Posts Tagged ‘trademark registration’

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

More great food truck trademarks

Posted by ipelton on: November 11th, 2014

The food truck craze continues to grow. Last year, I wrote about some great truck names that I had seen. Now, here are some more fantastic food truck trademarks that I found in the records of the USPTO [click marks for USPTO records]:

Know of another great food truck name that I missed? Let me know!




After 5 years of registration, a trademark on the principal register at the USPTO is eligible to receive “incontestable” status.

What is incontestable status?

  • The incontestable rights are provided under the law in Section 15 of the Lanham Act (15 U.S.C. Sect. 1065).
  • An incontestable mark cannot be challenged unless
    • it has become generic,
    • it has been abandoned, or
    • it was obtained by fraud.

How do I get incontestable status?

  • A registered mark can file for incontestable status after 5 years of registration.
  • The owner must sign a declaration stating that has been continually used by the owner during that five year period.
  • The registration must not be subject to a legal challenge or decision against it.

Why does this matter?

An example: when Park ‘N Fly, Inc. sued Dollar Park and Fly, Inc. for trademark infringement, the Supreme Court ruled that because the Park ‘N Fly mark had obtained incontestability status, Dollar Park and Fly, Inc. could not claim that its rival’s mark is descriptive and weaker. (Park’N Fly v. Dollar Park and Fly 469 U.S. 189 (1985))

In short, having an incontestable trademark registration could save tens of thousands or dollars – not to mention the hours and headaches – in a trademark dispute. It is an added layer of insurance for the investment in your trademark and your brand.

TIP: While filing a declaration of incontestability is not required, it is advisable. When a trademark has been used and registered for five years, the owner has already invested quite a lot in the brand. Generally, the investment to make the registration incontestable provides a good value.

The USPTO announced last week, at the TPAC meeting, that it will begin sending notices via email to trademark registrants about upcoming deadlines for Section 8 declarations of continued use (due between the 5th and 6th anniversary of the registration) and Section 9 renewals (due every 10 years after registration).

Since these renewals will be sent via email, trademark registrants can only receive them if they have a valid email address on file with the USPTO.

The USPTO’s formal announcement is here: USPTO to Issue Courtesy Email Reminders of Registration Maintenance Filing Deadlines

TIP: Trademark registrants who obtained a USPTO trademark registration without having counsel, it would be wise to check the TSDR records and make sure that the correspondence information lists a valid email address. If no email address is listed, Registrants can file a “Change of Correspondence Address” electronically with the USPTO to include an email address and to check the box authorizing email communications.


I recently rode my bicycle past the Jonathan Adler store in Georgetown. The windows of the home furnishings and pottery store feature great slogans that are memorable and fun!

“where lonely sofas meet perky pillows”


“you 24-hour pot dealer”

image from


Tip: Got a great slogan? Want to make sure others can’t use it? Register it with the USPTO!