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Posts Tagged ‘trademark registration’

Three trademark challenges faced by small businesses

Posted by ipelton on: April 18th, 2016

There are three particular concerns that affect small businesses when protecting their trademarks:

  • cost
  • prioritizing which trademarks to protect within a portfolio of brands and logos
  • finding a law firm that they are comfortable working with

For more on these challenges, see my video below:

Of course, there are many challenges for small businesses when it comes to trademark protection, but these are three of the most common and most important.

An article I recently co-authored with Elizabeth M. Dukette (a recent law student intern at our firm) has been published by the American Bar Association Section of Intellectual Property Law in its LANDSLIDE magazine.

’Cause They Never Go Out of Style: Why Musicians Are Registering More Trademarks Than Ever

“[O]btaining trademark registrations in a band name or other marks used by an artist can be useful to protect profits and prevent the dilution of a valuable brand. Further, taking the steps to clearly identify who owns what part of that bundle of rights upon dissolution could prevent long, expensive, and potentially damaging litigation.”

FireShot Screen Capture #927 - 'Meeting of the Minds—’Cause They Never Go Out of Style_ Why Musicians Are Registering More Trademarks Than Ever I Section of Intellectual Property Law

The article discussed efforts by musicians to protect their brands, as well as frequent trademark pitfalls that they often encounter. The article discusses why trademark registration is valuable when it is available for musicians and other artists.

Please enjoy and share the article, and let me know any feedback you have in the comments below.

Top Trademark Misunderstandings

Posted by ipelton on: January 22nd, 2016

I am pleased to share the first of my series of new videos. In this video, I speak about three top trademark misunderstandings. Let me know what you think! And thank you to the incomparable client and friend Chad Barr for the video shoot and production!

Top Trademark Trends of 2015: Supremes, Slants, Swiftmas, and more

Posted by ipelton on: December 30th, 2015

Top Trademark Trends™ of 2015

By Erik M. Pelton (Erik M. Pelton & Associates®)

In 2015, the field of trademarks featured many developments. Two major court cases featured significant developments but left much unsettled. Nearly every major story in the news was followed by related trademark issues. In all, 2015 was an exciting year for trademarks.

US trademark filings increase again. For the sixth year in a row, the number of trademark application filings submitted to the US Patent and Trademark Office (“USPTO”) has increased. However, this year’s increase of nearly ten percent was even larger than those of the last several years. As a result of the increased filings in recent years, the overall number of active US trademark registrations sits at an all-time high, nearly 2.1 million.

Supreme Court weighs in on trademark law. In March, the Supreme Court issued its first significant trademark ruling in years. B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). The Court held that proceedings at the Trademark Trial and Appeal Board (“TTAB”) of the USPTO have a preclusive effect in later District Court actions when the proper conditions are met; it may take a few years before we know the full ramifications. In the short term, it means that the decision for some trademark plaintiffs whether to file a claim at the TTAB or in District Court may be more complicated, and the stakes may be raised in all trademark disputes as the consequences are more significant.

Refusal to register “disparaging” trademarks held unconstitutional. In December, the Court of Appeals for the Federal Circuit (“CAFC”) held that the USPTO was wrong to refuse to register the name of a band, The Slants, on grounds that the name is disparaging. The CAFC held that the portion (in Section 2(a)) of the Lanham Act statute barring registration of disparaging terms violates the first amendment protections for private speech. The case could be appealed to the Supreme Court in 2016, and will likely affect the years-long saga involving the Washington Redskins trademarks.

Google and other logos get sleeker. Google unveiled a major logo redesign, but the design change was minimal. The significance of the change is that it created a more streamlined and sleek design package. In 2015, Verizon, Facebook, Spotify, OpenTable, and others also made subtle tweaks to their logos, all of made for simpler designs that are easier to read on small screens. As more brand interactions are online and mobile, look for other brands to simplify their logos next year as well.

Pop culture reflected in trademark applications. Major events in the news throughout the year were reflected in trademark application filings. For example, there were filings for Je Suis Charlie, Cecil the lion, Caitlyn Jenner, Donald Trump’s Make America Great Again, and Deflatriots. Taylor Swift also made news by filing scores of new trademark applications in 2015, including SWIFTMAS.

On tap for 2016. I predict that next year in trademarks will include further developments in the Redskins and Slants cases regarding allegedly disparaging trademarks, an increase in some USPTO trademark filing fees, and a meeting of the five largest trademark offices (the ‘TM5’) in China next fall. Despite a contentious presidential election, companies will continue to innovate and to invest in new trademarks.

© 2015 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®, 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 2015, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a high school class.

Past editions of Top Trademark Trends™:

Only one trademark question matters for businesses. Most small business owners look into trademark protection and consider whether they can afford the costs of protecting their trademarks? Yet this is not the correct question.

The real question that small business owners should ask is: Can they afford not to protect their trademarks?

Potential Costs Resulting From Unprotected Brands:

  • Greater chance of being copied inadvertently since the trademarks are not listed in the USPTO database
  • Greater chance of being copies intentionally since the ® cannot be used
  • Greater costs (lawyers, court fees, and more) when going after copycats and infringers in general
  • Greater risks and stress when going after copycats and infringers in general
  • More company time drained when going after copycats and infringers in general
  • Failure to show consumers the importance of your brand
  • Less valuable brand assets to monetize in a sale of the business
  • More challenges to license or franchise the brand
  • Reduced brand credibility
  • Potentially missing opportunities for protection by US Customs
  • Missed opportunities to stop cybersquatters
  • Missed opportunities to reclaim social media usernames registered by others

Yes, trademark protection is an expense. But there is nothing you can do for your brand that provides more protection – and insurance – than obtaining a trademark registration from the USPTO.