Greetings!

It has been a very busy month since our last newsletter. Some highlights:
- We received USPTO records via a Freedom of Information Act request regarding comments submitted to the agency about abusive trademark litigation tactics;
- Our office wrote and sent a letter to Senator Patrick Leahy, Chair of the Senate Judiciary Committee, requesting hearings on the trademark litigation tactics issue;
- Erik participated in a panel discussion with Commissioner of Trademarks Deborah Cohn at the ABA’s 26th Annual Intellectual Property Conference (see below);
- We hosted a teleseminar on ‘Choosing a Trademark’; and
- The City of Falls Chruch, where our office is located, unveiled new parking signs featuring “The Little City” logo, which we registered for the City:

photo (C) 2011 Falls Church News Press

Did You Know?

Can you guess what are the most popular words in trademark applications filed thus far in 2011? There is no official list published anywhere, so a little guesswork is required. Through the end of March, approximately 69,000 trademark applications have been filed with the USPTO. Which words are are hot in 2011? Social network services? Green products and services? The ‘cloud’?

Here are some of the most popular terms in 2011:

- SOCIAL : 168 applications
- NETWORK : 270 applications
- BOOK :145 applications
- CLOUD :149 applications
- ECO : 219 applications
- GREEN :402 applications
- ORGANIC :91 applications
- MOBILE : 175 applications
- TIGER :36 applications
- WINNING : 26 applications (duh!)

Trademark Tip: One letter can say it all

Just about anything that helps distinguish a brand from competitors can function as a trademark – a name, a logo, a slogan, or even a color, a sound, or a shape. Brands can be so powerful that sometimes all it takes is a single letter to identify a product or service.

Can you identify the product or service that goes with each of these one letter logos?

Trademarks in the News:

5 Years of Twitter – A case of Mismanaged Trademarks

Twitter turned 5 years old this week. It is amazing how technologies penetrate our daily lives and how news is now created by, on, and with Twitter all the time now; many use the service to follow breaking news. You can follow my twitter feed (generally a daily link to an interesting trademark registration or dispute) at @tm4smallbiz.

Twitter presents a good case study regarding the value and benefits of some foresight in protecting trademarks. The service – and the brand – are worth billions of dollars now.

- Step 1: Choose a distinctive and creative name. Twitter certainly succeeded in this step as the word “twitter” has no meaning relevant to computing. But perhaps the meaning of the name is too remote – it does not really “suggest” any relevant meaning either (to me at least). In my opinion, a suggestive name is the best kind.

- Step 2: File to register brand name, logo, and other key trademarks. Here is where Twitter failed initially. The application to register the TWITTER name was not filed until April 26, 2007 – more than 1 year after the service was launched.

An application for the “t” logo below was not filed until 2009. It was filed based on intent to use and is still a pending application.

TWEET and RETWEET were also not filed until 2009 also and have been held up (“suspended”) because others filed to captialize on the Twitter success in the interim.

A company – particularly a successful company backed by lots of funding – should review and identify its core trademarks quarterly to ensure that they are filed and protected. While money may always be tight in startup phase, the cost of filing these trademarks earlier – a few thousand dollars – could have saved tens or hundreds of thousands of dollars in legal fees for disputes down the road.

Disputes – Twitter has had to get involved in trying to stop several other companies from registering similar names or from using brand names that contain “twitter” or “tweet”.  The disputes have been necessary because Twitter did not protect its trademarks early and was forced to block several other pending applications from others, like TWEET.ME, LUVTWEET, and TWITTERS BAR & GRILLE. Registering Twitter’s trademarks early would not guarantee less disputes, but it would significantly increase the odds of avoiding protracted disputes. With registrations in hand, some or all of the disputes could likely be resolved more quickly and cheaply, since Twitter would likely have a stronger claim against the other parties.

The longer it takes Twitter to knock out all the (alleged) infringers now and secure registration of its trademarks, the more problems Twitter could incur which means that even more disputes may arise in the interim.An application for the “t” logo below was not filed until 2009. It was filed based on intent to use and is still a pending application.

Lesson: A proactive strategy to register and protect trademarks is crucial for any business, especially a rapidly growing one. Such a strategy could end up saving the business from numerous disputes and significant expenses.

Firm News

At the American Bar Association’s 26th Annual Intellectual Property Conference this month in Arlington, Virginia, Erik spoke on a panel with Commissioner of Trademarks Deborah Cohn.

