September 2018

 
Three weeks ago, I received a "Best Of" recognition from readers of our local community newspaper,  the  Falls Church News-Press. I  am thrilled not only for the votes and recognition, but for these quotes submitted by readers which sum up our firm's values and mission quite well:
  • "Incredibly knowledgeable in his field."
  • "Honest, caring, efficient."
  • "Fair, honest, easy to work with."
  • "Generous and smart.

It is tremendously rewarding to be recognized for our hard work the effort we put into providing great service and value to businesses and entrepreneurs protecting their brands. Thank you.



 
Trademark filings reflect popular culture:
a TACTICAL case study

Trademark filings generally reflect consumer habits and business trends. For example, in recent years the number of products using the word TACTICAL as part of the product name or to describe the product has surged.
  • In 2010, there were 85 USPTO trademark filings featuring featuring TACTICAL in the mark, and 129 featuring the word in the description of goods or services.
  • In 2012, those numbers increase to 103 USPTO trademark filings featuring featuring TACTICAL in the mark, and 209 featuring the word in the description of goods or services.
  • In 2014, those numbers increase to 126 USPTO trademark filings featuring featuring TACTICAL in the mark, and 281 featuring the word in the description of goods or services.
  • In 2016, those numbers increase to 159 USPTO trademark filings featuring featuring TACTICAL in the mark, and 382 featuring the word in the description of goods or services.
  • In 2017, those numbers increase to 176 USPTO trademark filings featuring featuring TACTICAL in the mark, and 508 featuring the word in the description of goods or services.
While the volume of applications has increased steadily during these years, the number of descriptions featuring TACTICAL has grown 400% in just seven years. Evidence that marketers - and consumers - have become increasingly obsessed with tactical gear and tactical qualities.


Six steps for building a strong brand

A business that follows these six steps will be on its way to having a strong brand.
  1. Choose a great name - start with a strong foundation, a name that is creative in the industry
  2. Clearance search - conduct a proper and thorough search before committing to the name.
  3. Apply to register at the USPTO - apply for trademark registration as early as possible.
  4. Market and use brand prominently - use the brand in a manner that stands apart from other text and wording; use the proper trademark symbol: SM, TM, or ®.
  5. Enforce when necessary - enforce trademark rights against infringers.
  6. Properly maintain USPTO registration - docket renewal deadlines and ensure that registrations are renewed; lapse create unnecessary expenses and risks.



 
FitzMagic

Buffalo Bills quarterback Ryan Fitzpatrick goes by the nickname FitzMagic, and he is off to a great start this season. But another NFL player, Dolphins safety Minkah Fitzpatrick, also goes by the same nickname apparently. And Minkah filed an application at the USPTO earlier this month to register FITZMAGIC in connection with apparel. Filing an application early is important to establishing trademark rights in general. If Ryan used the nickname in commerce with apparel prior to Minkah's first use or application filing date, he may have superior rights. But if Ryan did not, then he may be out of luck and may be unable to properly capitalize on marketing the nickname.

 
Julie S. Shursky joined our firm as Associate Attorney in recent months after being sworn in as a member of the New York Bar, and I have been meaning to brag!

Julie is an Associate at Erik M. Pelton & Associates, PLLC, where she focuses on trademark portfolios and brand management services, including trademark prosecution, opposition and cancellation proceedings, copyright and trademark licensing, enforcement and infringement matters, and other disputes. She joined the firm in 2018 shortly after graduating from American University, Washington College of Law, where she concentrated her studies in the field of intellectual property and practiced as a student attorney for the Glushko-Samuelson Intellectual Property Law Clinic.

Julie's passion for trademark law developed from her love for fashion and fitness. In her spare time, she enjoys teaching fitness classes, such as Zumba and boot camp, as well as traveling, hiking, and landscape photography.


 
 
If there are any topics or issues you would like to see covered here, let us know!

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This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2018 Erik M. Pelton & Associates, PLLC. 
ALL RIGHTS RESERVED.