Blog

Posts Tagged ‘trademark registration’

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
  • YOUR BACKSTAGE PASS TO HOME OWNERSHIP – Real estate brokerage
  • 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
  • ZOMBIE SLEEPING BEAUTY – Dolls
  • 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.

Timeline for trademark creation, protection and launch

Posted by ipelton on: March 25th, 2015

Of course, every new brand name has unique circumstances and timing issues. And there are a plethora of factors that can disrupt this timeline. But here is a rough ideal timeline for protecting and launching a new brand name.

  1. Search potential names for clearance, and settle on one available name.
  2. As soon as possible after Step 1, apply to register the name at the USPTO based on an intent to use the name.
  3. Application will be reviewed by USPTO approximately 4 months after filing in Step 2.
  4. Receive preliminary approval at USPTO, hopefully, four to six months after filing in Step 2.
  5. The trademark application is published in public record (the “Official Gazette”) by the USPTO approximately two months after Step 4.
  6. During the 30 day publication period, hopefully no one files an objection (“Notice of Opposition”) or an extension of time to oppose.
  7. Approximately one month after the end of the publication period, two months after Step 5, the USPTO issues a “Notice of Allowance.”
  8. Begin using the trademark in commerce anytime after the publication period in Step 6.
  9. Submit evidence of using the trademark in commerce to the USPTO and complete the registration process.
  10. 10. Receive a registration certificate approximately two months after submitting evidence of use in Step 9.

The entire registration process, for an ‘intent to use’ application, therefore takes approximately one year or longer.  If there are any delays such as a substantive refusal by the USPTO, and extension of time to oppose filed, or more than a few weeks between the Notice of Allowance and filing the State of Use, the process will take longer. If the application is completely “smooth sailing” and all filings (Statement of Use, etc) are made with days of their eligibility, it is possible to receive the registration in less than 10 months, as I did for THE NONTRADITIONAL TRADEMARK LAWYERS.

Below is the timeline from the USPTO database from on a recent registration received by a client (Registration No. 4705197), with the oldest event (filing) at the bottom:

Date Description
Mar. 17, 2015 REGISTERED-PRINCIPAL REGISTER
Feb. 13, 2015 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Feb. 12, 2015 ALLOWED PRINCIPAL REGISTER – SOU ACCEPTED
Jan. 22, 2015 STATEMENT OF USE PROCESSING COMPLETE
Nov. 07, 2014 USE AMENDMENT FILED
Jan. 15, 2015 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Nov. 07, 2014 PAPER RECEIVED
Oct. 28, 2014 NOA E-MAILED – SOU REQUIRED FROM APPLICANT
Sep. 02, 2014 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Sep. 02, 2014 PUBLISHED FOR OPPOSITION
Aug. 13, 2014 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Jul. 26, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED
Jul. 26, 2014 ASSIGNED TO LIE
Jul. 15, 2014 APPROVED FOR PUB – PRINCIPAL REGISTER
Jul. 02, 2014 TEAS/EMAIL CORRESPONDENCE ENTERED
Jul. 02, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE
Jul. 02, 2014 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jun. 15, 2014 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION WRITTEN
Jun. 12, 2014 ASSIGNED TO EXAMINER
Mar. 22, 2014 NOTICE OF PSEUDO MARK E-MAILED
Mar. 21, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Mar. 12, 2014 NEW APPLICATION ENTERED IN TRAM

EMPA Logo

Your products or services need not be flashy to have a catchy slogan. As I have written in the past, even manure companies and garbage services have trademarks. Industrial packaging companies can have great slogans. Every single service or product variety can have a brand. Electrical supply companies have brands.

IMG_5933

Earlier This week I saw the truck in the photo from Atlantic Electric Supply on the road. The name might be unexciting, but the slogan is terrific: Grounded in tradition. Connected to the future. It is witty, unique, and memorable! And it tells you something about their business — they have been around, but can keep up with recent technological changes.

If only they had been wise enough to protect the slogan better by applying to register it with the USPTO….