fun of filling out brackets. Add a great brand name to a great product, and you have a slam dunk. MARCH MADNESS® is such a combination.

Of course, now that the MARCH MADNESS® trademark is so strong, the owners actively protect it with strict usage guidelines for advertising partners and enforcement activities against infringers. The stronger the brand and the more control the owners can exert over it, the more they can charge their licensing and advertising partners to be ‘official’ users of the brand. This is true whether a brand is already worth millions of dollars, like MARCH MADNESS®, or if a brand is just getting started. The more unique the brand and the better it is protected, the more valuable it can become as an asset.

Lesson : Is your brand a slam dunk? If you have a great product or service but are not a “Final Four” team in your industry, perhaps your trademarks need revisiting.  A powerful product plus a powerful trademark is winning formula, just like MARCH MADNESS® and the FINAL FOUR®.

Firm News

donahey EMP&A is proud to welcome associate  Mark L. Donahey, J.D., M.S., to the firm. A 2009 graduate of George Mason University School of Law and a member of the Virginia State Bar, Mark first joined Erik M. Pelton & Associates as an intern in the summer of 2008. In law school, Mark’s studies focused on Intellectual Property Law, Privacy Law, and Negotiation.  Prior to beginning law school, Mark received a Bachelors Degree in Philosophy from the University of Notre Dame and a Masters of Science in Systems Engineering from George Mason University. In his first months as an attorney at EMP&A, Mark has diligently handled numerous client matters including presenting oral arguments before the Trademark Trial and Appeal Board and conducting the deposition of an opposing witness.

Did You Know?

Since 1999, Erik M. Pelton & Associates has helped hundreds of clients register more than 1,200 trademarks and resolve dozens of trademark disputes.

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.


Welcome to issue number two of smar(tm)arkSM, the monthly newsletter from Erik M. Pelton & Associates about protecting, enhancing, and leveraging your brand.  Notice how there is now an “SM” on the right shoulder of the newsletter name.  The “SM” is used because the newsletter name is a brand name, it is used to market and promote the firm, and we have filed to register it as a trademark. (Yes, we practice what we preach!)  For more information about trademark symbols – TM, SM and ® – see below.

Trademark Tip: Proper Trademark Usage

Following a few basic guidelines for proper usage of trademarks can improve your legal protections and add value to the brand by reinforcing to customers that the mark identifies you and only you.  Here are a few quick tips on proper use of a trademark:

Do not use it as a verb. Despite the wishes of Microsoft’s CEO (see here), generic use a trademark diminishes its value and may harm its legal protections. While it can be flattering when others refer to your brand as the entire category of a product or service, educate your customers, vendors, and partners about how to properly use your trademarks. A person cannot Xerox® papers, they make a copies using a Xerox® device. Linoleum, Escalator, and Asprin used to be registered trademarks, but were cancelled when they became generic names. For a fascinating list of generic trademarks and more in jeopardy of becoming generic, see here.  Google® fights back against people using its brand name to be synonymous with ‘searching’ on the internet.

Make it stand out.  Make sure everyone knows that you are using a trademark – put brand names and slogans in bold type, italics, different font, or otherwise make them stand apart from the rest of the copy on your website and materials. This reinforces that the highlighted text is special, is your brand, and has value. And it helps add to your protection by showing the public that it is not just any wording, it is protected trademark wording.

Use the correct symbols!  The ® is for federally registered trademarks. (TIP: on a full keyboard you can generate the symbol by holding down the “ALT” key and 1,7,4 on the number pad.) Technically, the circle-R should only be used for goods or services which a USPTO registration covers.  If a registration covers tires, but the brand name is also used on headlights, the packaging for the headlights should not use the symbol (and perhaps a new registration should be obtained to cover headlights).

