Posts Tagged ‘trademark registration’

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.

How to use your trademark on your book

Posted by ipelton on: August 17th, 2015

A book title cannot technically be protected under trademark law, unless it is the title for a series of multiple books. See TMEP §1202.08.

But that doesn’t mean that an author cannot use a or phrase that he or she have registered as a trademark for other services to also serve as the title of a book they wrote. It just means that technically the use as the title is not protected to stop other book titles.

But having a trademark associated with the book title is useful when possible, because it will help you control the relevant domain name(s) and social media profiles. And it will be in the public records at the USPTO. And it will mean that others are less likely to use the name as their book title (even though they might technically be able to under the law) if they will have trouble promoting it because of your use and registration of the name for other services (such as a blog, information website, seminars, consulting, etc).

In addition, if you write a book and the title is separate from the trademark used to identify your services as a professional or expert in a field, you can still use and promote your trademark on the book. See for example these uses on the backs of two book to promote the authors’ brands, Mr. Media Training® and LawBiz®:



Disclosure: Ed Poll is friend, Brad Phillips is a friend and a client!

Recent Client Trademark Registrations LXXX

Posted by ipelton on: July 24th, 2015

The following is another update of recent Erik M. Pelton & Associates client trademark registrations obtained from the public records of the USPTO so readers can see real  examples of brands and marks which are being protected – and the wide range of variety in brand names, logos, products and services. [Click trademark or logo to open USPTO records in a new window]

  • TEXTURADO – Providing awareness, namely, promoting public awareness in the field of safe driving
  • FIST PUMPKIN – Beer, Ale
  • WITTY IN THE CITY – On-line journal, namely, blog featuring stories, recipes, and photographs about food, cooking, pets, and life
  • PITA POUCH – Restaurant services
  • ROBBINBOOKS – online retail store services featuring textbooks
  • TRANSPORTATION DATA SOURCE – Providing a website featuring a search engine for transportation industry and motor carrier data
  • Mark Image – Physical fitness instruction; consulting in the field of fitness, exercise, athletics; Personal fitness training services; Physical fitness instruction; Conducting fitness classes; Physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; Physical fitness training services; Providing a website featuring information on exercise and fitness; Providing fitness and exercise facilities
  • Trademark image – Mobile restaurant services; food truck services, namely, providing of food and drink via a mobile truck
  • Trademark image – Providing awareness, namely, promoting public awareness in the field of safe driving
  • BIG STORY – business consulting in the fields of data, Big Data, data analytics, marketing, market research, native advertising, brand marketing, search and search technologies, virtual learning, coaching for business, brand storytelling, business communications, games for business communication, gamification, organizational effectiveness, leadership storytelling, organizational development, organizational effectiveness, branding, brand strategy, storytelling and story creation, creativity training, HR and talent management, communication training, enterprise architecture, leadership, intercultural communication, personal development tools and applications, communication technology, quantum storytelling, storytelling technology, behavioral science, organizational science, critical theory, education, customer acquisition, customer service
  • J/SLIDES – Footwear
  • Trademark image – Drug testing kits comprised of medical diagnostic reagents and assays for testing body fluids
  • FINEDINER – Mobile software application for logging, cataloging, searching, and reviewing restaurants in the field of food and restaurants
  • PEACE OF MIND MADE EASY – Services provided by locksmith, namely, changing, installation, replacement and repair of locks
  • SHENANDOAH STONE SUPPLY CO. – Warehousing services, namely, distribution of landscape and garden products and accessories, construction products and accessories, natural stone, concrete and masonry; delivery of landscape and garden products and accessories, construction products and accessories, natural stone, concrete and masonry
  • COLORED BOOBIES – providing information in the field of breastfeeding; providing a website resource featuring information in the field of breastfeeding
  • NOPROB – providing a website for business featuring technology allowing users to automate customer ordering, sales tools, payment, and inventory management
  • SHISHAJUANA – Hookah tobacco
  • Trademark image – providing a website for business featuring technology allowing users to automate customer ordering, sales tools, payment, and inventory management
  • Trademark image – Dolls
  • FLOW-WAND – Play wands

Trademark application for AMERICAN PHARAOH filed this week

Posted by ipelton on: May 15th, 2015

On May 10th, someone named Azar Nuben filed an application with the USPTO to register the AMERICAN PHARAOH trademark in connection with clothing. The application claims use of the name in connection with shirts since December 5, 2014.

The winner of the Kentucky Derby two weeks ago was American Pharoah  – misspelled. 

A strange coincidence or development?

If American Pharoah wins the Preakness tomorrow and thus has a chance to win the Triple Crown, I imagine that the horse’s owners will be applying to register AMERICAN PHAROAH early next week. The amount of money and branding potentially available to a Triple Crown winner certainly makes the investment in a few trademark applications worthwhile.

The evidence of use submitted with the trademark application is below:

Related Posts:

Because I like to practice what I preach, our firm owns more than 10 trademark registrations. An application to register Tuesday Trademark Tip. That application was refused registration on the Principal (or stronger) register, as the USPTO has asserted that the name is descriptive. I contested this ruling and appealed it to the administrative judges of the Trademark Trial and Appeal Board (TTAB). A hearing in the appeal was held recently.

A decision of the USPTO refusing an application for registration can be appealed to the TTAB once it is a “Final Office Action.’ The appeal is called an Ex Parte Appeal. The applicant and the USPTO examining attorney each submit briefs. A hearing is held if the Applicant requests one. And then the judges then make a ruling. The entire process can take about year from the time the appeal is started, especially if the applicant requests a hearing, which takes some time to schedule.

The decision – and the hearing if there is one – is by a three judge panel. During the appeal process, no new evidence can be entered into the record by the Applicant or the Examining Attorney. The USPTO filing fee for an Ex Parte appeal is $100.

The hearing allows the Applicant 20 minutes to argue and the Examining Attorney 10 minutes.  The Applicant may reserve some of its time for rebuttal.

The hearings are open to the public.  Parties – and even judges – may appear in person or via live video transmission.

I always advise that an appeal is an “uphill battle” but if there are strong arguments that the USPTO has ignored or evidence that has been misunderstood, it may be worthwhile to get the case in front of three new faces instead of the examining attorney who has already made up his or her mind.


Pictures outside of the USPTO last recently following my hearing on the Tuesday Trademark Tip application.