‘IPelton® blog’ Category

Scam solicitations mailed to trademark registrants and applicants in the US continue to proliferate. A client this week forwarded me the offer below from “Trademark Edition Ltd.” and their “International Catalogue of Trademarks – 2016.”

The cost for a listing in the scam publication is a mere $1,650.00.  This publication has no legal or other significance. There is no telling how many (or how few) of these “catalogues” are published or to whom they are distributed. Their website doesn’t explain much in detail about the purported use and value of their service, and the website has horrible grammar: “Today advertisements are in focus; therefore we consider that protection of trademarked intellectual property is of high importance. We also reckon that market participants who guarantee quality by means of trademarked intellectual property should gain more ground in the international market.”

If you have any questions about this or any other solicitation related to a trademark, consult your attorney at once.

This scam apparently used to go by the name TM-Edition, because the address used hasn’t changed and the cost is the same. See my post from 2012 here.

For more information, see:

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

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

It continues to astound me that the USPTO, DOJ, FTC, and others refuse to better investigate and halt these blatant scams targeting trademark owners.


TPAC Meeting Summary – September 2016

Posted by ipelton on: September 20th, 2016

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

USPTO Director Michelle Lee visited at the of the meeting to address the committee. The meeting also marked the end of the TPAC term of three members of the committee: Deborah Hampton, Bill Barber, and Ann Chasser.

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

  • There has been a lot of activity on the hill lately for IP.
  • Trade Secret legislation was signed by the President on May 11, 2016.
  • There is pending legislation related to the ‘Patents for Humanity’ program.
  •  There was a celebration on the hill on Sept. 14, 2016 celebrating the 70th anniversary of the Lanham Act.
  • Director Lee testified in an oversight hearing on Sept. 13, 2016. Video below:

International Policy – Shira Perlmutter and Amy Cotton

  • Ms. Perlmutter gave a presentation regarding the possible trademark implications of the European Union “Brexit.” Much is still unknown and multiple exit scenarios exist. The exit will have ramifications for registration and for enforcement in England and the EU.
  • Ms. Cotton gave a presentation regarding a TM5 project to develop a taxonomy and hierarchy for all goods and services. This could include US identifications and affect international filings and foreign applicants/registrations filing in the US. The USPTO intends to circulate a survey in the future regarding some of the issues involved.

Trademark Operations – Commissioner Mary Boney Dennison

  • Filings in FY2016 are up over 5%
  • There are currently more than 500 examining attorneys
  • 22 new examiners will begin on 10/31.
  • New examiner groups will likely be hired in the winter and in the spring
  • Deloitte was contracted by the USPTO trademark operation to review customer service. Their report has been finalized and the USPTO will launch some new initiatives as result in the near future.
  • The fee changes proposed earlier in the year should be published in a final rulemaking soon with implementation in January 2017.
  • A final rulemaking regarding the proof of use requirements for Section 8 filings will be issued shortly.
  • An update to the declaration format for online filings is planned for early 2017.
  • The USPTO is considering a limited expungement proceeding to help eliminate deadwood on the register and is currently working with user groups to develop proposals.
  • The USPTO website, as a result of a TM5 project, now includes common status descriptor icons that all TM5 offices will be using.
  • The Trademark Expo will be in DC on October 21 and 22 at the Mellon Auditorium.

USPTO Budge Update – Frank Murphy (Deputy Chief Financial Officer)

  • USPTO expects to begin FY2017 under a Continuing Resolution

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

  • The latest TTAB pendency statistics were reviewed (see slides), showing that pendency times in general continue to decrease.
  • New proceeding filings at the TTAB are up considerable in FY2016, including Notice of Opposition filings up 11%.
  • New TTAB Judge Christopher Larkin begins work this week.
  • The TTAB rulemaking package will be issued this month, with an effective date of January 14, 2017.
    • The new rules will apply to all cases, with judges having discretion where needed in applying them to pre-existing cases.
    • Judge Rogers noted that the new rules retain the Board processes considered significant by the Supreme Court last year in B&B Hardware.

OCIO / TMNGUpdate  Raj Dolas

  • New trademark examining attorneys are beta testing the new Examiner computer systems.
  • is live now for users.
    • Users create a login and create their own home page choosing from a variety of widgets.
    • Widgets include adding application/registration numbers to view current status, and a function to create an automated search of the Official Gazette.
    • TPAC members expressed interest in seeing the development of TTAB and Assignments widgets.

The next TPAC meeting is scheduled for January 13, 2017.

2016-09-16 TPAC Slides by Erik Pelton on Scribd

Recent Client Trademark Registrations v.92

Posted by ipelton on: September 15th, 2016

Here is another update of recent Erik M. Pelton & Associates client trademark registrations obtained from the public records of the USPTO so readers can see real  examples of brands and marks which are being protected – and the wide range of variety in brand names, logos, products and services. [Click trademark or logo to open USPTO records in a new window.]

Last month, our clients were issued 30 USPTO trademark registrations!