The TM (trademark) or SM (service mark) symbols may be used by anyone who claims rights in a mark, whether or not they have filed an application with the USPTO. This claim may not be valid, but asserts that the owner is claiming or seeking some trademark protection in the word, logo, or slogan. TM is properly used in connection with physical goods (computers, coffee beans, eyeglasses, etc.), but SM is properly used in connection with the provision of services (website, consulting, retail store services, real estate agent, etc.)

Where are the symbols used?  Generally the proper symbol should be used on the upper right ‘shoulder’ of the relevant text.  For a logo, placement on the upper right or lower right corner is generally accepted use.

When are the symbols used? Use them often.  You do not need to use them every time your trademarks are used, but you should use them frequently, especially on the most visible uses of your trademarks, letterhead, first website page or top of website pages, business cards, etc.

Trademarks in the News:

Maker’s Mark Wax Seal

Traditionally, trademarks are brand names, logos, and slogans.  But they can also be shapes (Coke bottle), colors (pink for insulation, purple for sandpaper, and more), sounds (NBC chimes), patterns (Burberry fabric, Yankee pinstripes), and more. A trademark can be anything that distinguishes your brand from the competition.

A recent opinion by the United States District Court of the Western District of Kentucky ruled that the red dripping wax seal used to bottle Maker’s Mark bourbon is a protected trademark. The court issued an injunction barring Cuervo from use of similar red dripping wax on its spirits.  “The court considers the red dripping wax seal inherently distinctive, because it is a unique mark used in an unusual way to draw in the consumer,” Judge Heyburn wrote.

The judge got the decision correct in my opinion.  Anything unique to promote and distinguish your brand in the eyes of the consumer may be protectable as long as it is not just a functional part of the product. Consumers familiar with Maker’s Mark, upon walking into a bar and seeing a bottle on the shelf topped with dripped red wax, would be likely to presume that the product came from or is related to Maker’s Mark.

The red dripping wax configuration has been registered to the parent company of Maker’s Mark since 1985 with the following description of the trademark: the mark consists of a wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.  They also have separately registered the color red as applied to the seal on the bottle neck. Note that it appears from the ruling that Cuervo may use a dripping wax seal so long as it is not red; or at least that issue was not decided in this case.

Many bottle shapes are also protected trademarks.  Can you match the registered trademark shape with the brand?


a)b) c)

d) e) f) g)

What makes your brand distinct?  Is each distinction protected to provide your brand maximum protection and value?

Firm News

Yet another sign that the economy is on the rise: clients are investing in growing and protecting their brands. Through the first 3 months of 2009, we filed 26 applications on behalf of clients. This year, new applications more than tripled (83) during the same period.

Did You Know?

In Fiscal Year 2009, more than 350,000 trademark applications were filed in the US Patent and Trademark Office.  If you created a new brand in 2009 – a product name, service name, slogan, logo, newsletter, website, or blog title – were you among them?

a) Perrier; b) Evian; c) Absolut; d) Gatorade; e) Tropicana; f) Coca-Cola; g) Patron

Thank You
Thank you for reading our newsletter.  We truly enjoy spreading the message about trademark protection to businesses across the USA. It gives us great pride to help businesses thrive with strong brands.  If you are involved in any trade associations or other groups that would benefit from a presentation featuring information about creating, protecting, and leveraging strong brands, please let us know.

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2010 Erik M. Pelton & Associates, PLLC.


Are you on Facebook, Twitter, or YouTube? We are and we hope you will join us. See details in the column to the left to connect with us online. If you are not on these popular social media sites, have you at least opened accounts using your brand names to prevent others from misusing them? This is a relatively new trademark issue as brands expand into social media websites. A great free tool to see if your brand names are available on many such sites is KnowEm.

Trademark Tip: Using Trademarks for Competitive Intelligence

USPTO trademark filings are public records at the USPTO of course. With some skilled searching of USPTO filings, businesses may be able to find out what type of work their competitors are doing, or what other industry trends are.

For example, does Apple have any new brand names in the works?  Apple recently filed to register IBOOKSTORE for a large range of products and services, and they also have an application seeking protection for the design of their Magic Mouse

How about well known restaurateur Todd English, might he have any new restaurants in the works? Todd English Trademarks, LLC has several recent applications, including:


What movies or other new things might be coming from Disney? Here are some “intent to use” applications it owns:

PETER PAN (film)
BAMBI (film)

What’s new in the candy business?

Perhaps a new offering from Tic Tac?  TIC TAC FANCIES
CANDYWORKS stores from Mars?
MPORIUM stores?

As you can see, quite a bit of information about possibly forthcoming brands, products, and services can be unearthed searching trademark records. The trademark record is a snapshot of the economy. While a registration or filing is not mandatory, companies that recognize the value and impact of their brands generally file early to protect new business opportunities.  This allows the public – or the competition – to get a little peek into what might be coming.

Trademarks in the News (25 years ago): Remember New Coke?

Brands are controlled and managed by humans. As a result, brands make mistakes. Remember Pepsi Clear and Crystal Pepsi? McDonald’s Arch Deluxe? Microsoft Zune? The XFL? The most notorious brand failure was probably New Coke. 25 years ago this month, after a fortune spent in research, testing and marketing, Coca-Cola unveiled a “new” formula of soda. “New Coke” was supposed to reverse the beverage giant’s declining market share in the soda wars of the 1980s. The product was launched with a press conference at Lincoln Center and workers renovating the Statue of Liberty were given the first cans to take home.

Initially, sales were OK, but a backlash soon emerged. The formula was not loved despite the testing. The new logo abandoned decades of script lettering. The media jumped all over the story. Widespread complaints from Coca-Cola’s core customers noted that they liked Coke just the way it was.

The Change to Coke Classic

Coca-Cola did not deny the backlash. In fact, they aggressively moved to un-do their error. Within 77 days it began pulling New Coke and restoring “Coke Classic®.” They came to understand that the brand and its connection with consumers was more important than any formula or test. “There is a twist to this story which will please every humanist and will probably keep Harvard professors puzzled for years,” said the company President and COO at a press conference. “The simple fact is that all the time and money and skill poured into consumer research on the new Coca-Cola could not measure or reveal the deep and abiding emotional attachment to original Coca-Cola felt by so many people.”

And they embraced the decision to revert once it was made.  They didn’t hide from it.  They gave the first case of Coke Classic to one of the most outspoken purists who had formed a group to lobby for the old formula.

In the end, sales rose to numbers higher than before the release of “New Coke,” and the company’s connection with the hearts of its customers was strengthened based on the way the company responded to their outcry so quickly.

The “New Coke” disaster turned out to be the best thing for Coca-Cola. We all make mistakes. How a brand reacts to a mistake is critical. It could spell the end, or it could lead to better brands, a strong connection with customers, and more sales.

Lesson: If a branding mistake is made, recovery is possible. Don’t run and hide from the mistake – correct it and learn from it.

For more on dealing with brand mistakes, see “How to fix a brand after letting customers down” by Anthony Pappas in the Washington Business Journal.

Firm News

Erik M. Pelton & Associates, PLLC recently released a new iPhone® application for intellectual property. The free Apptorney: IP application contains a compilation of web resources in the field of trademark, patent, and copyright. Users of Apptorney: IP can search, file or monitor the status of a trademark or patent, review relevant statutes, and keep up with popular intellectual property blogs. Apptorney:IP contains hundreds of organized links to USPTO pages, patent and trademark search pages, state and international IP resources, and statutes.

“We believe this sets a new bar for lawyer apps on the iPhone. Apptorney: IP is provides a wealth of tools used by IP attorneys every day and will bring IP attorney’s main web tools to a mobile platform,” said creator Erik Pelton. “Apptorney: IP, a free download, provides more utility than many paid legal iPhone® applications.”

Apptorney: IP for the iPhone, iPod, and iPad is available as a free download from Apple’s App Store here.

