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Top Trademark Trends of 2011

Posted by ipelton on: December 14th, 2011

2011 was a busy year for brand owners and those following the field of trademarks as trademark filings in the US increased and continued growth of the internet, social media platforms, and mobile applications impacts brand owners. Some of the biggest news stories of the year – from the passing of Steve Jobs to the “Occupy Wall Street” movement – also had trademark significance.

Celebrity trademarks continue to grow. Numerous celebrities made news in 2011 with their trademarks: ‘The Situation’ and Abercrombie are contesting the apparel company’s use of “The Fitchuation” and other parodies; Charlie Sheen filed numerous trademark applications after his well publicized blow up with CBS; and the Kardashian trademark empire continues to grow with the filing of more than 40 U.S. Patent and Trademark Office (“USPTO”) trademark applications. 

Political trademarks. Sarah and Bristol Palin made headlines for receiving registered trademarks in 2011 covering their names in connection with motivational speaking services. President Obama’s re-election campaign filed to protect its logos and also recently sued a merchandise maker for infringement. The death of Osama Bin Laden was followed by Disney trademark applications for SEAL TEAM 6; they were abandoned days later after the ensuing public relations backlash. In the last part of 2011, more than 20 “Occupy Wall Street” related applications were filed.

Steve Jobs. The October death of Apple Inc. founder and CEO Steve Jobs inspired many retrospectives about how he changed our culture over the 30 years by teaching us to THINK DIFFERENT®. Along the way, Jobs helped make several Apple brand names and logos among the most recognized and most valuable in the world: iPhone®, iPad®, Mac®, and many others. Many Apple product designs are also registered trademarks.

Mark Image    

.XXX domain names. In September, the ‘sunrise’ or pre-registration period began for the new .xxx top level domain name extension. Owners of registered trademarks and operators of adult websites were given the opportunity to secure .xxx domains before the full public release on December 6th.

New gTLDs. ICANN announced the long discussed launch of new generic top-level domain names (gTLDs) in 2011 with an application process commencing in 2012. Reaction ranged from excitement from some brand owners to serious concerns by many others as the procedures for protecting and blocking “.brand” domain names are convoluted, expensive, and not guaranteed to provide quick and affordable resolutions. As 2012 begins, look for last minute challenges to the ICANN plans.

Trademark filings increase. Through the end of November 2011, USPTO trademark application filings increased 6.5% over the same period last year. The increase may be a positive indicator for the economy’s growth as filing levels are approaching a return to the record high of 2008. At the close of FY2011, the USPTO register of trademarks contained 1,719,247 trademarks, an increase of 24.6 percent in just four years! 

Trademark bullies study released. In April, the Department of Commerce released the “Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting” study, which was mandated by Congress to assess the extent of trademark “bullying.” The study fell short of making sweeping recommendations or identifying any significant perceived problems and suggested (1) private sector pro bono efforts, (2) additional legal education programs for attorneys, and (3) enhancing outreach from government agencies. The study largely fell on deaf ears as Congress held no hearings and issued no reaction.

USPTO outreach. The USPTO continued growing dialogue and collaboration with its trademark users and applicants as it hosted several roundtables and the National Trademark Expo, and requested comments from the public on several proposed changes to its practices. USPTO online trademark systems continued to move into the future in 2011 with enhancements to the online trademark filing system and the availability of trademark records via the cloud.

Popular trademark words in 2011. Here are some of the most popular terms appearing in USPTO trademark applications filed in 2011 (through December 1st):

    • SOCIAL            753    
    • NETWORK  1,000
    • CLOUD             827
    • GREEN         1,607
    • MOBILE          708
    • BOOK               606

Louboutin’s red soles put to the test. In 2008, designer Christian Louboutin registered a mark consisting of red sole in connection with “women’s high fashion designer footwear.” Earlier this year the designer sued Yves Saint Laurent for infringement based on YSL’s all red shoes which included a red sole. The court not only failed to side with Louboutin, it indicated that the registration could not be enforced and might be cancelled. The case has since been appealed to the Second Circuit and will be watched by many fashion brands.

What to look for in 2012. Expect even more trademark disputes between brand owners related to social media and mobile applications as their use continues to grow. Louboutin’s appeal will be closely watched as the lines between fashion, aesthetics, and brands continue to blur. The biggest trademark story of 2012 will likely be the launch of the new top level domains and the challenges and opportunities they will present to brand owners.

About Erik M. Pelton: Erik Pelton is the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. Established in 1999, the firm has registered more than 1,500 U.S. trademarks for clients and represented dozens of parties in trademark disputes. In 2011, Erik presented on trademark and social media issues to a variety of audiences, including the Harrisburg University Social Media Summit, Business of Software, and American Bar Association.

© 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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Love it or leave it: iCloud from Apple

Posted by admin on: June 10th, 2011

Apple recently unveilved it’s new cloud based services, called “iCloud.” According to the Apple website, “iCloud stores your music, photos, apps, calendars, documents, and more. And wirelessly pushes them to all your devices – automatically.”

iCloud had already been used by others. And several trademark registrations are owned by other parties featuring “iCloud.” [See Xcerion AB registration for ICLOUD here.] So the name choice appears to be a curious one. Of course, Apple likely has deals with one or more of the prior users of the term. [A filing was made at the USPTO this week to  change the attorney on the Xcerion registration to an Apple's attorney.] Since the announcement last week, Apple has also now filed several new applications with the USPTO for ICLOUD.

Is “iCloud” a good brand name? I think it is too weak. While it is nice for overall branding that the iCloud name is arguably related to iPod, iPhone, iPad and other Apple brands, iCloud could be problematic. The “cloud” is a well known computer term. It is arguably generic of online computer services. Does adding “i” to the front of a generic word make it protectable? Maybe for Apple because of its other i____ brands. But the protection still could be weak.

I like the logo. It is simple but it is clean. And it is an app icon. As I have noted previously, app icons are playing a larger and larger role as trademarks. And Apple has already been at the forefront of protecting its app icons.

Overall, while the logo is nice, I think the iCloud name leaves too little to the imagination. It is arguably generic and could present problems (or at least costs) for Apple to control and/or enforce.

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Apptorney®: IP is a an iPhone app (works on iPad and iPod Touch too) our firm created last year. It contains links to the main USPTO and international pages for searching trademarks and patents.

I use it the app the time (biased opinion of course). When I think about a trademark while in line at the bank or on the subway or anywhere (yes, I am that much of a trademark geek) and want to know more about it and see if it is registered, I use Apptorney to get to the USPTO search page in 3 quick buttons, without having to remember or type any URLs. Then I search and if I find an interesting record, I pull up the USPTO TARR version of the record and click the “envelope” icon to email the TARR link to myself. Then when I return to my desk, the link is waiting for me!

We are honored that Apptorney was recently featured in “A Directory of the Best iPhone Apps for Lawyers” by Jeremy T. Brown of Jackson Walker L.L.P.

Download Apptorney from iTunes

More information about Apptorney®

What are your favorite mobile tools for I.P. lawyers?

Trademark Strategies for 2012: Is There an App for That?

Posted by admin on: February 2nd, 2011

Here are the slides from my Continuing Legal Education (CLE) presentation given at the ABA Business Law Sections’s Cyberspace Institute last week.  If you would like a copy via email or would like the handout materials containing more details on the issues and cases discussed, email me via erikpelton.com.

[slideshare id=6745003&doc=peltoncyberspaceinstitute-jan2011-final-110129085230-phpapp01]

Top Trademark Trends of 2010

Posted by admin on: December 22nd, 2010

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