Posts Tagged ‘firm news’

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.



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I am once again please to be one of the hosts of Meet the Bloggers - an annual gathering at the INTA conference. Last year’s gathering was attended by more than 100 guests and featured a fun raffle. My esteemed co-hosts are

This year’s event will be May 6th from 8 to 11 pm at the Press Box Grill on the corner of Elm and Ervay in Dallas. Please RSVP here so we know how guests many to anticipate.

Feel free to forward this invite/post on social media networks. 

- and use the hashtag #MTBIX -

If you plan to attend, please RSVP (click the image)

so we can plan accordingly for the proper number of people.

Click invitation for more details / RSVP info

Click invitation for more details / RSVP info


Once again, the “Meet the Bloggers” party will be presented during the INTA conference. This year, the conference is in Dallas.

Meet the Bloggers IX will be on Monday May 6th from 8 to 10 pm.  

Venue and additional details will be forthcoming.  I look forward to seeing everyone there!

The top trademark trends in 2012 continued several themes from recent years including celebrity brand names and domain name developments. Other big news stories, like the election, also affected the trademark world. Here is a summary of the year’s major trademark related developments:

Celebrity trademarks – and problems – continue to increase. What do Tim Tebow, Jeremy Lin, Psy, and the Kardashians have in common? All made news with trademark issues in 2012. On the field, Tebow led a playoff run and was traded to the New York Jets; off the field he registered the word TEBOWING for use with shirts and hats. The Kardashians own many trademarks but they found themselves defending infringement allegations on their Kardashian Khroma name and Kardashian Kollection logo. Blue Ivy Carter, born to Beyonce and Jay-Z in January, instantly made trademark news as her parents filed to register her name as a trademark with the USPTO just days after the birth. The video for “Gangnam Style” by Psy was viewed more than one billion times, and both the singer and song name are the subjects of pending trademark applications with the USPTO. As even more sports and entertainment stars become marketing powers, these celebrity trademark trends are bound to continue.

Disney acquires Star Wars. In October, Disney announced a $4 billion purchase of Lucasfilm, makers of the Star Wars movies and franchise. Disney already owned more than one thousand registered trademarks, but the Star Wars® marks will become some of its most valuable properties. Dozens of Star Wars trademarks are registered, including DROID®, the sound of a light saber, and the configuration of Darth Vader’s costume.

Scams. Service providers sending dubious solicitations to trademark owners received attention from trademark attorneys, the USPTO, and courts. The USPTO issued several warnings to its users and took the unprecedented step of sending a cease and desist letter to “United States Trademark Registration Office,” whose solicitations particularly mimicked government correspondence. As the USPTO’s trademark data becomes more accessible online, scams and overpriced offers continue to reach unsuspecting trademark owners. Perhaps additional efforts from the USPTO, the FTC or law enforcement agencies in 2013 will help curtail their growth.

Updated logos. Many brands refreshed their logo designs in 2012, including Microsoft, JC Penney, Cisco, State Farm, Kraft, Domino’s, ebay, the Brooklyn Nets, and Best Buy. As brands continue to increase become more online, social, and mobile, and as big brands look to expand into new product and service markets, I predict that many more will reinvent their logos in the next few years.


gTLDs. Last year continued the long slow march toward new ‘dot anything’ top level domains. The first phase – expensive applications to register .nfl, .shop, .google, .bank and the like – has been completed, and it is likely that the next objection phases and pre-registrations available to trademark owners will begin in 2013. Brand owners concerned about use of their trademarks in such top level domain names – or even in second level ones such as – must continue to monitor the ICANN process.

Louboutin’s red sole trademark gets restricted. The most watched trademark case of 2012 was an appellate court decision from the Second Circuit Court of Appeals in the matter of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. Louboutin, which makes expensive women’s high heel shoes recognized by their red lacquered sole, had sued YSL for trademark infringement after YSL made a monochrome shoe that was all red, including the sole. The Circuit Court found that Louboutin’s trademark rights, though registered with the USPTO, extend only to shoes where the red sole contrasts with the remainder of the shoe. Thus,  Louboutin’s claims against YSL were struck down, and the Court further directed the USPTO to amend Louboutin’s registration and limit its scope to shoes featuring such a contrast.

President Obama, re-elected in November, has a brand that is among the most well known for any politician in recent memory. The Obama campaign filed to register several of its trademarks in 2012, including the slogan GREATER TOGETHER and the logo below.

 What to look for in 2013.As the economy continues to grow slowly, it is likely that the number of new trademark applications will grow as well. Expect even more trademark issues involving celebrity brands in the news and continuing concerns – and delays – with the launch of new top level domains.


About Erik M. Pelton: Erik Pelton has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 1,700 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2012, Erik presented on trademark and social media issues to a variety of audiences, including Howard University, the Association of Intellectual Property Firms, the New York State Bar Association, and the National Veteran Small Business Conference.

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