  • UNLEASHED – Educational services, namely, workshops, seminars, and retreats in the field of leadership, executive development, and business, providing online non-downloadable videos in the fields of leadership, executive development, and business
  • Trademark image – Electronic digitizing of documents and photographs into computer readable media
  • DAFINA ONE CARAT – Online retail store services in the field of jewelry; providing a website featuring on-line ordering of rings
  • BSMPG – Educational seminars in the field of sports medicine
  • A BETTER WAY TO CPA – Income tax consultation; Income tax preparation; Tax advisory services; Tax and taxation planning, advice, information and consultancy services; Tax consultation; Tax filing services; Tax preparation; accounting services; providing financial and accounting workstation areas for use by others equipped with office equipment
  • BE SEEN BE HEARD INSPIRE CHANGE – Conducting business conferences in the fields of leadership, communications, and relationships; conducting educational conferences, seminars and workshops in the fields of leadership, communications, and relationships
  • YOUR WORLD WITHOUT PAPER – Electronic digitizing of documents and photographs into computer readable
  • CARDIO TONIC-BP – Nutritional and dietary supplements
  • AUDIENS COACHING AND CONSULTING – Consultation in the field of business investigation; consultation in the field of business management
  • Trademark image – Consultation in the field of business investigation; consultation in the field of business management
  • R U POZITIVITY? – Shirts
  • MAKE ZILLIONS – Providing temporary use of online, non-downloadable software and software tools for building and managing websites, businesses, e-commerce sites, and online stores
  • EL FRESCO – Restaurant services
  • PREP – Educational services and seminars in the fields of insurance, risk management, psychiatry, professional liability, and malpractice
  • RARE GEONOMICS INSTITUTE – Medical and scientific research in the field of rare diseases
  • ONE NATION –  Eyewear; eyeglasses; industrial protective eyewear; safety eyewear
  •  Trademark image– Telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; hosted PBX phone services, namely, PBX dialing services; international callback telephone services
  • KOBE CUTS – Barber services; hair cutting; men’s grooming services featuring shaving and beard and mustache trimming
  • Trademark image – Technology product development, namely, development of new products for others; software development; mobile  application design; data warehouses design; database development; web application development; computer hardware and software development
  • Trademark image   – Restaurant
  • MYBIZPAD – Providing online non-downloadable software for business invoicing, accounting, sales reports, purchase orders, inventory and business financial tools
  • KITEWIRE – Technology product development, namely, development of new products for others; software development; mobile application design; data warehouses design; database development; web application development; computer hardware and software development
  • CLARITY IN YOUR PLAN…CONFIDENCE IN YOUR FUTURE – Investment management services; personal financial retirement planning; consulting in the fields of finance and investment
  • KEUI –  Consulting in the fields of healthcare operations management and hospital operations management
  • INFINITY HEALTH TECHNOLOGIES – Incubation services, namely, providing financing to freelancers, start-ups, existing businesses in the fields of healthcare and healthcare IT; brokerage services for capital investments in the field of healthcare and healthcare IT
  • VIE – Consulting in the fields of healthcare operations management and hospital operations management
  • SUNSET MUSIC FESTIVAL – Arranging and conducting of concerts; Entertainment in the nature of music festivals; Entertainment services in the nature of presenting live musical performances; Entertainment, namely, live music concerts
  • Trademark image  –  Medical and scientific research in the field of rare disease
  • Trademark image   –  Restaurant
  • ZOMBIE RAPUNZEL – Dolls; toy figures

This year was the first time that the local paper, the Falls Church News-Press, included a lawyer category in their annual “Best of” voting. I am humbled to have been recognized. Thank you to everyone who voted online.

14089123_10153990004950889_2247449093171512458_n BEST OF

The USPTO asked users to submit comments regarding proposed changes to the formatting of online declarations that are part of trademark application and renewal filings.

We submitted the following comments: 

[Note that you can submit comments, comment on other submissions, or “upvote” them to indicate support]

Comments regarding proposed changes to declaration format

It appears that the USPTO wishes to increase the “solemnity” of the trademark application declarations in response to the Section 8 & 71 pilot project that revealed more than half of all renewals included at least partially overbroad statements of continued use. Considering that these declarations are already made under penalty of perjury, I am not sure how big an impact the increasing solemnity might have on the problem.

Even so, it seems that the PTO believes the issue is not the seriousness of the language itself, but instead that signatories may not be carefully reading and appreciating the significance of the attestations they are making. I wholeheartedly agree. The best solution, however, is not merely to restructure the paragraphs of the declaration, but to restructure the way that all text is presented throughout the TEAS forms. The declaration is just one of myriad blocks of text and warnings appearing throughout the form. The solemnity of the declaration, especially to inexperienced users, is obscured not because it is a large block of text, but because it is one of many paragraphs of legalese spread throughout the TEAS forms.

Users filling out a form within TEAS are confronted with numerous long blocks of text and various warnings, many of which are presented in garish, hard-to-read red fonts. Many of these blocks of text appear even when they are not relevant to the particular needs or choices of the user. While experienced TEAS users know what to look for, a novice user must painstakingly filter through each block of text to determine which are relevant. Nothing distinguishes those that are important from those that are not. As a result, the declarations can easily get lost in the shuffle.

If the PTO wants to ensure the solemnity of the declarations, they should start by changing the way text in general is presented throughout the forms. Distinguishing the declarations from the rest of the form would substantially increase the weight and attention users give them.

As the PTO begins the process of updating all TEAS forms, I hope it is mindful of this presentation issue. Streamlining the forms will make them more understandable and user friendly. Although the PTO must be thorough in providing information on TEAS forms for the sake of novice users, there are ways to prevent the sheer volume to information from becoming unintelligible walls of text. Perhaps the PTO might even consider multiple versions of the TEAS forms for users with differing degrees of experience.

– Erik M Pelton & John C Heinbockel on behalf of Erik M. Pelton & Associates, PLLC

For all of the comments, including those submitted by other practitioners, see: