Erik M Pelton & Associates, PLLC

Trademark protection for lighting, sounds, texture, scents, motion, and other non-traditional trademarks

ipelton — Mon, 20 Feb 2012 12:00:30 +0000

I have been interested in non-traditional trademarks for several years now and I have collected information about many different types. Did you know that several lighting displays are registered trademarks? And the motion of the doors on a Lamborghini? To learn more about the protection of these and other trademarks, see the slides below from my recent AIPF webinar.

Non-Traditional Trademarks – AIPF Presentation January 2012

View more presentations from erikpelton.

Linsanity: pop culture again leads to rash of trademark filings

ipelton — Fri, 17 Feb 2012 11:50:08 +0000

Another sports/pop culture story has generated the filing of several trademark applications in just one week. Jeremy Lin is on the New York Knicks basketball team. In recent seasons he has bounced around a few NBA teams and the NBA’s minor leagues, the “Developmental League.” He played for Harvard in college, graduating in 2010. He is one of the few Asian-Americans to play in the NBA.

And he has had one of the greatest weeks in sports – perhaps the greatest in recent memory for an unheard of player. In his first 5 games as a starter, the Knicks went undefeated, as Lin led the team and hit game winning shots. Two weeks ago, few people knew who he was. Now he is making headlines in papers and news shows around the country.

And he has a name that is easy to make puns with! Here are some of the shirts available on Zazzle.com:

All I Do is Lin

Ohhhh the Linsanity

NY Bal-Lin’

I’m All Lin

Linning

As noted on this blog before, pop culture and sports stories often lead to a rash of trademark filings by those seeking to cash in. In recent memory, Charlie Sheen, Occupy Wall Street, Tim Tebow, Hurricane Irene, and the baby of Jay-Z and Beyonce have all generated trademark filings. And now we can add Jeremy Lin to the list. Here are some of the trademark applications filed in the last 10 days [click mark for USPTO records]:

Linning - Short-sleeved or long-sleeved t-shirts

LINsanity - A-shirts; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Body shirts; Button down shirts; Button-front aloha shirts; Camouflage shirts; Camp shirts; Chef’s hats; Clothing for athletic use, namely, padded shirts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Collared shirts; Dress shirts; Fishing shirts; Fur hats; Golf pants, shirts and skirts; Golf shirts; Hat bands; Hats; Hats for infants, babies, toddlers and children; Headgear, namely, hats; Hooded sweat shirts; Hunting shirts; Knit shirts; Leather hats; Leather shirts; Long-sleeved shirts; Moisture-wicking sports shirts; Night shirts; Open-necked shirts; Over shirts; Paper hats for use as clothing items; Party hats; Perspiration absorbent strap to be used in the bill of a hat; Pique shirts; Polo shirts; Rain hats; Rugby shirts; Scientific and technological apparel, namely, shirts, pants, jackets, footwear, hats and caps, uniforms; Sedge hats (suge-gasa); Shirt fronts; Shirt inserts, namely, dickies; Shirt yokes; Shirts; Shirts and short-sleeved shirts; Shirts and slips; Shirts for infants, babies, toddlers and children; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sleeves worn separate and apart from blouses, shirts and other tops; Small hats; Snap crotch shirts for infants and toddlers; Sport shirts; Sports caps and hats; Sports shirts; Sports shirts with short sleeves; Sweat shirts; T-shirts; T-shirts for sale; Tee shirts; Toboggan hats, pants and caps; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Turtle neck shirts; Wearable garments and clothing, namely, shirts; Wind shirts; Women’s clothing, namely, shirts, dresses, skirts, blouses; Women’s hats and hoods; Woolly hats; Yoga shirts

Lin-sanity - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Hats; Jackets

Lin-credible - Hats; Jackets; Shirts

Linsanity - Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms

LINSATION - apparel goods; full line of apparel goods; A-shirts; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Body shirts; Button down shirts; Button-front aloha shirts; Camouflage shirts; Camp shirts; Chef’s hats; Clothing for athletic use, namely, padded shirts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Collared shirts; Dress shirts; Fishing shirts; Fur hats; Golf pants, shirts and skirts; Golf shirts; Hat bands; Hats; Hats for infants, babies, toddlers and children; Headgear, namely, hats; Hooded sweat shirts; Hunting shirts; Knit shirts; Leather hats; Leather shirts; Long-sleeved shirts; Moisture-wicking sports shirts; Night shirts; Open-necked shirts; Over shirts; Paper hats for use as clothing items; Party hats; Perspiration absorbent strap to be used in the bill of a hat; Pique shirts; Polo shirts; Rain hats; Rugby shirts; Scientific and technological apparel, namely, shirts, pants, jackets, footwear, hats and caps, uniforms; Sedge hats (suge-gasa); Shirt fronts; Shirt inserts, namely, dickies; Shirt yokes; Shirts; Shirts and short-sleeved shirts; Shirts and slips; Shirts for infants, babies, toddlers and children; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sleeves worn separate and apart from blouses, shirts and other tops; Small hats; Snap crotch shirts for infants and toddlers; Sport shirts; Sports caps and hats; Sports shirts; Sports shirts with short sleeves; Sweat shirts; T-shirts. T-shirts for sale; Tee shirts; Toboggan hats, pants and caps; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Turtle neck shirts; Wearable garments and clothing, namely, shirts; Wind shirts; Women’s clothing, namely, shirts, dresses, skirts, blouses; Women’s hats and hoods; Woolly hats; Yoga shirts

