Posts Tagged ‘non-traditional trademarks’

Trademark Registration 4641345, is a sound mark for a commercial jingle. It was issued to Nationwide insurance in November of 2014, and consists of “a vocalist singing the words, “NATIONWIDE IS ON YOUR SIDE” accompanied by the seven musical notes. E, G, G, G, A, C, C. In the first measure, vocalist sings “NA” [E5 Eighth Note] “TION” [G4 Eighth Note] “WIDE” [G4 Eighth Note] “IS” [G4 Eighth Note] “ON” [A4 Eighth Note] “YOUR” [C5 Quarter Note] “SIDE” [C5 Eighth Note tied to C5 Dotted Half Note of the second measure] followed by a quarter-note rest.

A recent commercial for Nationwide uses and builds upon the registered jingle brilliantly. Broncos Quarterback Peyton Manning humms the tune, and goes through practice and his routine (ice bath, driving home, eating a meal) using the tune to utter several other phrases… 50 Omaha said ‘hut’…. losing feeling in my toes…. nothing beats that new car smell.  The ad reinforces the jingle. Which makes it even catchier, even more likely to get stuck in your head.

And at the end of ad, Manning does turn on the television to find that a Nationwide ad is playing. And then the original jingle  – Nationwide is on your side – is heard through the TV. Brilliant.

The ad debuted a few weeks ago. According to an article in the Denver Business Journal, “From a paid-media perspective, it’s one of our single most effective ads ever,” [senior vice president for brand marketing Jennifer Hanley said. “From a social-media perspective, ‘Jingle’ is by far the most talked about ads in the history of Nationwide.” No wonder. The ad is fun and catchy. And uses a nontraditional trademark in a very effective manner.

Article: Peyton Manning Sings About Losing Feeling in His Toes (Denver Post)

© 2015 Erik M. Pelton & Associates, PLLC. The nontraditional trademark lawyers.®



15 years of Nontraditional trademarks

Posted by ipelton on: January 6th, 2015

As you may know, last month marked my fifteenth year in private practice filing trademark applications for clients. Over that time, I have handled many nontraditional trademarks. I even coined and registered the slogan, The Nontraditional Trademark Lawyers®!

Here are some of the nontraditional registrations obtained on behalf of clients:

  • Trademark imageThe mark consists of the three dimensional configuration of a building featuring a stepped front and a three dimensional package of fries appears on the top step, a three dimensional beverage cup with straw appears on a step below the fries, a three dimensional hot dog appears on a step below the cup, and a three dimensional hamburger appears on the bottom step; the dotted lines in the drawing are not a part of the mark but are intended to show the position of the mark on the building.
  • Trademark imageThe mark consists of a three-dimensional configuration of piece of jewelry in the shape of an infinity symbol and a heart
  • Trademark imagemark used as background on product packaging
  • Trademark imageThe mark consists of the configuration of a lumbar support cushion.
  • Trademark imageThe mark consists of the configuration of a roof; the matter shown in broken lines merely shows the positioning of the mark and no claim is made to it.
  • Trademark imageThe mark consists of the color blue in a horizontal stripe applied to the center of a rectangular license plate
  • Trademark imageThe mark consists of the configuration of a bottle used as a container for tequila and containing a totem with a stylized face on it on the inside of the bottle.
  • Mark ImageThe mark consists of three dimensional gates featuring one large span with the wording “EDEN CENTER” underneath and two small spans on each side.
  • Trademark imageThe mark consists of the non-functional elements of a three-dimensional ice cream cup costume consisting of a hot pink cup with light green spiral designs, a dark pink rectangle near the top of the cup, white and black eyes, a light pink smile, hot pink arms and hands, green legs extending from the bottom of the cup, and a light pink ice cream swirl atop the cup.

In addition, several more nontraditional mark applications filed by our firm are pending.

