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5 trademark lessons from Pokemon GO

Posted by ipelton on: July 21st, 2016

Unless you have been under a rock for two weeks, you have heard for the summer gaming fad, Pokemon Go. Like or not, the fad is here for a while this summer (will it last longer than the “ice bucket challenge” of a few summers ago?).

Here are five trademark lessons from the Pokemon Go mania:

  1. Be prepared. File trademark applications with the USPTO early, before commerce (based on an “intent to use”) so that when the product or service launches protection has already begun and it is more difficult for someone (or a competitor) to cause trademark problems. Nintendo Co. Ltd. filed three US trademark applications for the Pokemon Go logo on March 3, 2016.
  2. Old brands can become new brands. Nintendo’s first POKÉMON trademark applications were filed in December of 1997. The brand never went away, but Pokemon Go is certainly a new resurgence. Many “old” brands are still valuable and strong brands. (For example: Ford, Macy’s, Jack Daniel’s, Paramount Pictures, NBC, and many others.) It also helps that Pokemon is a unique and strong name.
  3. Defining the goods and services in USPTO applications is critical. To receive proper and full protection, the USPTO applications, and registrations, must describe the good and services used with the trademark thoroughly and accurately. Here, Nintendo’s attorneys filed three separate Pokemon Go applications to cover video game devices, online gaming services, and video game software.
  4. Ensure that ownership is proper. The Pokemon Go game is reportedly a partnership of several companies. The trademark applications were filed by Nintendo Co. Ltd. Proper ownership of trademarks- and proper documentation – is especially important in joint ventures and other business relationships involving multiple entities.
  5. Use proper trademark symbols. On the www.pokemongo.com website, the Pokemon Go logo appears with a ‘TM’ next to it to indicate that it is a trademark. Use of the proper trademark symbols strengthen the brand with consumers and under the aw.

Mark Image

Trademark Tip: Searching logos at the USPTO

Posted by ipelton on: July 12th, 2016

When searching for images in the USPTO’s TESS trademark database, there are two ways to search: via the ‘description’ field and via the ‘design code’ field. Both are useful and many times both should be used.

The reason both should be used is that, for example, the image below could be described as a word with a smile below it. Or it could be a word with a line and arrow. Or both. If you online search terms in the description field of TESS, it is possible that the applicant and USPTO described the logo quite differently. (Here, the USPTO description currently reads: ‘The mark consists of the word “AMAZON” with an arrow under the word “AMAZON” that is pointing from the “a” to the “z”.’ and makes no reference to a smile.)

In the USPTO records, each image not only contains a description, but a design code. The codes are assigned by the USPTO in accordance with the USPTO’s design code manual.Different types of shapes and images and symbols have different codes – there are hundreds of them. For example, a search for the code 241720 will find all marks that have peace symbols in them (341 current registrations of them when I ran the search this week).

 The main trouble in searching designs is that there is no one way to describe or code them, most designs could be accurately described using a variety of different words. For example, how would you describe this image?
Of course, there is a lot of nuance and experience that goes into searching – and comparing – design images. Just one more reason that an experienced trademark attorney is a great investment.
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Five basic trademark application tips