Panel at ABA conference

Recent IPelton blog posts

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

Business News Daily: USPTO ‘Trademark Bully’ Comments Reveal Small Business Headache
An article this week by Business News Daily (www.businessnewsdaily.com) quotes me about the comments I obtained via a FOIA request regarding the USPTO study of trademark litigation tactics. Click to read more»

Study demonstrates that brands add value
A recent article in The Economist highlights some of the roles brands play in society (HT to @TTABlog for the link). In addition to the power of brands to promote a product or service and conjure thoughts of a mood or lifestyle, the study found that reputable brands are equated with trust. Click for read more»

2011 Final Four®: Best Trademarks
This weekend the Final Four® in the NCAA men’s basketball tournament will play. Here are some of the pertinent trademarks Click to read more»

Trademark Litigation Tactics comments received via USPTO FOIA Request
As I detailed yesterday, I submitted a FOIA request to the USPTO for communications and comments regarding the “Trademark Litigation Tactics” study (a.k.a. “bullies study”). Click to read more»

Anatomy of a Trademark Consent Agreement
One potential way to deal with a refusal from the USPTO to register a trademark is to obtain consent from the owner of the registration (or application) that is blocking the path. Click to read more»

WSJ Article highlights Zippo® lighter IP issues
Zippo lighters apparently come with a lifetime guarantee. Zippo’s maker thus has extra incentive to prevent and recognize copycats – the copies are taking away sales potentially, and are costing Zippo time and money if they get sent in to be repaired. Click to 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.

Greetings!

Our new teleconference series is off to a great start. So far in 2011 we have already discussed “Ten Essential Trademark Tips” and “Common Trademark Application Mistakes”. Our next free call, on March 23rd at 2 pm EST, will feature tips for “Choosing a New Brand Name.” If you are planning a new product or service launch in the near future, or have been considering re-branding, this call will provide many great tips on brainstorming name ideas, creating a strong trademark, and clearing a potential brand name.

Click here for to sign up for the free call, as space is limited.

Did You Know?

Unless you have been under a rock, you have seen how Charlie Sheen’s recent erratic behavior has been riveting the media recently. Soon he will be cashing in – last week Sheen signed a licensing deal with Live Nation to create merchandise featuring some of his new catchphrases.

Several USPTO trademark filings by other people are already trying to cash in as well. For example (click for USPTO records):

• TigerBlood – beverages
• WINNING – apparel
• TIGER BLOOD – Dietary and nutritional supplements
• Winning! – apparel
• ITS CHARLIE TIME – clothing
• PASS THE CHARLIE – clothing
• Tiger Blood – clothing

Many of these applicants could soon be receiving letters from Mr. Sheen and/or Live Nation!

Trademark Tip: Proper Trademark Use

I get asked all the time about how clients should use their trademarks. Proper use is important to building and maintaining strong trademark rights. Here are six basic tips for using a trademark:

- Use the proper symbol: if registered use the ® symbol; if not registered use TM if the trademark is applied to a physical product, SM if the trademark advertises services

- Use the symbol prominently: Use it on letterhead, business cards, front of your webpage, slide presentations, videos, white papers, etc. You need not use it every time, but it can’t hurt. Generally the symbol goes on the upper right shoulder of the name or logo, but there is no strict rule for placement.

- Distinguish the trademark from other words: When a trademark is used in text, make it stand out – use bold, italics, a different font (or a combination of these) to make it stand out.

- Include information about trademark rights in agreements: In contacts with employees, partners, clients, vendors, and others, note explicitly that “XYZ is a trademark of ABC, Inc.” and add “registered” if applicable. That way there is no dispute about what is yours as you enter into the relationship.

- Do not use it “generically”: Try not to use the trademark as a noun, but rather as an adjective preceding the generic name of the product, as in “use our Kleenex® brand tissues” or “taste a Frappucino® blended beverage”. The goal is to avoid becoming the category of products or services and weakening the strength of the brand and potentially becoming generic.

- Brag: Having a registered trademark is a great thing! Don’t be shy, tell others as often as possible. It enhances the value of the brand and the trademark.

Trademarks in the News:

New Starbucks Logo

Recently, Starbucks unveiled a new logo in celebration of its 40th anniversary.

As you can see from the image below [from Starbucks website], the new logo is not a drastic departure, but contains several subtle changes:

- It is all green, the color black has been removed

- Instead of being an image surrounded by a circle design, it is now just one image, although the new image has a partial circle within it

- Most strikingly, it drops the wording “STARBUCKS COFFEE” from the design.