Top Trademark TrendsSM of 2014

By Erik M. Pelton & Associates® – The Nontraditional Trademark Lawyers®

Once again, trademarks and pop culture collided frequently in 2014. For example, more than 50 “JOHNNY ____” applications were filed this year as quarterback Johnny Manziel was drafted by the Cleveland Browns including JOHNNY MAN’Z ALE, JOHNNY CLEVELAND, JOHNNY HOCKEY, JOHNNY PIGSKIN, and JOHNNY BENCHWARMER. Another football trademark story made big news as the U.S. Patent and Trademark Office (“USPTO”) ruled in a case to cancel the Redskins trademark registrations.  Other big news stories, like the ebola outbreak, also were reflected the trademark filings. Another remarkable trademark story from 2014 was the Supreme Court, for the first time in several years, hearing a trademark case (B&B Hardware, Inc. v. Hargis Industries, Inc.). The case involves the differences in proceedings before the USPTO’s trademark appeal board and the Federal courts, and the Court will likely rule on it in the spring of 2015. Here is a summary of the year’s major trademark related developments:

Washington, DC Professional Football Team Trademark. In June, the USPTO’s Trademark Trial and Appeal Board granted a request filed by several Native Americans to cancel those trademarks that feature the term “Redskins.” However, the decision is now on appeal and the ongoing dispute, which has lasted for over a decade, continues. Following the decision, many other applicants filed trademark applications for potential team names, such as WASHINGTON AMERICANS, WASHINGTON NATIVES, WASHINGTON FEDSKINS, WASHINGTON WARRIORS.

Popular Terms: Selfie, Drone, Weed, Vape, and more. Once again, the most popular words and phenomena in pop culture made their way into many trademark filings. The 2014 word of the year, according to Oxford English Dictionary, is “Vape.”  And business owners certainly agree as more than 300 applications were filed at the USPTO featuring the word VAPE. Other popular trademark terms in 2014 included SELFIE (140+ applications), DRONE (100+ applications), and WEED (150+ applications). More than 100 filings in 2014 contain the “#” hashtag symbol. Online and environmental branding trends from the last few years contained in 2014 as SOCIAL remained popular (400+ applications), along with CLOUD (700+ applications), while more than 1,000 applications were filed featuring GREEN.

Logo Trends. As even more business and advertising moves online and via mobile devices, logos are trending to simpler smaller designs, which make them faster to load and easier to see on mobile screens. Terrific logo redesigns from popular online businesses include those from FOURSQUARE , PayPal, and AirBnB.

 PayPal Logo

Ebola. The spread of ebola was certainly a big story in 2014. At the USPTO, there were several applications filed for ebola related treatments and products including ZMAPP (Pharmaceutical preparations for treatment of Ebola virus infections), EBOLAHOL (antiviral disinfectant products for Ebola), EBOLAWAY (Antibacterial and antiviral sprays and wipes for eliminating bacteria and virii), and EBOLA OUTBREAK MAP.

Controversial Trademark Filings. The ALS Association rode a wave of viral social media activity last summer to raise more than $100 million dollars. Most of the activity was the result of the “ice bucket challenge.” The Association made quite a stir later in the summer when it applied to register four trademarks featuring the phrase, including ICE BUCKET CHALLENGE and #ICEBUCKETCHALLENGE. However, following a rapid backlash questioning the charitable intent and legality of claiming sole ownership and control of the phrase, the Association withdrew the applications.  Other questionable trademark filings included names related to tragedies, such as the MH17 and MH370 airplanes.  Last year’s trends noted the numerous BOSTON STRONG trademark application filings; as of today all but one of them has been abandoned.

Trademark scams continue. Despite one law firm’s successful quest to shutdown an operation preying on trademark holders, such scams from numerous companies offering negligible or questionable services remain prolific. Join a petition to “Request USPTO Investigation and Action Regarding Trademark Scams” here.

What to look for in 2015. Expect even more trademark disputes to go viral via social media, building upon the success of EAT MORE KALE fending off a claim from Chik-fil-A and Eat Mor Chikin. Also expect the number of nontraditional trademark filings to continue to grow as more brands protect colors, sounds, shapes, and other indicators of source featuring more than words or logos.


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© 2014 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2014, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a junior high school class.

Prior issues of Top Trademark TrendsSM

I frequently advocate on this blog that we should practice what we preach.  Many trademark law firms don’t have good slogans or logos. Many trademark law firms have not registered their trademarks with the United States Patent and Trademark Office.

Not so here at Erik M. Pelton & Associates!  Just added to our roster of registered trademarks: THE NONTRADITIONAL TRADEMARK LAWYERS®.

Get it? It is a double entendre, which makes for a fun, memorable and good trademark.

