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Greetings!

The last few months have been even busier than usual here at Erik M Pelton & Associates. Thanks to exciting clients and new speaking opportunities, there has been little time to stop and reflect on all the activity. Here is a brief re-cap:

We have represented multiple clients this year in appeals of trademark application refusals issued by the USPTO. Here are blog reports discussing two different appeals we won on behalf of clients: WISH YOU WERE HERE and BOVIS FOODS.

I have spoken recently at several conferences and on a panel discussing social medial legal issues. You can see video of the panel’s discussion here and videos featuring some of my other presentations at www.erikpelton.tv.Below is a scanned copy of the registration certificate for the color logo. It has many features packed on to one page:

In 2010, our clients have already received more than 140 U.S. trademark registrations and filed more than 190 applications for U.S. trademark registration with the USPTO.

I was quoted in several publications recently, including this article from AOL Small Business: What Are the Best and Worst Company Logos?

This week, staff from our firm will be attending the American Intellectual Property Law Association’s annual meeting in Washington, D.C. These conferences are great for keeping up with developing areas of the law and even for meeting counsel we have previously squared off against!

We have attended several events at the USPTO already this year. These are great opportunities to learn about changes to the agency’s practices and procedures and to continue building relationships with the USPTO staff.

Mentoring law students: Four law school students, including one from New Hampshire, have interned in our office this year. These internships provide us an opportunity to teach and learn, and to share our experiences in the field of trademarks and managing a small law office with students who are preparing to embark on their careers.

While traveling this year I had the opportunity to visit with clients in Los Angeles, New York, and Boston.

We keep busy because our clients are growing successful businesses who recognize the value of our services. Thank you for your continued success and support!

 

Mark, Erik & Teresa

Did You Know? USPTO Seeks Comments About Trademark “Bullies”

As part of a study mandated by Congress about overreaching trademark enforcement efforts and their effect on small businesses, the USPTO recently issued a request for comment (click link for full details).

I am exploring options for putting together a group or groups of attorneys and businesses to discuss making a collective statement with greater impact. In a nutshell, I believe that there is a lot of bullying and taking advantage of small businesses by those with deep pockets. And the system almost encourages this behavior and certainly does not discourage it. This trademark bullying affects and stifles innovation, intellectual property development, jobs, and the economy. While infringement and counterfeiting hurt the economy, so does the over-enforcement of trademarks.

If you have your own story about trademark bullying or are interested in discussing or joining such a statement, please send me an email.

Trademark Tip:
Anatomy of a Registration

On behalf of the City of Falls Church Economic Development Authority, we recently obtained three trademark registrations for their marketing and promotional slogan, “The Little City” (developed by the wonderful talent at SmithGifford). Why three different registrations? And what do the different parts of the registrations mean?

Let’s examine them:

THE LITTLE CITY – Registration No. 3856394

– Registration No. 3856465
- Registration No. 3856409


Protecting the wording THE LITTLE CITY in all capital letters (called a “standard character mark”) protects the wording/lettering itself in all variations. In other words, the protection has no design, color, font or size associated with it and as a result any design, color, font, or size of the wording will be protected in the registered trademark.

The logo in black and white protects the design, which includes the words, and makes no claim as to color; the design can be presented in, or protected for, any color combination or black and white.

The logo in color protects the design including the text and the colors detailed in it. Generally, a black and white design is sufficient and provides the registrant with maximum flexibility in case it uses multiple colors or could change color usage in the future. The colors should be protected, however, when the colors are significant. Here, the colors are significant because (a) of the distinctive and creative use of multiple colors, and (b) they are aligned with a color palette and theme used by the City in other logos, including that of the school district.

Below is a scanned copy of the registration certificate for the color logo. It has many features packed on to one page:

Trademark Registration Certificate

The top middle shows the protected design.

The registration number is listed below the image, along with the registration date and the name and address of the registrant.

The services (or goods) for which the trademark is registered are listed. Having a comprehensive but accurate description of services is key to having strong and valid trademark protection.

On the left side the certificate notes that it is for the “Principal Register.” Some weaker trademarks can only be registered on the “Supplemental Register” which provides some, but not all, of the benefits of registration on the Principal register.

A disclaimer of the word “CITY” is noted since the word is descriptive of the registrant’s services. A disclaimer of wording means that the registrant does not claim exclusive rights to the ‘disclaimed’ term(s). Generally a disclaimer is needed when words are commonly used in the relevant industry.

Descriptions of the colors claimed and of the design of the logo are provided. These descriptions are necessary for logo filings because the one way to search designs by others for possible conflicts is based on the descriptions or based on a coding system provided.

Other administrative details including the application’s serial number and the USPTO attorney who reviewed the file are provided.

