‘IPelton® blog’ Category


Posted by ipelton on: March 7th, 2017

A client was kind enough to forward me this recent offer he received from GLOBAL PATENTS & TRADEMARKS. The offer is to be published in their private database of trademarks for a cost of $2,890. Ironically, their offer contains a warning that their clients may receive offers from other companies who are not connected to GLOPAT. Just like US trademark applicants and registrations may received offers with little or no value from companies who are not connected to the USPTO.

This “publication” has no real value to trademark owners. I have never met a trademark professional who relies on any private directories for anything. They are incomplete and unofficial. They do not add to your trademark’s protection in any meaningful way. The offer is not cheap, and it is a complete waste of funds. Interestingly, their feature at least one of my trademark registrations in their ‘directory’ although I have certainly never paid them a cent. See

I have published their solicitation below. Their address is in the Slovak Republic.

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.


A few weeks ago, the Washington Post began using a new slogan with its online masthead: Democracy Dies in Darkness. NOTE: This post is not political in any manner, and it does not matter whether you like or dislike the content in the Post!  The slogan provides a good case study example for how a new trademark (brand name, logo, or slogan) should be handled.

Image result for "democracy dies in darkness"

The good:

  • On it’s face, the slogan is good because it is catchy and memorable. It uses a semantic tool, alliteration, with all the three main words beginning with the “D” sound. Alliteration also is a trademark legal tool, as in general it makes a phrase more unique and stronger and easier to protect. For example, alliterative phrases may escape disclaimer requirements for descriptive words. See Effective Office Action Responses presentation materials. See also, TMEP Section 1213.05(e).
  • The “Democracy Dies in Darkness” phrase also appears to be unique and was either coined by the Washington Post, or first used in connection with news coverage by them. Uniqueness is an excellent feature for creating a strong trademark and slogan, one that should generally be capabble of registration with the USPTO. As of this writing on March 5, 2017 there are no USPTO applications or registrations featuring any combination of two or more of the three key words in the slogan: *democ* and *dark*, or *democ* and *die*, or *die* and *dark*.
  • The Post secured the domain name on February 16th, a few days before the launch of the slogan online. Even if a business has not plans to use a correlating domain name, it is worth the expense to own it and make sure no one else acquires it.

However, a search of the USPTO trademark records using the TESS database (as of this writing on March 5, 2017) shows that the Post has not filed to protect and register this slogan. The Post owns more the 60 current USPTO trademark registrations and applications. It’s registration of FEDERAL DIARY was issued in 1935!

The bad: by missing (or delaying) the benefits of a USPTO application and registration, the Post has created some unnecessary risks, such as:

  • Registration with the USPTO provides a wide range of benefits, including use of the ® symbol, appearing in the public database of USPTO trademark records, a presumption of ownership, and the ability to sue for infringement in federal court and to seek trebled damages plus attorney fees. The Post is not yet on its way to taking advantage of those protections.
  • Given the ease of use of the TESS search, and the number of new trademark applicants and developers of new product and service brand names (and their attorneys) who use it, appearing in the USPTO’s online database is more valuable than ever. Just being there (in the USPTO registry) may prevent someone who otherwise would have adopted a similar name or slogan for a similar product or service from going forward with that name or slogan.
  • If someone else was to file with the USPTO to register the slogan before the Post files, the Post may still be able to block the application. However, for the Post to do so cost them money and time. In this hypothetical, had the Post filed with the USPTO first, the USPTO would likely block and subsequent similar trademark filing on its own – at no cost to the Post.
  • Registration of a slogan also creates a tangible asset that can be sold, licenses, or otherwise assessed a real financial value.
  • Registration, or even a pending application, can make dealing with domain name and social media name conflicts easier, faster, and cheaper in general.
  • The ideal way to protect a new brand name or slogan is to file even before it is used publicly for the first time.  That way, the risk of someone learning of it and then filing with the USPTO or taking some other action to try to assert rights in the name is avoided. Such a UPSTO trademark application is called an “intent to use” filing.
  • If someone uses the slogan improperly and the Post decides to send a “cease and desist” letter, such a letter will generally be much stronger, and more effective, if there is a USPTO record to support the trademark claims.

These risks would be true for any new trademark, brand name, or slogan launch, but are magnified by the volume of exposure the Post online gets. While the Post came up with a catchy and seemingly unique slogan, it failed to take timely steps to protect the investment in that slogan.

Did you know? The New York Times owns more than 200 trademark registrations, including:, and “ALL THE NEWS THAT’S FIT TO PRINT”.

See also:

The notice below from PATENT & TRADEMARK RESOURCE CENTER is not from the government, not from the USPTO.  I received this offer  last week regarding my registration for TTABULATOR®.

Note that the USPTO does have several “Patent and Trademark Resource Centers” around the country which makes the name of the service provider extra confusing.  See USPTO page here.

The fee is not cheap. And it is not clear what services they provide? Is this a Section 8 renewal, or 8 and 15? Do they provided legal advice about which renewal is appropriate, whether the mark is in use or in use for all the goods and services in the registration, and what type of evidence of use is appropriate? Are they attorneys and members of the bar? What happens in the Section 8 filing is rejected, are there additional fees to respond? Their address is listed as a PO Box.

Their website contains misinformation. For example, it states that ” the USPTO will never contact you directly.” That is no longer true – if a registrant has an email address in the record for correspondence, the USPTO will send a reminder when the Section 8 declaration filing window begins.

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

For more information, see:



St. Louis trademarks – a photo journal

Posted by ipelton on: March 2nd, 2017

I was recently in St. Louis for a conference. I found plethora of creative local business name and logos. Many are unregistered and vulnerable!

Of course, many reference the iconic St. Louis Arch.  See photos and descriptions below.


Erik Pelton Selected for TBD Law, a Private Group of the Most Innovative and
Future-Oriented Small Firm Lawyers in the World

St. Louis, Missouri.—February 23, 2017—​Erik Pelton was named as one of 50 invite-only
members of the second ​ TBD Law​ conference in St. Louis on February 26-28, representing
some of the most innovative and forward-thinking solo and small firm lawyers to step outside
their comfort zone to reimagine the law practices of tomorrow. The event, a joint effort of the
online small firm community, ​​ and meeting facilitation company, ​Filament​, is
focused on convening innovative small firm lawyers and changing the nature of legal
conferences and the legal profession.

“The first TBD Law conference was the two most valuable days of my professional life as a solo,
and I will continue to reap the benefits of these two days for years to come,” said 2016
participant Megan Zavieh.

“We are really excited that Erik Pelton is part of the TBD Law community and joining our
February conference in St. Louis. Erik’s innovative work on trademarks makes him a
tremendous addition to this small, select group and we are confident that he will make some
great contributions to helping define what the future of small firm law practice will look like,” said
Aaron Street, the CEO of

Erik Pelton ​ will join 50 invitation-only attendees who will come together at TBD Law to workshop
fresh ideas, network, build their professional circle, participate in a hackathon, and much more.
TBD Law has no presenters, speakers, or session topics, but instead uses a variety of
interactive activities and techniques to engage attendees in working together to solve each
other’s challenges and work to define the future of law practice.

About TBD Law​: TBD Law is an invitation-only semi-annual event and online community for a
small group of the most innovative, creative, and forward-thinking small firm lawyers in the
world. It is organized by and Filament. Learn more: ​

About ​ is the​ largest online community of solo and small-firm
lawyers in the world. Learn more:​ ​

About Filament: ​ Filament is a St. Louis-based meeting facility and meeting facilitation service,
offering a new way of running meetings. Learn more: ​