For more information, see Apptorney trademark application here.

Let us know if you like it, or if you have suggestions to make it even more useful!

Did You Know?

Trademarks are serious business. The USPTO takes in, on average, more than $500,000 in trademark filing fees every single day.


If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2010 Erik M. Pelton & Associates, PLLC.


A recent publication in honor of National Small Business Week [“From Beginners to Bigshots“] featured profiles of several successful small businesses. A common theme among almost all of businesses profiled: great brand names! These brand names are exceptional because they are all “suggestive” meaning they provide a hint of the services or products provided but are not overly descriptive, which would make them weaker and harder to protect as trademarks. In addition, many have creative logos and/or slogans.

For example:

Peas of Mind LLC – healthy frozen food company. [USPTO registration for name.]

MEI Technologies Inc. – Merging Excellence and Innovation – an advanced technology company serving civil, commercial and defense industries. [Two USPTO registrations: name and logo.]

Smooth Moove Senior Relocation Services Inc. – with a great slogan that ties in with the cow logo… “we’ll handle the udder stuff

Breaking Ground Contracting Co. – Green building services. Slogan: “Construction. Redefined.

Asuragen Inc. – biotechnology company. [USPTO registration for name.]

Kwaplah International Inc. – Export services. “Kwaplah” means “all of us” in Liberian.

Lesson: Having a unique, strong, protected and creative brand name provides a business with a better opportunity for success. Sure, some successful companies have bland names, and some creatively named businesses fail, but all things being equal having a memorable and creative name, logo and slogan can provide any business with a leg up on the competition!

Trademark Tip: Avoiding Trademark and Domain Name Scams

When a trademark application is filed with the USPTO, the information – including the owner’s contact information – becomes public record and easily found online. Unfortunately, several companies mine the public data and send out what are essentially scams to trademark owners. These scams are generally letters from official-sounding entities that are not governments and provide no tangible benefit. Their publications and registries sound official to the unknowing and certainly many victims have sent them checks or credit cards believing it was important or even necessary.

If you have any question as to whether a solicitation is legitimate, contact an attorney. If the request does not say “U.S. Patent and Trademark Office” or “U.S.P.T.O.” on it, it is not a part of the trademark application or registration process. To limit contact from these scams, our firm never provides email addresses or phone numbers of our clients when filing with the USPTO.

Here is a list of some of the entities engaged in these practices – none are government agencies and none are required to protect your trademark:

TMI Trademark Info Corporation, in Texas
United States Trademark Protection Agency (USTPA), in Seattle, Washington
Global Edition KFT
Trademark Renewal Service, in Washington, D.C.
Globus Edition S.L., in Palma de Mallorca, Spain
Company for Economic Publications Ltd., in Austria
Institute of Commerce for Industry, Trade, and Commerce, in Switzerland
CPI (Company for Publications and Information) Anstalt, in Liechtenstein
Société pour Publications et Information S.A.R.L., in Vienna, Austria

For more from the International Trademark Association about these scams, see here.

Similarly, domain name WHOIS information is publicly available and domain name scams are becoming increasingly popular. As the owner of domain name, I received an email last week purporting to help me protect my brand name against similar Asian domain names. Anyone who replies to one of these scams is then offered an opportunity to purchase domain names (that they probably have no need for) and is led to believe that if they do not purchase the domains someone else is already signed up to buy them. Yet this scare tactic is merely a scam. If you receive any such email, copy and paste a sentence or two from the email into a search engine and read all about others who have received the scam.

Unfortunately, the public data used for trademark and domain name registration is also used to perform scams. If you receive one and are unsure what to do or whether it is a scam, contact an attorney for guidance.

Trademarks in the News

Last month I had the privilege of attending the Senate Judiciary Committee hearing on “Oversight of the Office of the Intellectual Property Enforcement Coordinator.” In my opinion, the panel and witnesses used scare tactics to ensure that the concerns of the biggest business would be taken seriously.However, the concerns expressed were not necessarily representative of all business that rely upon intellectual property rights. Before taking any action, I hope Congress will invite testimony from a more balanced group of stakeholders.