On the bottom left, a nice seal from the agency and the Director’s signature are provided.

Overall, the USPTO certificate contains a variety of elements which are important to the scope of the rights granted by the registration. It demonstrates why the application process should not be taken lightly: there are many opportunities to make errors which could prevent registration or allow registration but limit the rights granted by it.

Upon completing the registration process, a framed registration certificate is a beautiful way to display your businesses’ trademark asset in your offices!

Trademarks in the News:

Was the “New” GAP Logo the Worst Marketing Failure Since New Coke?

Social media has grown rapidly in size, scope, and impact over the last few years. But just recently it seems to have reached a tipping point; businesses must address and deal with social media or else. Maybe the timing has to do with the movie “The Social Network” which is exposing social media to a new audience. Maybe it is the sheer number of users. Maybe it is related to the fall of the traditional newspaper – surely due in part to the rise of social media – and the fact that more news stories are generated by, first reported on, and widely discussed via social media networks.

Earlier this month, the GAP unveiled a new logo design to update its logo of more than 20 years:

A website was launched within hours that poked fun and allowed visitors to make their own versions. It was called “Crap Yourself Logo” and quickly got thousands of “likes” on Facebook. Other groups formed on Facebook to allow users to express their dislike of the logo, and they gained thousands of followers within a day or two. Within a week, Gap announced that it would scrap the new logo. Apparently, Gap did not communicate well with fans about the release of the new logo and its background.

From a branding perspective, I’m not sure why Gap wanted a new logo in the first place. Gap’s history and its loyalty from consumers is powerful (as the logo fiasco demonstrates). When a company decides to re-brand and try to communicate a new message to consumers, it must be careful not to alienate the customers it already has.

Despite the mistake in the effort to re-brand, Gap did the right thing by reacting quickly to revert to the old logo. See their press release here. [Some cynics claim the whole thing could have been planned - look at all the publicity Gap got from it!]

Lesson: The GAP Logo story shows the power of social media. Ignore it as a business owner, and the next lesson may be yours. If you do not have a social media strategy, your competition is gaining on you daily. If you don’t get a grip on the power of social media – and the legal issues it creates – it may get a grip on you.

Firm News

I have been asked several times recently to present on the topic of social media legal issues. Here is a short list of a few social media risks that businesses may be exposed to:

· Content contradicts company policy;
· Employee embarrasses company;
· Used to violate someone else’s intellectual property;
· Used as evidence in a future legal case;
· Used improperly in employment decisions;
· Leak of confidential information;
· Misuses company’s intellectual property; or
· Unclear if source is personal or company

For more about these risks, see video from my discussion on the topic: Social Media, Trademarks, and Brand Protection, or listen to my audio interview: What Employers Need To Know About Intellectual Property and Social Media.

Suggestions

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.
ALL RIGHTS RESERVED.

Greetings!

A trademark can be anything that identifies one brand from its competition. Of course, words and images are the most common types of trademarks, but sounds, smells, textures and other unique marketing tools can be trademarks too. For example:

Sound:
The “sound of an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound” is registered for toy swords. Yes, that is the sound of a Lightsaber(R).
The sound of a human voice yodeling “YAHOO” is registered.
The sound of the spoken word “Expedia” followed by the words “dot com” sung by multiple voices, with each of the two words “dot” and “com” sung in harmony on the notes “G”, “B”, “D” and “G” is also registered.

Smell:
A “peppermint scent or fragrance” is registered for office supplies.
A “cherry scent” is registered for synthetic lubricants for high performance racing and recreational vehicles.

Texture:
A “velvet textured covering on the surface of a bottle of wine” is registered, as is a leather textured covering.

Packaging: Many packaging shapes are registered.
One of the the most well known trademarks around the world is the shape of a Coca-Cola bottle.
For more examples of product packaging shapes that are registered, see my old blog post.

Other:
Even “goats on a roof of grass” for promotion of restaurant services are protectable and registered with the USPTO! Last week, the Wall Street Journal featured a front page article about the success of the goats on the roof.
Peabody Hotels owns a registered trademark for “the live visual and motion elements of the The Peabody Duck March… The motion elements include the red carpet being rolled out, the appearance of the ducks and uniformed Duckmaster at the elevator door, and the march of the ducks down the red carpet, up the steps, and into the fountain where they begin swimming.”

What makes your branding unique? Words, logos, slogans, packages, and more can function as valuable trademarks. They are key for differentiating a business from its competition and significant assets to businesses.

Trademark Tip

Four basic steps will help your business obtain strong trademark and copyright protection.

+ Identify – What do I have that is intellectual property?
+ Notify – Provide proper trademark and copyright notices often and prominently.
+ Register – Register the most important and valuable intellectual property assets.
+ Contracts – Ensure that intellectual property rights are covered in contracts with employees, independent contractors, partners, manufacturers, distributors, etc.