Posted by ipelton on: May 10th, 2016
The trademark application process at the USPTO is generally long, complex, and full of deadlines. Errors have the potential to limit or jeopardize your trademark rights, result in a void application, delay the application process, or result in loss of the non-refundable USPTO filing fees.
When I file trademark applications with the U.S. Patent and Trademark Office (I have filed more than 3,000), here are 5 tips I follow:
  • Search first. Search the USPTO (consider variations in spelling, spacing, and word order) so that you know what potential obstacles lie in front of the application. Of course, a comprehensive clearance search should be done as well because someone using a similar mark prior to you in a related or competing industry, even if they do not have a registration, is a significant potential problem.
  • Words are generally more important than designs. A registration for a design technically covers just that design. A registration for words (a “standard character” trademark) covers all variations of the wording. In other words, when you register a logo you can only use ® next to the logo. When you register words, you can use ® whenever those words are used – in text, in logos, and more. Registering words alone will also provide better protection regarding domain names and usernames.  Note that creative and distinctive logos should be protected, but they should be generally be protected in a separate application. But while generally protecting wording is more important, sometimes the best registration strategy – due to descriptiveness issues or potential conflicts – may be to file only for a design.
  • Black and white is better than color. A large majority of the time, it makes sense to file in black  and white, which protects all colors, rather than to technically protect only the color scheme provided in a color image.  Of course, when color is integral to the brand, it may make sense to file in color – or to file two applications, one black and white and one covering particular colors.
  • Be Patient. It takes the USPTO about 3 months on average to open a new application and review it for the first time (and this is much better pendency than in the past).  In general, when filing based on use of the trademark in commerce, the entire registration process takes about 1 year – and can take far longer if there are hiccups in the process or a “suspension” of the application pending the outcome of some other earlier filed applications.
  • Check the status. To make sure the process is completed as quickly as possible, it is advisable to stay on top check the status every month or so – at a minimum – via the USPTO website to ensure that a correspondence from the USPTO – generally via email – was not lost or missed. Our custom built internal software checks the USPTO status for each application we handle every single day – and is a savior because on occasion USPTO emails get bounced,  or physical mailings get lost, delayed or sent to the wrong address. I have also created a free cloud-based tracking tool that anyone can use, sofTMware (www.softmware.com).
The  “road” to registration is full of bumps, potholes, detours, wrong exits,  and toll booths. The end of the “road” that results in a trademark registration is worth the trip to strengthen a brand, create tangible intellectual property assets, and make issues with infringers generally much easier, quicker, and cheaper to resolve. When embarking on the application trip, keeps these tips in mind and remember that the guidance of an attorney “chauffeur” who has navigated the course many times before will make the ride much safer!

If your business might wish to take advantage of the new business opportunities for US companies in Cuba, consider proper trademark protection as well. Even under the prior embargo, US companies were permitted to file trademark application in Cuba. Now that the embargo may be amended or lifted, US companies that could have business interests in Cuba need to consider trademark ramifications. This is a particular concern because Cuba is a “first-to-file” country, meaning someone could obtain rights by registering a brand name even if they have not made any commercial use of the name.

File:Flag of Cuba.svg

Addition reading:

Trademark tips for bloggers

Posted by ipelton on: August 7th, 2015

I am frequently asked questions about blogs and trademarks. Blogs are a service, even if they are not for profit and have no way of making money, and blog names can be protected by trademark law. Which means that blog names can be registered as trademarks with the USPTO. For example, this blog is called IPelton® and is a registered trademark. In the USPTO registration, the services for IPelton are described as “On-line journals, namely, blogs featuring information and observations in the fields of law, branding, and intellectual property.”

In 2014, the USPTO saw more than 3,500 applications for trademarks featuring “blog or blogs” in the description of goods and services.  Ten years earlier, that number was just 18!

Here are some trademark tips for blog owners:

  • Be creative. A creative name is more more likely to be unique and much easier to protect, generally. For example, one of my favorite blog titles is a cheese blog called, It’s Not You, It’s Brie®. Search the internet and the trademark database at USPTO.gov to make sure it is unique in your industry.  Check domain name availability and use as well.
  • Make it stand out. When using the name, put it in a different font, color, bold or italics to make it stand out. That way it helps demonstrate that the title of the blog is special and that you want to call attention to it and protect it.
  • Use proper trademark symbols. Use “SM” on the right shoulder of the title if the name is not registered. If it is registered, use the ® as frequently as possible. Showing others that you are protecting the name makes it a stronger brand and enhances the legal protections for it.
  • File to an application with the USPTO to register the trademark for name of the blog.
  • Register the corresponding .com domain name, even if you do not intend to use it. The annual cost is worthwhile insurance to prevent someone else from using the .com and causing you headaches and potential legal bills.
  • Register the corresponding social media usernames on major social media sites. Even if you never use the names, there is a value in making sure someone else cannot use them.
  • Monitor for infringement. Set up a free Google alert or use other methods to check periodically for copycats. If you learn of an infringement, consult with an attorney. If you do not make an effort to stop infringers, your rights in the name will generally be weakened.

Most blogs, like this one, are informational. But they serve several important purposes – enhancing credibility, improving search engine ranking, content creation, marketing, and demonstrating expertise – and thus have a significant value to the author. To protect the investment – of time, energy, and money – in that valuable blog asset, blog owners should strongly consider the tips above including trademark registration.