Only a handful of the logos in the world dare to stand alone without any wording. The new Starbucks logo in my opinion, has two main purposes:

- To equate Starbucks with other iconic brand logos like Apple, AT&T, Nike’s swoosh, and the Olympic rings that often use a logo without any words

- To help move the Starbucks brand beyond “coffee”. Starbucks may sell liquor at some stores. They already promote music, food, and are likely eyeing further expansion in the future. “Coffee” in the logo was limiting.

In my opinion, the Starbucks logo is not well known enough to stand without the name. A better choice would have been to drop “Coffee” from the logo but keep “Starbucks”. I like the new design, but I do not like the idea of dropping the brand name. The Starbucks logo may be well known among coffee enthusiasts and Starbucks customers, but if the company is planning to try to expand its markets to new customers, the logo alone – without the name – may not resonate or communicate with those who are not their core coffee customers.  Note also that most of the other logos that frequently stand alone without wording are simpler and less ornate.

Here is the USPTO application for the new design: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=85244515

Firm News

On a recent vacation in Orlando, Erik had the opportunity to meet up with a client with offices at Universal Studios Florida. Erik got a private tour of the production facilities, sound stages, and the theme park!

If you are ever in the Washington DC area for business, let us know so we can meet and show you around town!

Recent IPelton blog posts

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

Subway now has more stores than McDonald’s – Who has better trademarks?
03-10-2011 06:00:05 AM

It was reported this week that Subway now has more locations worldwide than McDonald’s. At the end of last year, Subway had 33,749 restaurants worldwide, compared to McDonald’s 32,737 (Wall Street Journal). Which company has the better trademarks? …
Read Full Post

Trademark scams: Update
03-04-2011 06:00:30 AM

In November I warned about a new scam targeting trademark owners and applicants that featured a logo and name strikingly similar to those of the World Intellectual Property Organization (WIPO). This scam has now reached the attention of WIPO. WIPO has published a list titled “WARNING: Requests for Payment of Fees” featuring a list of solicitation scams targeting trademark owners…
Read Full Post

Oscar 2011 Trademark Winners
03-01-2011 06:00:35 AM

Several winners and nominees from Sunday night’s Oscar® awards are protected trademarks: INCEPTION – pending application for online computer games INCEPTION – pending application for motion picture films and other services TOY STORY – multiple registrations for variety of goods, including…
Read Full Post

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!

Earlier this month I was fortunate to visit Austin, Texas for the first time to speak to other attorneys about trademark and brand strategies at a Cyberspace Law conference.

Austin is a great town for a variety of reasons: nice people, lots of activities, and great food, to name a few. I particularly enjoyed the diversity and depth of the local business community. Everywhere I turned I saw creative local businesses with great brand names: Roaring Fork, The Dizzy Rooster, The Blind Pig Pub, cornucopia, Coat & Tie, Home Slice Pizza, and many more. Read more about my trip to “Keep Austin Weird” here.

Did You Know?

Sarah and Bristol Palin have no problem making news. But recent news about their trademark applications – and their initial rejection by the USPTO – was probably not the type of coverage they prefer.

• Sarah Palin trademark application – USPTO records
• Bristol Palin trademark application – USPTO records

Many celebrities and entertainers protect their names and they should. Their name is their ticket to financial success and has great value.

The media has picked up and written hundreds of short and long articles that reference the trademark applications. A majority of the stories have some or all of the facts wrong. For example, people often have their attorneys sign the application; the applications have not been flat out rejected, they have 6 months to respond to the refusals; and the registrations would only cover the services listed therein, not all uses of the names and certainly not use of their names in the news.

Trademark applicants who receive initial objections automatically have six months to respond and to address or correct the issues. It looks like the Palin’s attorney may not have handled many trademarks before – the problems in the applications are fairly easily avoided or corrected.

Trademark Tip:
The Many Benefits of Federal Trademark Registration

A trademark registration issued by the U.S. Patent and Trademark Office on the principal register of trademarks has many benefits, including:

- use of the circle-R ® symbol which helps ward off potential infringers and shows off the significance of the trademark
- appearing in the USPTO database when others search trademarks, which helps avoid potential infringements
- creation of a tangible asset that can be licensed, transferred, and/or assigned a monetary value
- ability to seek triple damages and attorney’s fees in court
- right to sue infringers in Federal District Court
- nationwide priority in all 50 states as of the application filing date
- when contacting infringers or domain name cybersquatters, a powerful tool to attach to a letter and to attempt to resolve situation quickly and without litigation expenses and risks
- ability to record the trademark with U.S. Customs and Border Patrol, who could help exclude infringing imports

Overall, trademark registration enhances the value and protection of your brand, and it acts as a form of insurance that reduces the risk of getting involved in expensive disputes as either plaintiff or defendant.