While there are other elements to strong trademarks (monitoring and enforcement, for example), these four steps can be done by anyone to create a solid foundation for your intellectual property without too much investment. Identify, Notify, Register, and protect in Contracts. For a more detailed discussion of these issues, see my videos at www.erikpelton.tv

Trademarks in the News

Facebook Inc. has made a lot of news lately, even trademark news! Facebook recently filed more than 10 applications with the USPTO to register its “Like” button and the word LIKE.

Facebook "Like" button

 

The applications have all been denied initially due to conflicts or potential conflicts. Following a “letter of protest” filed by TiVo, the button has been refused registration. (TiVo owns registrations for use of the ‘thumbs up‘ and ‘thumbs down‘ symbols.)

TiVo button

 

In addition, applications filed earlier for ILIKE which cover, among other things “Internet based introduction and social networking services” and an application and registration for LIKE, owned by Like.com, block many of the Facebook applications.

Has Facebook overreached in this attempt? I certainly support protecting a wide variety and extensive amount of intellectual property to add value and stop others from infringing it. But even if Facebook were somehow able to obtain a trademark registration for LIKE or the Like button, it would – in my opinion – be virtually impossible to enforce. LIKE is common word, likely used by many websites (and many people) to note something with approval. And ‘thumbs up’ is also very common way to express one’s approval of something. The Facebook “LIKE” effort smells a little like Subway’s efforts to register the word footlong.

If LIKE is not generic, does it function as a trademark to identify the source of the services? My instinct is that it actually does function – that the combination of the button, the image, the color and the text create enough of a mark that when users see it on a website, if they are familiar with Facebook, know what clicking the button will do, namely lead to a connection with Facebook software to tell others that they recommend the page or post. If the LIKE button is not generic, perhaps it has acquired distinctiveness as a mark? If it is approved by the USPTO, perhaps competitors will oppose it in order to ensure that they will be permitted to use the word “like” when allowing users to make referrals.

Adding further interest to Facebook’s efforts to protect LIKE is the fact that Google last week acquired Like.com. For additional coverage and irogny, see the news story here, which has a Facebook “Like” button on it and another story features PCWorld.com’s thumbs up and down buttons.

Bottom line: In the end I think Facebook likely could register the LIKE button design upon showing acquired distinctiveness – only if it first overcomes the confusion issues, perhaps with consent agreements. But I think the word LIKE itself is generic and/or fails to function as a trademark. Ultimately, any registration received for the word LIKE or the button will be very difficult to enforce and may be opposed by competitors trying to ensure that Facebook will not try to muffle their use of the word “LIKE” or the ‘thumbs up’ symbol.

Irony: You can “like” our Facebook page here!

Firm News

I had the pleasure last week to participate in a lively panel discussion at Harrisburg University of Science and Technology’s Social Medial Summit in front of a sold out audience at the school’s beautiful facilities.

The panel, called Twittervention: Social Media & Legal Issues for Employers, Educators & Parents covered many legal issues for users, businesses, employees and employers.
Click here for the video (panel discussion begins at the 18 minute mark)

Did You Know?

Nissan’s LEAF electric car will be available in the next few months. Expect a lot of publicity and media coverage. I previously blogged here about the Chevy VOLT, which will also be coming to market soon. I like the VOLT name; it is suggestive of the electric function, and sounds fast and strong, which are excellent qualities for a car.

Automobile names are a huge part of any car’s marketing and certainly much time and money is spent developing these brand names. Names such as Mustang, Explorer, Xterra, Continental, Odyssey, Thunderbird, Outback, Viper and Corvette help form the image the marketers seek to create surrounding the car. Ideally, the brand names communicate ideas about the product that resonate with consumers.

So, what about LEAF? LEAF is certainly suggestive of nature and the environment, and for that reason the name is great. LEAF is also clean and quick sounding. I can foresee ad imagery featuring leaves falling and floating, or leaves changing colors or buds growing. The one shortfall for LEAF is that it does not convey anything about how the car performs or drives, and that may be the trickiest part of the marketing campaign – What will an electric car feel like? How fast will it accelerate?

Cars are no longer just about muscle or speed or luxury, and LEAF captures what the car is all about. In short, I love the name.

Nissan’s LEAF U.S. trademark application is here. Nissan has also applied to register the logo for “Zero Emission” which is part of the LEAF marketing campaign.

Lesson: Suggestive names are very powerful. They are strong and protectable trademarks that communicate a message to the consumer about the product or service.

