Posts Tagged ‘firm news’

In just a few days, thousands of trademark professionals from around the world will descend upon Dallas, Texas for the 2013 INTA annual meeting, I have created a guide to some of the landmarks, sports teams, and dining in Dallas seen through the eyes of a trademark attorney. Let me know what you think!

  Trademark Lawyer’s Guide to Dallas – INTA 2013 by Erik Pelton

Top five reasons being a trademark attorney is great: #1

Posted by ipelton on: April 12th, 2013

Over the last several weeks, I have reviewed four of the many reasons that being a trademark attorney – in my opinion – is a fantastic job. It is both challenging and exciting. It is ever-changing with new clients, new brands, new trademarks, new rules, new laws, and new technologies.

The number one reason I enjoy being a trademark attorney is that trademarks and brands are everywhere, and they are important to our culture and our economy.  Trademarks and brands were everywhere decades ago, but they are even more everywhere today. And with technology changing the way we interact with everything, they are almost certain to be even more present in out future.

Great logos, brand names, and slogans communicate with people. They stir passions.

Brands are an inherent part of our daily life, our pop culture, even our politics. The average American is exposed to countless brands every day – every hour. (Try counting how many brands are shown and mentioned during one hour of an NFL football game!) Helping businesses protect their brands in this environment, so that they can use their brands successfully and grow as businesses, is exciting and engaging. People are passionate about brands. Think about:  Coke vs. Pepsi. Consumers are passionate about their favorite music artist, sports teams, restaurants, social media sites, apps, clothing, and countless other things — and the brands they represent are inherently wrapped into those choices and passions.

Brands and trademarks are a vital part of our economy.

In addition to being a huge part of our lives since they are everywhere, brands and trademarks and a huge part of our economy. Intellectual property is a significant – and growing – percentage of the U.S. economy, of the jobs created in the U.S., and of the exports to other countries. President Obama has acknowledged the significant role of intellectual property: “Our single greatest asset is the innovation and the ingenuity and creativity of the American people. It is essential to our prosperity and it will only become more so in this century.” (March 11, 2010.)

Intellectual property-based industries account for more than $5 trillion of the U.S. gross domestic product (GDP). Small businesses make up a sizeable portion of all U.S. business and play a significant role in the development, creation, and use of intellectual property. More than half of the employees in the U.S. are at companies with less than 500 employees. According to the SBA, “since the mid-1990s, small businesses have generally created 60 to 80 percent of the net new employment” in the U.S. (U.S. Small Business Administration, The Small Business Economy: 2009,

The trademarks of small businesses are often vital to their growth and success. And their success fuels commerce and jobs and plays a role in the economy as a whole.

Because trademarks play a real role in our daily lives, and in our economy as a whole, I find working with brand owners to strengthen and protect their trademarks to be extremely rewarding work – in addition to being very enjoyable!



[An example of the power of logos and branding: The FedEx logo is among my all time favorites. It is simple. And the hidden arrow between the E and X subliminally tells consumers that FedEx will get your package where it is going.]

On Thursday 4/18/13, 4 pm EST, I will present an online

Faculty Focused Community Conversation for the Center for Intellectual Property (CIP)

Program details: This discussion with trademark attorney and former USPTO trademark examiner Erik Pelton will cover basic trademark principals as well as several topics with particular impact on those in higher education, such as ownership issues and overbroad assertions of trademark rights.

For more information about Center for Intellectual Property (CIP), please visit

Here is a brief outline of some of the topics that will be addressed:

  • What is trademark protection?
    • Strong vs. weak trademark
    • Proper use
    • Registration
    • Infringement
  • Trademark issues and higher education
    • School logos and other marks
    • Re-branding (see: UC)
    • Interesting marks: mascots, class rings, and more
    • Ownership issues
    • joint ventures, contracts, etc.
  • Trademark bullying
    • What is it?
    • Penn Law School / Louis Vuitton
    • How it impacts the public
    • Avoiding backlash

I am proud to be one of the organizers for a new event that promises to be educational, exciting and unique. On April 24th, 2013, at the USPTO headquarters in Alexandria, Virginia, the Intellectual Property Law committee of the American Bar Association will present the first ABA-IPL Trademark Day: Behind the Scenes at the USPTO. The program is sure to be valuable to both new and experienced trademark practitioners. The event will feature a live TTAB hearing, and presentations from USPTO senior staff including the Commissioner for Trademarks Deborah Cohn and Chief Administrative Trademark Judge Gerard F. Rodgers. 

Details from the ABA’s website:

On April 24, 2013, the ABA Section of Intellectual Property Law, in conjunction with the USPTO, will host the inaugural ABA-IPL Trademark Day: Behind the Scenes at the USPTO. The program will take place at the USPTO campus in Alexandria, Virginia. The USPTO Operations Relating to Trademarks and Ex Parte Trademark Practice Committee and the USPTO Inter Partes Trademark Practice Committee invite you to join in on this exciting opportunity to learn more about the USPTO trademark operations up close and to network with USPTO officials.

The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing. Attendees will learn more about the examination process and the USPTO’s trademark operations. There will also be an opportunity for networking during lunch. Participants on behalf of the USPTO include Commissioner for Trademarks, Deborah Cohn, and Chief Administrative Trademark Judge Gerard F. Rogers.

Cost to attend is $50 ($30 for law students) including lunch, with 1.5 hours of CLE credits available.
Registration is now open.

Space is limited so be sure to register early!

If you have any questions, please let me know.

Advanced Trademark Prosecution: Challenging Third-Party Registration Evidence

Wednesday, April 10, 2013 at 12:30PM EST

Trademark Examining Attorneys frequently rely upon third-party registration evidence to establish that the relevant goods/services are sufficiently related to cause confusion. However, these third-party registrations are subject to several important limitations that applicants can often invoke to challenge their probative value and admissibility. In some cases, applicants may even offer third-party registration evidence of their own to rebut the grounds for refusal entirely. This presentation will review several effective and often overlooked strategies for responding to third-party registration evidence and ensure that applicants will have the best chance of overcoming a likelihood of confusion refusal.

Mark Donahey is an Associate Attorney with Erik M. Pelton & Associates, PLLC, a boutique trademark law firm located in Falls Church, Virginia, where Mark’s practice is focused on trademark prosecution,Trademark Trial and Appeal Board appeals, and inter partes disputes.Mark is a member of the Virginia State Bar and a 2009 graduate of George Mason University School of Law.



  • Fee Waived for AIPF Member Attorneys
  • Fee Waived for In House Counsel/Corporate Managers
  • $100 per Telephone Line for Non AIPF Member Practicing Attorneys

CLE credit may be available for an additional fee

for AIPF membership information, see here