A friend of mine shared this photo of the “Jeremy Lin-Mint” special at a “Shake Shack” in New York this week:

These tributes to Lin and efforts to cash in on his success and his name raise some interesting trademark issues. How much control should he have over his name? If he has not endorsed the Shake Shack product, is there an infringement? Are the clothing sellers infringing any rights?

Who ultimately has the rights – if anyone does – to control use of the puns in marketing and sales for profit? Jeremy Lin? The New York Knicks? What if ESPN or some other news source was the first to use “Linsanity” as a phrase, could they claim any rights?

Image by Rob Carr/Getty Images

Update: More than half of Charlie Sheen’s trademark applications have been abandoned

ipelton — Thu, 16 Feb 2012 13:37:49 +0000

Hyro-gliff is a company associated with Charlie Sheen that filed dozens of trademarks applications last year when he making lots of news related to his contract dispute with CBS. As of last week, more than half of the 34 trademark applications filed by Hyro-Gliff have been abandoned. The USPTO filing fees of the 19 abandoned applications was at least $5,225. The attorney fees were likely much greater.

Much news was made at the time about the trademarks filed by Sheen’s company and by others seeking to cash in on his catchphrases such as “Winning” and “Tiger’s Blood.”

Sheen’s company still has some applications that are active. Although many of them have been refused and only a few have thus far been given preliminary approval.

Updated list of CHARLIE SHEEN Trademark Applications (2012-02-16)

Tips for Hiring and Managing Staff at Small/Solo Law Firms

ipelton — Wed, 15 Feb 2012 11:45:28 +0000

When I am not writing about trademarks, I sometimes write about managing a small law practice.

I recently authored a post about hiring and managing staff as a guest post on the LawBizBlog of my friend Ed Poll.

In my 12 years of practice (starting and managing a small firm), I have hired and supervised numerous associate attorneys, paralegals, and interns, as well as a variety of subcontractors.

Hiring and managing is no easy task – especially when you have no relevant training or experience. Law school gives most of us the experience of being interviewed, not interviewing others; of writing resumes, not reviewing them; of taking instructions, not giving them.

Read the rest of the post here for my keys to making successful hires in a law firm.

House of Representatives Judiciary Committee to hold hearing Friday on “Litigation as a Predatory Practice”

ipelton — Tue, 14 Feb 2012 13:30:39 +0000

This Friday morning (February 17, 2012), the Subcommittee on Intellectual Property, Competition and the Internet of the Committee on the Judiciary of the U.S. House of Representatives (try saying that 3 times fast!) is holding a hearing entitled “Litigation as a Predatory Practice.”

As of this writing, no details have been posted regarding the topic or the witnesses. It is my hope that the committee will address the USPTO’s “Trademark Litigation Study” conducted and released last year. It is possible that the hearing will cover patent trolls. In recent years, Congress has shown little interest in trademark matters. Since the study was commissioned in a bill from the Senate Judiciary Committee in early 2010, the topic has not been addressed by either chamber of Congress in any manner. The hearing, in my opinion, has largely fallen on deaf ears. This result may have been expected since the mantra of the study was that there really is no problem regarding trademark litigation tactics and nothing major should be done to address any perceived problems.

[Note: Last Spring, I sent a letter to the Senate judiciary committee Chairman calling for hearings on the trademark litigation tactic issues.]

For more details on Friday’s hearing, see the hearing calendar, which hopefully will soon reflect more details.

I plan to attend the hearing and of course will report in this space on any trademark related news from it.

Trademark Scam Information (video)

ipelton — Mon, 13 Feb 2012 11:30:34 +0000

In the last few days and weeks, we have received a great number of inquiries about trademark monitoring or trademark registry services based on letters received in the mail. These letters look official or governmental. In fact, they are generally scams. The registries are of no value. And the monitoring services are better done by attorneys or other service providers.

Many of these scams use names that look or sound like the “United States Patent and Trademark Office” but upon closer examination they are private solicitations.

If you have any questions about whether such an offer is real or necessary, contact an attorney or the USPTO.