Extra: There are some great lines in the recent Wall Street Journal review of the LEAF by Dan Neil. Choice excerpts:

“To spend time in the Leaf is to appreciate how vivid and sensual a conventional automobile is, with its furious cylinder detonations, spinning cams, fisted gear-packs and lashing steel driveline. Compared with the Leaf, driving a Ferrari is like ingesting mescaline.”
The headlamps “emerge like huge watery blisters from the front fenders. These headlamp casements are designed to channel streaming air away from the side mirrors, to reduce aero drag and wind noise. But still, yikes. Dogs won’t chase this thing.”

Suggestions

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.
ALL RIGHTS RESERVED.

Greetings!

If you enjoy our newsletter or our work, a referral is the greatest gratitude you can provide us. We continually strive to reach as many businesses and entrepreneurs as possible to provide them the benefits of trademark protection and flat fee services.

If you are a member of an organization that would benefit from a presentation about brands and intellectual property protection, we would love to hear about it as so we can continue to educate the business community about the value of trademark and copyright protection.

You can also spread the word by becoming a fan on facebook, subscribing to our YouTube channel at erikpelton.tv, or forwarding this newsletter. Thanks in advance!

Trademark Tip: 5 Free Ways to Monitor Your Trademark

To maintain and increase protection of a trademark, the owner must guard against unauthorized use or infringement. Generally, the sooner such a situation is discovered the easier it is to resolve, and the less impact it will impose upon the trademark owner. Conversely, the more money an infringer or cybersquatter has invested into his or her business, name, or website, the more likely her or she is to put up a fight against a claim of infringement. Doing nothing about a known infringement situation for a long period of time can lead to laches, a legal theory that could prevent you from later enforcing any rights you may have once had. On the other hand, evidence that you have vigorously pursued infringements can be used as evidence in future trademark disputes to demonstrate the strength of your trademark.

As a result, consistent monitoring of a business’ trademarks has great value because quickly finding and addressing infringements costs less and generally strengthens your mark.

Here are 5 free resources for monitoring your brands:

Google Alerts: Google will grab items from all over the web – including news, blogs, and websites – and will then email you results matching your trademark. You can be alerted daily, weekly, or “as it happens.” This is a wonderful resource. If you have a name with multiple words, consider using quotes. Also consider creating several alerts with variations of your trademark(s) in spelling and spacing (and singular vs. plural).

Scour the web: Search a variety of websites for variations of your trademarks. Set a “reminder” in your task or calendar program to do this monthly. A great website for searching multiple search engines is Window1.

Industry search: Make a bookmark list of several main online resources in your industry. News sites, publications, blogs, etc. – any site with comprehensive and popular coverage of the relevant industry. Search on those main sites for your trademarks quarterly.

USPTO: The USPTO records of registered and pending trademarks can be searched for free. Check quarterly for any new applications that might be infringements of your trademarks. Consider variations in spelling, sound and spacing in your searching to capture names which may not be identical but very similar.

Username search: Check for usernames containing your trademarks that are registered and used on the major social media and other websites. A free search of 400 social media websites is available from KnowEm.

Tip:Once you learn of a possible infringement, unauthorized use, or cybersquatting, consult an attorney for options to address the matter.

Trademarks in the News

Here are a few recent interesting trademark situations in the news that underscore the importance of having good advice before filing a trademark application or sending an infringement demand letter:

Subway is attempting to own exclusive rights to the FOOTLONG name for sandwiches. They even sent a cease and desist letter to “Coney Island Drive Inn, a restaurant in Brooksville, Florida, that has been selling 12-inch hot dogs for more than 40 years and calling ‘footlongs.’ Listen to NPR story for more; also see my blog post about about Subway’s efforts.

The FBI (yes, that FBI), recently sent a cease and desist letter to Wikipedia regarding its use of the FBI logo in reference materials about the FBI. Story here. FBI counsel’s letter here; response here. Wikipedia page here (no doubt the page has receive far more traffic since this incident was reported than it would have otherwise over the next 10 years combined). The FBI claimed that Wikipedia was violating a federal statute, but their letter selectively quoted from that statute and (in my opinion) misconstrued its meaning.

The National Pork Board’s attorneys sent a cease and desist letter to a website regarding an April Fools Day advertisement for a fake product: canned Unicorn meat, “the new white meat.” The lawyers apparently didn’t realize it was fake, having not studied the website nor the general lack of “unicorn meat.”

Nicole Polizzi, better known as “Snooki” of Jersey Shore fame, was denied in her attempt to register the Snooki name for books due to a likelihood of confusion with the registered trademark for series of children’s books called “Adventures of Snooky.” As expected, the media has not quite reported accurately. Many stories question whether she will “Appeal” the decision when in fact she automatically has the right to file a response to the initial letter from the USPTO. Also, the refusal only applies to registration of her trademark for books; it will not block her application to register Snooki for “Entertainment in the nature of personal appearances by a television personality,” and it may not prevent her from using the trademark for a book.