Trademarks in the News:

Super Bowl commercials show the power of brands

Now that this year’s Super Bowl® is over, we can focus on the best commercials from the game!  The most popular and buzz-worthy ads generally involved celebrity appearances or cross overs that show the power of brands and the trademarks that protect them. Here are some examples:

My favorite commercial was for the Volkswagen Passat, featuring a child dressed as Darth Vader. The Star Wars franchise is still  strong many years after its creation, and I am sure that LucasFilm was paid nicely for the use of Darth (Droid® is also a LucasFilm trademark). Darth Vader, like all Star Wars characters, is well protected:

The voice of Darth Vader is a registered trademark. Description of Mark: The mark consists of the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator. Goods: Costume masks; voice altering toys; toy computers; handheld playthings, namely, toy action figures and hand held units for playing electronic games; dashboard driver figurines, namely, bobble head dolls and modeled plastic toy figurines; Halloween and masquerade costumes incorporating masks
Note – the sound of a Light Saber® is also registered

- Costumes, namely, Halloween costumes, masquerade costumes, and costumes for use in role-playing games; costume helmets, namely, Halloween costume helmets, masquerade costume helmets and costume helmets for use in role-playing games; Toy action figures and statuettes; collectible toy action figures; collectible toy helmets

- Costumes, namely, Halloween costumes, masquerade costumes, and costumes for use in role-playing games; costume helmets, namely, Halloween costume helmets, masquerade costume helmets and costume helmets for use in role-playing games; Toy action figures and statuettes; collectible toy action figures; collectible toy helmets

DARTH VADER – toy figures

Kenny G starred in a Audi commercial. Kenny G might be poked fun at (and to his credit, embrace it), but he is no dope – he owns several registered trademarks including:
KENNY G – musical entertainment services

Eminem the musician/rapper starred in two different commercials. His brand is also protected by several trademark registrations:

EMINEM - entertainment services, namely, the presentation of live musical performances

GoDaddy.com again featured a racy ad, this time starring Joan Rivers. Her brand is protected too:
JOAN RIVERS – jewelry, watches

To view these commercials and others, see Spike.com. What was your favorite commercial?

Firm News

Our teleconference series began last month and is off to a great start. For a video of last month’s presentation, Ten Essential Trademark Tips, see erikpelton.tv.

To stay updated about future teleconference topics, follow us on facebook at www.facebook.com/tm4smallbiz.

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!

We are excited to launch our new free trademark teleconference series next week, and we hope that you will join us!

Attorneys from Erik M. Pelton & Associates, PLLC (“EMP&A”), will host the first in a new series of trademark law teleconferences on Tuesday, January 25, 2011, at 12:00 PM EST. January’s teleconference, titled “Ten Essential Trademark Tips,” will feature an introduction to the fundamental concepts in the trademark law as well as practical lessons for obtaining and protecting trademark rights.

The series of teleconferences will be free, and anyone interested in learning more about trademark law is welcome to join, regardless of expertise. “Even though Americans encounter hundreds of trademarks every day on the products they buy and in the advertisements they see and hear, people are often less familiar with the basic principles of trademark rights compared to other forms of intellectual property, like patents and copyrights,” said attorney Erik Pelton, founder of EMP&A. “The goal of our series is to bridge that knowledge gap, so that individuals, entrepreneurs, small businesses, journalists, and others are able to recognize the role trademarks play in business and commerce today, as well as some of the legal issues surrounding them.” In particular, small business owners will receive practical tips to maximize the protection and value of their trademarks and other intellectual property. The use of trademarks on social media websites will also be discussed.

“Ten Essential Trademark Tips” will begin at 12:00 PM EST on Tuesday, January 25, 2011.  To participate by phone, call (217) 258-5590 and enter Pin Number 15613

Trademark Tip:
USPTO Seeks Public Comments about “Abusive Trademark Litigation Tactics”

The U.S. Patent and Trademark Office’s Request for Comments regarding abusive trademark litigation tactics has been extended through February 7th.

We encourage all trademark owners and others with an interest in the rights of small businesses to submit comments. Here is the link to our firm’s comments: Comments Regarding “Small Business Study” by the U.S. Patent and Trademark Office | Erik Pelton – via JDSupra.