- Erik in background (far left) at Senate hearing -

The hearing included two parts, a report from Victoria Espinel, the first Intellectual Property Enforcement Coordinator, following by testimony from four industry representatives – Warner Bros., AFL-CIO (represents many unions including several that work in film, television and music), U.S. Chamber of Commerce, and Carlin America (a music publisher).
The focus of greater attention and resources toward to Intellectual Property issues by Congress, by Ms. Espinel’s office, and by businesses is a good thing. But I believe that more priority must be placed on balancing the interests of large companies and owners of intellectual property on one side, and the growing number smaller businesses who rely on trademarks, copyrights and patents as core elements of their success.

For example, a recent Wall Street Journal report on trademark infringement (“Name Choices Spark Lawsuits” here) focuses on the pressure small businesses face in defending – or deciding whether to defend – accusations of trademark infringement. The article wisely notes that many businesses carelessly skip a full clearance search for a brand name prior to using it; such a search preformed and reviewed by an experienced trademark attorney could eliminate many potential claims by advising the business to steer clear of names with potential conflicts.

However, the article and the accompanying audio story from Wall Street Journal radio focus on businesses that spent a lot to defend claims or had to change their names. The article failed to devote much space to two other related outcomes: (1) small businesses that fight back and successfully get the threatening party to back down or agree to a reasonable resolution; and (2) big businesses that overreach in their enforcement efforts, stifle small businesses, and cost businesses with legitimate non-infringing trademarks tens of thousands of dollars defending claims that have little or no merit. This second scenario, in my experience, is becoming more and more common, and big companies attempt to use their financial strength to bring or threaten to bring trademark cases that have little merit because small businesses often cannot afford the time, money and uncertainty of fighting back. There is little or no money available to be had in defending a meritless claim, so a wrongly accused business has to weigh the cost of fighting against the cost and harm done by changing the name.

While theft of intellectual property no doubt costs the economy significantly, abusive over-enforcement of intellectual property also costs Americans jobs, revenue, and opportunities to innovate. I will be working to bring greater attention to this issue.

Firm News

We have represented clients from 48 states (sorry Hawaii and Nebraska) and more than 20 countries abroad!

Did You Know?

Much has been made in the news lately about Lebron James leaving the Cleveland Cavaliers for the Miami Heat. Did you know that the LEBRON trademark is owned by Nike, Inc.!


If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2010 Erik M. Pelton & Associates, PLLC.


Great trademarks are all around us. What makes them great? Here are some of the attributes of an excellent brand and trademark:

unique in the industry
suggestive of the services or products sold
resonates with consumers
easy to remember, easy to find
thought provoking

For some examples, see my slideshow featuring some of my favorite trademarks.

Did You Know?

Pop culture and branding slogans often interact. Well known slogans often become a part of the cultural lexicon. Sometimes part of the pop culture discussion is too good for brand owners to pass on.

A few recent examples:

THERE’S AN APP FOR THAT. Apple has filed to protect the popular phrase. It was first used in an Apple iPhone commercial but has since become a part of the lexicon.

IT’S ON LIKE DONKEY KONG! This phrase references a video game, was first used in a song, and has since entered the general slang. Nintendo filed to register and protect the phrase this month.

GYM TAN LAUNDRY. Phrase popularized by the Jersey Shore reality program. Viacom, which owns MTV, has filed to register the phrase for use on clothing.

YOU’RE FIRED! The company that produced the television show has registered the phrase for clothing and other items.

THREE-PEAT. Pat Riley’s company registered the phrase in connection with clothing in 1989. If the Los Angeles Lakers win another championship this year, he might make a lot of cash. Or have a lot of trademark disputes to deal with.