Firm News

The last six months have provided a record number of oral arguments by our firm at the Trademark Trial and Appeal Board in such a span – four. These arguments are the last chance to make the client’s case in an appeal or dispute and are an excellent opportunity to have a dialogue with the panel of judges in each case and address their questions. Oral arguments also provide an opportunity for the judges to get to know us, the quality of work we do, and the vigor with which we represent each client’s case.

Did You Know?

In the first 7 months of 2010 164,217 trademark applications were filed at the USPTO? During the same period in 2009 155,385 applications were filed. Another sign that the economy is growing and improving!

Suggestions

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.
ALL RIGHTS RESERVED.

Greetings!

2010 has been a year of great activity here at the offices of Erik M. Pelton & Associates. Our clients received more than 175 trademark registrations and filed more than 210 new trademark applications. We take immense pride in the fact that over the last ten years the firm has registered more than 1,400 trademarks!

During the course of the past year, Erik spoke to a variety of audiences about trademarks, branding, and social media. We posted numerous videos to YouTube® and dozens of entries on the IPelton® blog. In May, we launched Apptorney, an iPhone® application providing a variety of trademark and patent resources. We mentored interns from several law schools, attended a variety of meetings and events with USPTO officials, and appeared on behalf of clients before the Trademark Trial and Appeal Board on multiple occasions.

Our most gratifying moments, however, came working with clients. We visited clients in several states while attending or speaking at conferences; we welcomed the return of many former clients protecting new brand names and working on new projects; and we were repeatedly honored by those who referred us to their colleagues and friends. Such referrals are the biggest complements we can receive!

We wish each of you continued success in 2011!

Trademark Tip:
Top Trademark Trends in 2010

In 2010, many of the biggest news stories touched on the world of trademarks in some manner. Facebook and Apple were active taking steps to register and protect a variety of trademarks. But the most notable trademark story of 2010 was the release and subsequent retraction of a new GAP® logo. Here are the most significant trends in trademarks for 2010:

1.      New logos. Many companies unveiled new logos in 2010, including Aol., Hertz, Comedy Central, iTunes, MySpace, MTV, and Kayak. Few of them were enthusiastically embraced and several bombed, such as the GAP.

Customer reaction to the new GAP logo was very strong and fueled by Facebook pages, twitter posts, and websites. Within days, GAP cancelled plans to use the new logo and filed to abandon its application with the USPTO. The GAP incident reflects the strong bond that consumers and brands enjoy and the significance of a good trademark that resonates with customers. Companies looking to re-brand in 2011 should heed this message and evaluate whether a new logo is really the best way to do so.

2.      iPhone Apps. Names and logos for mobile software applications are increasingly a battleground for trademarks and brands. Apple recently registered many of the icons for its programs on the iPhone. And in 2010 several companies fought over app names and listings in Apple’s app store; this trend is likely to increase in 2011.

3.      Facebook. As Facebook continues to grow, so does the reach of its trademarks. In 2010, Facebook went after “Teachbook” and “Faceporn” and was preemptively sued by “Lamebook”. In addition to trying to stop those it believes are infringing or diluting the Facebook brand, Facebook filed a slew of US trademark applications in 2010 to protect terms including “Like” and “Face.”

4.      Reality TV Stars. Reality TV stars realize that trademark registration helps maximize the value of their brands. Snooki and The Situation each filed for trademark registration in 2010, and Kim Kardashian filed four trademark applications in 2010 for her brands.

5.      Social Media. Proper usage of brands and logos on social media websites is more important now that customers expect every major brand to have a social media presence. Companies that do not set up and use social media websites to promote their brands may find fans or competitors misusing their names. For example, the NFL Players Association, in anticipation of a possible lockout next year, set up a website at nfllockout.com. But someone already owned the Twitter handle ‘nfllockout’. After a formal complaint to twitter, the NFLPA was able to obtain control of the Twitter account. Similarly, the ‘gaplogo’ Twitter account is controlled by someone mocking the GAP.

6.      Trademark Scams. Trademark owners are increasingly targets for a variety of scams. Worthless foreign or business ‘registers’ and ‘directories’ continue preying on owners of registered trademarks, as do a variety of domain name scams, particularly for the .cn, .hk, and .asia extensions. Trademark owners should carefully examine all solicitations regarding their trademarks and ignore those for meaningless publications.

7.      BP. The Gulf oil leak was a major news story in 2010. The BP brand has weathered the  storm fairly well due to good advertising and a strong brand. Ironically, the BP logo is very green and natural, evoking thoughts of the sun, flowers, growth, youth, and cleanliness.

