April 2021

This month's newsletter focus is education. Below I share a video I made for the local middle school career fair explaining what work as a trademark lawyer like. And since last summer, I have had the wonderful experience of teaching law school students about trademarks at Howard University School of Law. I have not only enjoyed sharing my 20+ years of experience with these enthusiastic students, but I have learned even more about trademark protection and trademark registration myself. By teaching trademark fundamentals, I have to constantly review, reassess, reframe, and explain brand protection concepts.

I have found that working with the students actually leads to me learn and hone my understanding at the same time that I am conveying what I know. It has been a welcome bonus that teaching this trademark clinic is also educating me with fresh perspectives and insights that I am now incorporating into my work with clients!

Explaining Trademarks to Middle School Students

I recently made a video for the local middle school career fair, in which I explain trademarks, my work, and why I’m so passionate about it. I had a great time speaking to our future leaders and entrepreneurs! Check it out at it at https://www.youtube.com/watch?v=AUSoYO9PjdU

Differences Between TEAS Plus and TEAS Standard Trademark Filings with USPTO

There are numerous and significant differences between the two USPTO TEAS trademark application forms. A TEAS Plus application has a lower filing fee, currently $250 per class. But, in exchange for the government giving you a lower filing fee, a TEAS Plus applicant has to meet certain requirements upfront and throughout the application process, and there is a penalty fee if those requirements are not met. The most important limitation by far is the limitation when using TEAS Plus forms in describing the goods and services. When you file TEAS Plus, you can only select from the pre-approved list of descriptions of goods and services that the USPTO publishes.

There are many great descriptions and useful things on the pre-approved list, but it has significant limitations, particularly in many industries that are nuanced or complicated to describe. As a result, I generally avoid TEAS Plus applications and favor TEAS Standard applications. Today, a TEAS Standard application has a filing fee of $350 per class of goods or services. But, if you file a TEAS Standard you never have to worry about the penalty of failing to meet the requirements; if you file a TEAS Plus and you don’t meet the requirements at some point along the way, you are penalized $100 as wall as the additional time involved.   Due to the limitations for the description of goods and services – and the description of goods and services is a very important part of the application, and can be very important in dealing with likelihood of confusion arguments and differentiating one mark from another mark – I personally don’t like the risks and limitations of using TEAS Plus.

A few weeks ago, I caught most of the GRAMMY® award presentations and performances on TV, in deference to my teenage kids! I notice a familiar theme, however: nearly all the top musical acts are well protected with trademark registrations.

At Erik M Pelton & Associates, PLLC, we are very proud of our achievements for pro bono work. We strive to give back to the community in many ways, and pro bono services are one such way. Erik was recently named to the DC Pro Bono Honor Roll for the seventh consecutive year.

If there are any topics or issues you would like to see covered here, let us know! ------------------------------------------------------- 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. © 2021 Erik M. Pelton & Associates, PLLC.  ALL RIGHTS RESERVED.