Trademark Tip:
Top Nine Trademark Application Mistakes

I have often noted the benefits of applying for trademark registration with the U.S. Patent and Trademark Office as it enhances your protection and value for the trademark. However, if you plan to file a trademark application be aware of the following nine ways to make an error that could prevent it from becoming registered or limit its effectiveness even if registered:

Failure to search first. Without first doing a comprehensive search, you do not know whether someone may already be using a similar name for a similar product or service, or whether there is a pending application or registration that could block your application.

Not including the proper logo or wording as the “drawing.” The wording of the proposed trademark and the image of a proposed logo cannot be significantly amended. There are procedural restrictions regarding any such amendment. As a result, errors in the wording or the image can derail an application.

Listing the owner incorrectly. Who owns the trademark and the application? A corporation? An LLC? An individual? A partnership or joint venture? It must be identified correctly or the application could be void.

Not knowing whether the trademark is currently “used in commerce.” U.S. trademark applications can be based on current use in commerce or a bona fide intent to use the trademark for the goods or services identified in the future. Stating that there is a current use in commerce when there is not could affect your rights. And stating that you intend to use the trademark when you are already using it in commerce can mean that your application will take longer and cost you additional government filing fees.

Improper description of goods or services. The scope of the goods or services in the application cannot be expanded after the initial filing is made. In addition, if there is a potential conflict, defining the goods or services with the potential conflict in mind may be significant.

Is the trademark used as a “collective membership” or “certification” mark? Certification marks and collective memberships marks are special types of trademarks that require special applications with additional information and evidence. A certification mark is used by authorized parties to show that goods or services meet certain qualifications and standards. A collective membership mark is used by the members to signal their membership in a group or organization.

Filing with the U.S.P.T.O. TEAS form or its TEAS-Plus form? When using the “TEAS-Plus” form, an applicant saves $50 on the USPTO filing fee per Class, but agrees to certain restrictions. Two significant restrictions are (a) selecting only a description of goods or services which is in the USPTO’s database, and (b) agreeing that all flings for the application will be made electronically or be subject to an additional fee.

Properly signing the application. For an application to be valid it must be properly signed. To be properly signed, the signatory must have the authority and/or title that meet the USPTO guidelines.

Make sure you receive USPTO emails. The USPTO will generally send all correspondence regarding the application, including the filing receipt and any Office Actions, to the email provided in the application. It is critical to make sure that USPTO emails are not blocked by any spam filter and can be received.

Trademarks in the News:

A recent piece in Forbes Woman about the difficult situations business owners who do not properly clear and protect their trademark may face, such as paying lawyers to defend a trademark case that might not be successful, spending money to re-brand, and the obstacles to letting go of the original name and communicating the change to customers. Of course, many allegations of infringement are worth defending. But sometimes, even if the legal defense is fairly strong, defending the case may not be the best business decision.

The article’s author, Kelly Watson, notes an interesting twist on trademark infringement situations that I have often found to be true quite as well:

Surprisingly, many of the people I spoke to who faced potential trademark infringement litigation saw the experience as a blessing in disguise.

“Once I found a new name and rebranded myself, it felt like a breath of fresh air,” Hatcher says. “I felt reborn and recommitted to my business. And of course one of the first things I did was register the business name.”

I, too, felt surprisingly positive about the situation once several months had passed. My new business name was even better than the old, but I would have never rebranded had I not been threatened with a lawsuit. It would have been too much work.

Tip: If the name you have chosen is not distinctive, is not protectable, and does not communicate a message to your potential customers, you may be far better off re-branding with a new better name instead of sinking money into defending the old one.

Firm News

The title of this newsletter, smar(tm)ark® is now a registered trademark, and joins the other registered trademarks used by the firm:

IPELTON® – for ‘On-line journals, namely, blogs featuring information and observations in the fields of law, branding, and intellectual property’

TM4SMALLBIZ.COM® – for ‘Legal services’

– for ‘Legal services’


If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2011 Erik M. Pelton & Associates, PLLC.