8.      Stories in the News: The Tea Party & WikiLeaks. Just as the ‘tea party’ movement was prevalent in the headlines in 2010, the name was also quite active in the world of trademarks. More than 30 U.S. Patent and Trademark Office (“USPTO”) applications in 2010 contain  ‘TEA’ and ‘PARTY’. Although WikiLeaks, another newsmaker in 2010, is not a registered U.S. trademark, in 2010 more than 20 applications were submitted to the USPTO containing “WIKI”, including WIKISOAP, WIKIGAME, WIKISHOE, WIKIPAD and WIKITUBE.

9.      ‘Bullies’ study. As part of a bill passed by Congress in 2010, the USPTO is conducting a study about overreaching trademark enforcement efforts and their effect on small businesses. The USPTO has issued a request for comments and has said that it will hold public discussions on the issue in early 2011. More details at http://bit.ly/tmbulliesstudy

10.  Trademark filings increase. As the economy rebounds from a recession, trademark filings at the USPTO are increasing, yet they remain below pre-recession levels. Through November, more than 256,000 U.S. trademark applications were filed, an increase of about 4% compared with the first 11 months of 2009.

What to watch for in 2011:Social media and iPhone® applications will continue to be hot areas for brand development and trademarks. Look for companies to be more cautious about launching new logos on the heels of The GAP’s disaster. As the economy continues to rebound, look for successful businesses to realize the role growing intellectual property plays in their success and the value of the business, and look for trademark filings in 2011 to increase another 5% to 10%. Celebrity trademark stories will continue in 2011 as reality stars, professional athletes, and entertainers continue protecting their brands. Finally, look for Facebook to continue expanding the reach of its brands and trademarks, but don’t be surprised if a public backlash disapproving of the company’s overreaching efforts to control words such as ‘face’, ‘wall’ and ‘like’ cause force Facebook to take a less aggressive approach to its trademarks.

Trademarks in the News:
297! Who owns the right to profit from Brett Favre’s Streak?
Apparently the Minnesota Vikings believe that they own the right to profit from the streak – or at least from the marketable number it created – 297. On Monday evening last week, while Brett Favre watched his team play from the sidelines for the first time in 298 regular season games, attorneys for the Vikings were filing three US trademark applications based on a bona fide intent to use the following marks (click links for USPTO records):

297 (Application Serial No. 85196936, filed at 9:11 EST)
FAVRELOUS STREAK 297 (Application Serial No. 85196942, filed at 9:20 EST)
FAVRELOUS 297 (Application Serial No. 85196955, filed at 9:49 EST)

Each application was filed for use in connection with:

Entertainment services, namely, presentations in the nature of professional football games and exhibitions ; Beverage glassware, cups, mugs, bottle openers, foam drink holders, insulated sleeve holders for beverage cans, neoprene zippered bottle holders, ice buckets and beer buckets; Men’s, women’s and children’s clothing, namely, fleece tops and bottoms, caps, visors, headwear, t-shirts, sweatshirts, shorts, tank tops, sweaters, pants, jackets, turtlenecks, golf shirts, woven shirts, knit shirts, jerseys, wristbands, warm up suits, swimwear, wind resistant jackets, raincoats, parkas, ponchos, gloves, ties, suspenders, belts, cloth baby bibs, sleepwear, namely, robes, night shirts and pajamas, mittens, knit hats and caps, scarves, aprons, headbands, ear muffs, underwear, socks, shoes, athletic shoes, boots, sneakers and slippers

Perhaps this is why the Vikings were willing to give Favre millions of dollars to play this season – so they could sell baby bibs with “297” across them!

The USPTO filings raise a few questions:

1) Absent some kind of agreement, who should be able to profit from selling products featuring the number 297?
-Favre?
-the Vikings?
-the NFL?
-the NFL Players Association?
-anyone who wants to?

2) In order to qualify for registration of a trademark on the Principal Register, a mark must indicate the source of the goods or services and not be merely ornamental. Will bottle openers featuring “Favrelous 297″ on them indicate that Minnesota Vikings Football, LLC is the source of the products?

3) Will the Vikings try to stop others from making or selling shirts that use the number 297 on them in connection with Favre, football, or the color purple? Just a guess, but I think they will try.

The official Vikings merchandise website is already featuring a FAVRE 297 SALE! Note that at this time, they are not using a TM or SM next to 297 to indicate any claim of trademark rights.

Related Blog Post: Sports stars and their trademark slogans

Did You Know?