  • Nontraditional trademarks are source indicating things that are not words or designs, such as sounds, colors, shapes, mascots, uniforms, packaging, and more.
  • Nontraditional lawyers are different from traditional law firms. They use technology to provide more efficient services – the internet for research, email for communication, networks for document storage, and online systems for filing. They charge flat fees. They are smaller and nimble. They publish blogs, create apps, and use social media. They build and use proprietary software for managing dockets and deadlines. Their attorneys answer the phones and return messages promptly.

At Erik M. Pelton & Associates, we are nontraditional. And we have a great deal of experience protecting ‘nontraditional’ trademarks!

86165322 reg cert_001

Recent interesting non-traditional trademark filings

Posted by ipelton on: August 15th, 2014

Many very interesting non-traditional trademarks have been filed recently. From Gene Simmon’s “axe” bass guitar to Budweiser beer can designs to motion marks to a restaurant trade dress evoking a Mexican wrestling theme to the steeples of Churchill Downs, the range of non-traditional marks is widening in general, and the number of such filings is surely on the rise.

For example, here are some recent filings [click images for USPTO records]:

  • Trademark imageThe mark consists of the uniquely shaped three dimensional configuration for a bass guitar in the shape of an axe.
  • Trademark image The mark consists of a motion mark. The mark consists of a dog paw pressing an imprint of the paw upon memory foam and lifting and moving the paw away to show the imprint..
  • Trademark imageThe mark consists of a motion mark. Color is not claimed as a feature of this mark. The mark consists of an animation presented in a lenticular label affixed to the goods. The animation consists of a depiction of a heart being squeezed by a clamp. The drawing of the mark includes five freeze frames showing various points in the movement. The stippling is for shading purposes only.
  • Trademark image The mark consists of a three-dimensional, cylindrical can upon which appears a stylized image covering the circumference of the can consisting of silhouettes of a female and three males surfing on surf boards. Silhouettes of palm trees are shown in the background. Waves and clouds are shown via thin lines. The matter shown in dotted lines — namely, the overall shape of the can — is not claimed as part of the mark and serves only to show the position or placement of the mark on the packaging for the goods.
  • Trademark image The mark consists of a three-dimensional, cylindrical can upon which appears a stylized image covering the circumference of the can consisting of silhouettes of two females and two males playing volleyball on the beach. Silhouettes of palm trees are shown in the background. Sand and clouds are shown via thin lines. The matter shown in dotted lines — namely, the overall shape of the can — is not claimed as part of the mark and serves only to show the position or placement of the mark on the packaging for the goods.
  • Trademark imageThe mark consists of the appearance and design of the interior of a restaurant evoking a Mexican wrestling theme. The back and left interior walls are painted hot pink with light blue accented panels and wrestling pictures in gold frames. The back wall contains three clocks and four framed menus hanging from the ceiling. The back left corner contains an entrance to the restroom area with a swinging door that is gold with a design of a wrestling mask. The right wall is painted light blue and contains pictures in black frames. The right wall contains a large design of a masked wrestler wearing a cape with his hands on his hips. The interior walls are adorned with wrestling masks, pictures and memorabilia. The lower portion of the interior dining area walls is covered with black tuck upholstery with gold tufted accents. A gold booth and gold table appear on the back left side of the restaurant’s dining area. A gold chandelier and a disco ball hang from the ceiling of the dining area. The restaurant’s dining chairs are covered in a black and white zebra striped design. The entrance to the dining area contains a brown and gold vintage television with a picture of a man taped to the inside of the screen depicted on a blue background.
  • Trademark imageThe mark consists of a stylized check mark lighting design positioned with the headlights.
  • Trademark imageThe mark consists of a configuration for a top portion of a package for the goods in which a central portion is curved downwardly and bulged outwardly. The matter shown in the drawings in broken lines forms no part of the mark and serves only to show the position or placement of the mark.
  • Trademark imageThe mark consists of the configuration of a hot dog stand in the shape of a hot dog or frankfurter in a hot dog bun with the service window in a front portion of the depicted hot dog configuration.
  • Trademark imageentertainment in the nature of conducting horse races; wagering and gaming services; providing information in the field of entertainment featuring horse races, horse racing and wagering on horse races; organizing exhibitions for pre and post horse race entertainment; providing entertainment and recreational facilities; handicapping for sporting events; live musical performances