Trademarks in the News: NFL Playoffs

Which is your favorite logo and brand among the NFL playoff teams? The playoffs will culminate in the Super Bowl, one of the most well-known, valuable and well-protected trademarks in the US. Did you know that the shape of the ‘Vince Lombardi Trophy’ awarded to the winning team is a registered trademark?

In the NFL, the logos can be sorted into two types: (1) old school classic looking designs, and (2) modern sleeker designs. I generally think the classic timeless designs are the best.

Modern Logos in the Playoffs

New York Jets

Baltimore Ravens

New England Patriots

Seattle Seahawks

Philadelphia Eagles

Atlanta Falcons

Classic Logos in the Playoffs

Indianapolis Colts

Kansas City Chiefs
Since 1972. Original logo (not the most original name).
Pittsburgh Steelers
Logo used since 1962. Iconic. Simple. Original and unique.
New Orleans Saints

Green Bay Packers
Essentially the same since 1969
Chicago Bears

Essentially the same since 1962

Which playoff team’s logo makes the best brand and the best trademark? Of the classic logos, the Saints logo is great and represents the city and culture of New Orleans quite well – although the ‘fleur-de-lis’ is a common symbol in places settled by the French. The Steelers is excellent – the name is unique and also represents the core of the history and culture of Pittsburgh, and the logo is distinctive. The Colts name and logo are also quite unique. The C of Chicago and the G of Green Bay are good and are classics, but they do not have the character or meaning of some of the other good logos. Of the more modern designs, I find the Patriots and Ravens logos to be hideous, although both team names are unique and provide character. The Eagles is a boring name and the connection to Philadelphia is a bit weak (especially since it is not an American bald eagle); yet the sleek and scary bird in the logo is very well done. The same goes for the Falcons – not unique and no real meaning for the city or team. Of the modern designs, the Seahawks have the nicest design. The Seahawks name, while original, is a bit odd  – a ‘seahawk’ is another name for an osprey.

Overall, I like the Steelers the best! Here are a few of the trademark registrations owned by the Steelers:

STEELERS – registered for
Entertainment services int eh form of professional professional football games and exhibitions
Football helmets and large variety of goods

- registered for
Football helmets and a large variety of goods
Articles of clothing and a large variety of goods; production of radio and television programs, football games, ….

PITTSBURGH STEELERS – registered for
Entertainment services – namely, football exhibitions rendered live in stadia…
Football helmets and a variety of goods
Articles of clothing and a variety of other goods

STEELY MCBEAM – [the mascot's name] registered for performances and appearances by a costumed mascot for a professional football team, and other goods and services

- registered for Jerseys; Education and entertainment services in the nature of organizing and presenting professional football games and exhibitions; and other services

- registered for “Jerseys; Education and entertainment services in the nature of organizing and presenting professional football games and exhibitions;, and other services

- registered for “Entertainment Services in the Form of Professional Football Games and Exhibitions”

- registered for “Entertainment Services in the Form of Professional Football Games and Exhibitions”

Did You Know?

Here are some interesting “2011″ trademark filings(click images or trademark names for USPTO records):

- pending application for “Arranging and conducting athletic competitions”
- pending application for a vareity of items [Note: An extension of time to file an Opposition has been filed by the U.S. Dept. of the Navy]
– pending application for “Entertainment, namely, live music concerts and military tributes; educational services, namely, developing, arranging and conducting workshops, programs, and seminars in the fields of history, civics, education, and government; museum services; special event coordination and consultation services; Restaurant and catering services”
- pending application for a very large variety of goods and services [Note: The English translation of "UNIVERSIADE" in the mark is "World University Games".]
– pending application for “Entertainment services in the nature of professional baseball games and exhibitions…”
- registered for “Advertising and promotional services; Chamber of commerce services, namely, promoting business and tourism in the Southern/Central California area”
and GDL 2011- pending applications for variety of goods and services [Note: Guadalajara is the site for the 2011 Pan American Games]
- pending application for “Charms; Lapel pins; Ornamental lapel pins; Pins; Pins being jewelry; Rings” [Note: the application is the subject of an Opposition filed by Omega SA, the watch company]

Some of these are for one time events, some are to commemorate brands or events that have been around a long time. Regardless of how new or how old, how long or how brief, brands are cornerstones to most businesses. As these 2011 brands demonstrate, they should be protected and registered for maximum value.

Firm News

Erik Pelton was recently appointed to the Board of Directors of the Falls Church Chamber of Commerce.

Mark Donahey was recently appointed to the Economic Development Committee of the National Small Business Association.

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.