There are more than 1.6 million trademarks currently registered with the U.S. Patent and Trademark Office!
Our iPhone app – Apptorney – has been downloaded more than 1,000 times! Check it out at www.apptorney.com
Some interesting U.S. trademark registrations:
YOGI BEAR http://ow.ly/3oEjd
Levi’s pocket stitching design http://ow.ly/3hfya
JOHN LENNON registered for eyewear. Owned by Yoko Ono. http://ow.ly/3lMTX
JETER logo by Nike http://ow.ly/3kk9m
Zagat protection for burgundy cover on books http://ow.ly/39x1W
SWOOSH (the word, not the shape) from Nike. http://ow.ly/34KQk
TEAM COCO pending application.http://ow.ly/34KEY
Hershey Kiss shape, used since 1907.http://ow.ly/2ZhzO

Firm News

We will be hosting our first FREE teleconference, “10 Essential Trademark Tips” on Tuesday January 25th at 12 PM E.S.T.

Mark you calendars now – we will send dial in instructions in next month’s newsletter.

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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.
ALL RIGHTS RESERVED.

Greetings!

Earlier this month, Millward Brown released its 2011 BrandZ study of the most valuable global brands is out. There are several common trademark themes among the most valuable brands in the world:

- Distinctive names and much more prevalent than descriptive names. The only name that is “descriptive” in the top 10 is “China Mobile”.  A great majority of them are made up terms or completely arbitrary, like Verizon, Amazon, Microsoft, Apple, and Walmart.

- Great logos. Many of the names are accompanied by very distinctive, memorable logos.

- Intellectual property. At least half of the businesses are built on intellectual property, whether they be software code, search algorithms, trade secrets, or patents. See for example: Apple, Google, IBM, Microsoft, GE, Amazon, and others.

- Cross-platform brands. Many of top brands sell a variety of different – but related – things. [Apple: phones/computers/software. Verizon: internet/cable/cellphone. UPS: shipping/logistics.] And their brand names and logos reflect this flexibility by being absent of descriptive or limiting wording.

- Starbucks is missing from the list. But I think one day it may be among the brand leaders. And their change in logo earlier this year to allow it to become more of a “cross-platform” provider is to allow the Starbucks brand to become about more than coffee.  [See my earlier blog post about the logo change here.]

You can review the full BrandZ report here.

Did You Know?

Last month, the Department of Commerce (of which the USPTO is a part) released its long anticipated study on trademark litigation tactics. In short, the Trademark Litigation Study essentially says: We conducted a thorough study and there is no problem; and if there were a problem, no significant changes would be needed. Hakuna Matata! In my opinion, the study’s method and analysis are both critically flawed. The study was, by law, to focus on the experiences of small businesses (the request for comments uses the phrase more than 10 times and the statute creating the study directs it to cover “the extent to which small businesses may be harmed by litigation tactics”). Yet very little attention was given to gathering and considering their perspectives.

The study says it is the result of “significant outreach to stakeholders and small businesses.” I beg to differ. There was little promotion of the request. There was a lack of real outreach directed to small business groups and organizations and relevant agencies like the Small Business Administration (SBA). The Study touts a single USPTO roundtable, but it was barely publicized, was put together on short notice, was held in only Detroit, was a small part of a larger program, and did not (to my knowledge) include any specific input from small businesses.

Of the comments submitted, the Study spends equal time on (and seemingly equal weight to) the comments from four groups of attorneys compared to the other 75 commenters. As I told Managing Intellectual Property a few days ago, It’s sort of like asking the football team at the high school whether or not there’s a bullying problem.”

The study makes three recommendations, to (1) urge pro bono efforts from private sector, (2) urge more CLE (continuing legal education) programs on trademark litigation issues for attorneys, and (3) enhance outreach from several government agencies. The first two suggestions are to have the lawyers (the commenters who said there is no real problem) do some small outreach and education on their own. This is a stunning result of the Study because the proposals are so weak. They are, at best, the tip of the iceberg at best and should be among a list of much more significant proposals. I refuse to believe that the two most significant things we can recommend are for the people who said there is no problem to do something about it.

While I think the Study is weak and mistaken in much of its analysis, the trademark and small business public is partially to blame for failing in general to submit comments or to publicize the issues. Perhaps a larger public outcry would have necessitated a different result. The Study should have included greater outreach and should have given greater weight to all of the commenters who took the time to respond.

Is this Study the best that can be done on this issue? In my opinion the Study falls woefully short of a thorough review of the issues and the possibilities of making the system better. I have written to Congress urging public hearings on the issues and the Study. I hope you will do the same. Note that the USPTO has yet to release any of the comments, but I have obtained some of them via a FOIA request. I have published them here.

Trademark Tip: How to Launch a Slogan

Our firm recently launched a slogan:

Experience is our trademark. Trademark is our experience.

Since we constantly work with clients to launch new product names, brands, logos and slogans, it is always a good exercise for us to experience the same process. We already own and use several trademarks: tm4smallbiz.com®; our firm logo; smar(tm)ark® – our firm newsletter; IPELTON® blog title; and Apptorney®, our iPhone application.