If the letter does not say it is from the ”U.S. Patent and Trademark Office” or “U.S.P.T.O.” on it, it is not a part of the trademark application or registration process. To limit the exposure to these scams, our firm never provides email addresses or phone numbers of our clients when filing with the USPTO.

For more information about these scams, see the video below.

Individuals who have received or been subject to such scams in the U.S. can file complaints with the Federal Trade Commission (FTC) and/or the USPTO.

5 Basic Brand Protection Tips for Trademark Owners (video)

ipelton — Fri, 10 Feb 2012 12:45:22 +0000

Our latest video (below) features 5 basic tips for brand owners to be cognizant of in order to strengthen their brands and enhance the legal protection of those brands. Following these five simple steps will help any small business create and maintain a strong brand.

- Search for conflicts

- Register brand name(s) with the USPTO

- Register other marks (logos, slogans, etc) with USPTO

- Monitor for infringements

- Be proactive

Whether you own a successful small business and are launching a new one, do not leave one of your most valuable assets unprotected. A strong and original trademark attracts customers initially, keeps them returning, and should be protected just like any other precious asset.

San Francisco trademarks – a photo journal II

ipelton — Wed, 08 Feb 2012 11:46:35 +0000

On my recent trip to San Francisco, I saw many wonderful trademarks. Many were for local or small businesses. Of course, I saw a few duds too – mostly because they were very descriptive.

Some of my favorites include:

pawsitively groomed

Earthbeam Natural Foods

NUTS for CANDY

DooBu Tofu

drybar

DUMPLINGS & BUNS

Invision Optometry

DOSA

Site For Sore Eyes

Inferno Pizza

and the best…. MR. BLING BLING

Here are photos of some of my favorites:

Client success stories

ipelton — Tue, 07 Feb 2012 11:45:51 +0000

One of the great joys of working with hundreds of businesses over the years is watching them grow and do wonderful things. Recently several of our clients at Erik M. Pelton & Associates have been in the news for their achievements. We proudly share some of them here… along with links to their trademark registrations!

THE GRANDSONS® – roots rock band THE GRANDSONS will be will be going to El Salvador this month on a tour organized by the US Embassy in San Salvador. During the week-long tour, The Grandsons will perform at schools, theaters, and outdoor venues in and around the capital city. The Grandsons were also recently named finalists in multiple categories of the 2012 Washington Area Music Awards.

RAY’S THE STEAKS® recently re-opened its location in Anacostia neighborhood of Washington, D.C. The Washington City Paper ranks Ray’s The Steaks at East River No. 39 on its list of D.C.’s 44 Most Powerful Restaurants.

GHOST ROBOT®, a multimedia advertising and design company, recently created a video for Cartier (with music by AIR) which was released on the internet to great acclaim – picking up mentions on Women’s Wear Daily, Stereogum, and Jay-Z’s Facebook page. Watch the video below:

MR. MEDIA TRAINING®, the fantastic blog from Brad Phillips and Phillips Media Relations, recently covered “The Ten Worst Media Disasters of 2011” and was interviewed by several radio and TV stations about the subject.

Of course, there are many other client success stories in a wide variety of industries. If you would like to see your business featured here, let us know!

Super Bowl demonstrates the power of brand nostalgia

ipelton — Mon, 06 Feb 2012 11:30:08 +0000

After last year’s “big game,” I wrote a blog post titled “Super Bowl commercials demonstrate the power of brands.” Of course, that is still true. And as I have written before, no brand is more powerful in its field than the NFL (“Why the NFL is king of branding“).

After this year’s run of great Super Bowl advertisement’s I have updated my assessment:

Super Bowl advertisements demonstrate the overwhelming lasting power (= $$) of solid brands. For example, here are some of the longstanding trademarks and brands featured in the promotional activity surrounding Super Bowl XLVI:

- VOGUE - registered for magazines since 1908!

- ROCKY - (registered since 1991) for a variety of good and services including series of motion pictures

- DROIDS - (from Star Wars, owned by Lucasfilm) registered since 1985 for toy action figures

- SEINFELD – registered since 1993 for television series

- BATTLESHIP - (registered since 1968) apparatus sold as a unit for playing a board game having movable pieces

- THE LORAX - registered for “books featuring children’s stories; computer, video and audio recordings made on disks, tapes, cassettes, cartridges and CD-ROM by laser and electronic means, all featuring children’s stories” (in use since 1971, registered since 1997)

- STAR WARS – registered since 1979 for toy action figures and comic magazines

- THE AVENGERS (registered since 1970) – magazines published periodically

- G.I. JOE - registered since 1964 for toy military kits

- MADONNA – registered since 1985 for clothing

Registered trademarks can last for ever. Strong brands can last forever. While the media – and for good reason – is frequently enamored by relatively new companies like Facebook, Twitter, Groupon, etc., the “distinguished” brands listed above serve as a good reminder that building a quality brand can pay dividends for decades, or even longer.