Here are the steps we took in creating, launching and protecting our new slogan:

- We decided that adding a slogan to our marketing materials which communicated something about our services would be a nice addition to the materials.

- We decided on the the message we wanted to communicate. With more than 10 years in business,  over 1,000 trademark registrations obtained for clients,  and my experience as a former USPTO trademark examiner, we decided that communicating our experience was important. We also wanted to communicate that trademark is our focus and the overwhelming majority of what we do. We don’t dabble in trademarks. We live and breathe trademarks every single day.

- We brainstormed possible slogan ideas that touched on the message. Ultimately, we settled on the slogan Experience is our trademark. Trademark is our experience.SM   The slogan excited us because in addition to communicating the message we sought,  it has rhythm and symmetry.

-  We searched to make sure no one was using a similar slogan in our field, and we searched theUSPTO trademark records to make sure no one had registered or filed for anything similar.

- We incorporated the logo into our new press kit (below) and some other materials to begin using it.

- We made sure to use proper trademark notice as we began using the slogan – using ‘SM’ on the right shoulder and bold or italics when using it amongst other text to make it stand out.

- We filed to register the slogan with the USPTO and received application Serial No. 85190938.

- We began to use the slogan even more. For example, we recently ordered new letterhead and placed the slogan on it.

Trademarks in the News: TRUMP Brand


I recently blogged about the TRUMP brand and its power (see DONALD TRUMP: a rich trademark portfolio here). I noted that the TRUMP brand has been extended well beyond real estate and that the TRUMP brand is quite valuable. Now it seems that some of the ventures attached to the TRUMP brand have run into problems. And they are getting sued. And so is “the Donald.”

New York Times: Buying a Trump Property, or So They Thought

Legally, the primary issue in these cases appears to be how insulated Mr. Trump is from any lawsuits and damages related to ventures where he licensed the Trump brand. My guess is that Mr. Trump and his experienced attorneys placed language in each license agreement that sufficiently distances his fortunes from the venture and protects him in exactly these types of cases. A license agreement can take many shapes and forms. It is principally permission to use a brand name for certain purposes (for a fee of course). But generally the brand name owner is not involved in running the business and does not accept the liability for problems.

Designer brands often license their names to extend their product lines. I don’t think that Porsche makes sunglasses. Disney probably does not make paints. Rather, they license their brand to a sunglasses manufacturer. But if the manufacturer backs out of a contract or make poor quality products, in general the licensor (in this example, Porsche) is not going to be liable. The licensor essentially reaps all the rewards ($$) with little or none of the risk.  That is why licensing is often very profitable. Other than building and golf courses, it is likely that just about everything associated with Trump brand is done under license. Fragrances? Alcoholic beverages? Clothing? Why get involved in making them if you can license them. Of course, the tricky thing about licensing is to protect the brand’s quality and image – which is exactly the problem these lawsuits are now creating for Trump.

It will be interesting to see if these lawsuits damage the Trump brand and affect any future licensing (or political?) ventures.

Firm News

The number of U.S. trademark registrations received our clients recently topped 1,500!  Thank you to all of our clients over the last 11 years – without you it would not be possible. Teaming with clients from such diverse businesses is one of our favorite parts of what we do. In 11 years we have worked with more industries than we could ever have imagined – software, social networking, school lunch catering, human resources outsourcing, drift racing, paintball, food safety training, personal organizers, golf tournaments, music production and performances, drive through cafes, skin care, medical supplies, beer, wine and grapes, apparel, online voting, background screening, staffing, forensics, fashion, and so many more!

Recent IPelton blog posts

Here are some popular recent blog posts from our blog at http://IPelton.wordpress.com:

Fun trademarks from San Francisco
This week I am at the annual conference of the International Trademark Association in San Francisco. These meetings are always a whirlwind of educational opportunities, networking opportunities, and meeting clients face-to-face (often for the first time!). Of course, San Francisco is a great city with tons of culture, history and sights to see. Read More »

More comments to USPTO regarding Trademark Litigation Tactics obtained via FOIA request
I recently obtained additional from the USPTO in response to a FOIA request regarding the 2011 Trademark Litigation Tactics request for comments. These comments include several companies including Intel, several individuals, several attorneys, and several organizations. Read More»

Another case study in trademark mismanagement: Google Chrome
Google this week unveiled a plan to sell and rent laptops. Sound like a great idea in my opinion as it promotes their browser/OS and promotes their vision of a cloud based world with little if anything stored on the user’s computer. Read More »

Should you file a trademark application by yourself?
I get asked all the time: “Can I file a trademark application by myself?” The simple answer is yes.  No attorney is necessary. But just because you can does not mean that you should. Read More »

Suggestions

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.
ALL RIGHTS RESERVED.