1.6 : August 2010


brand and trademark newsletter from
Erik M. Pelton & Associates, PLLC

In This Issue
Trademark Tip
Trademarks in the News
Firm News

Interact with EMP&A

Upcoming Events
Speaking Engagements:

  • Falls Church Arts: presentation about copyright and trademark – Sept. 14, 2010
  • Social Media Summit panelist:
    Harrisburg University of Science & Technology – September 15, 2010
  • National
    Association of Professional Background Screeners: 2010 Mid-Year Meeting
    Oct. 10-12 @ La
    Jolla, CA
  • IVAA Online VA Summit: October 8, 2010
  • Video from Erik’s recent presentation “Leveraging Your Intellectual Property” can be found here.
Contact us at:

Erik M. Pelton & Associates,
PO Box 100637
Arlington, VA 22210
f 703-997-5349
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Trademark Tip: 5 Free Ways to Monitor Your Trademark
To maintain and increase protection of a trademark, the owner must
guard against unauthorized use or infringement. Generally, the sooner
such a situation is discovered the easier it is to resolve, and the less
impact it will impose upon the trademark owner. Conversely, the more money
an infringer or cybersquatter has invested into his or her business, name, or
website, the more likely her or she is to put up a fight against a claim of
infringement. Doing nothing about a known infringement situation for a long
period of time can lead to laches,
a legal theory that could prevent you from later enforcing any
rights you may have once had. On the other hand, evidence that you have
vigorously pursued infringements can be used as evidence in future
trademark disputes to demonstrate the strength of your trademark.
As a result, consistent monitoring of a business’ trademarks has
great value because quickly finding and addressing infringements costs less and generally strengthens your mark.

Here are 5 free resources for monitoring your brands:

  • Google Alerts:Google will grab items from all over the web – including news, blogs,
    and websites – and will then email you results matching your
    trademark.  You can be alerted daily, weekly, or “as it happens.” This
    is a wonderful resource.  If you have a name with multiple words,
    consider using quotes. Also consider creating several alerts with
    variations of your trademark(s) in spelling and spacing (and singular
    vs. plural).
  • Scour the web: Search a variety of websites for
    variations of your trademarks.  Set a “reminder” in your task or
    calendar program to do this monthly. A great website for searching
    multiple search engines is Window1.
  • Industry search: Make a bookmark list of several
    main online resources in your industry. News sites, publications, blogs,
    etc. – any site with comprehensive and popular coverage of the relevant
    industry.  Search on those main sites for your trademarks quarterly.
  • USPTO: The USPTO records of registered and pending trademarks can be searched for free. Check quarterly for any new applications that might be infringements
    of your trademarks. Consider variations in spelling, sound and spacing
    in your searching to capture names which may not be identical but very
  • Username search: Check for usernames containing
    your trademarks that are registered and used on the major social media
    and other websites. A free search of 400 social media websites is available
    from KnowEm.

Tip:Once you learn of a possible infringement, unauthorized use, or
cybersquatting, consult an attorney for options to address the matter.

Trademarks in the News

Here are a few recent interesting trademark situations in the news that underscore the importance of having good advice before filing a trademark application or sending an infringement demand letter:

  • Subway is attempting to own exclusive rights to the FOOTLONG name for sandwiches. They
    even sent a cease and desist letter to “Coney Island Drive Inn, a
    restaurant in Brooksville, Florida, that has been selling 12-inch hot dogs for more than 40 years and calling ‘footlongs.’
    Listen to NPR  story for more; also see my blog post about about Subway’s efforts.
  • The FBI (yes, that FBI), recently sent a cease and desist letter to Wikipedia regarding its use of the FBI logo in reference materials about the FBI. Story here. FBI counsel’s letter here; response here. Wikipedia page here(no doubt the page has receive far more traffic since this incident was
    reported than it would have otherwise over the next 10 years combined).
    The FBI claimed that Wikipedia was violating a federal statute, but their letter
    selectively quoted from that statute and (in my
    opinion) misconstrued its meaning.
  • The National Pork Board’s attorneys sent a cease and desist letter to a
    website regarding an April Fools Day advertisement for a fake product: canned Unicorn
    meat, “the new white meat.”  The lawyers apparently didn’t realize it was fake, having not studied the website nor the general lack of “unicorn meat.”
  • Nicole Polizzi, better known as “Snooki” of Jersey Shore fame, was denied in her attempt to register the Snooki name for books due to a likelihood of confusion with the registered trademark for series of children’s books called “Adventures of Snooky.” As expected, the media has not quite reported accurately. Many stories question whether she will “Appeal” the decision when in fact she automatically has the right to file a response to the initial letter from the USPTO. Also, the refusal only applies to registration of her trademark for books; it will not block her application to register Snooki for “Entertainment in the nature of
    personal appearances by a television personality,” and it may not prevent her from using the trademark for a book.

Firm News
The last six months have provided a record number of oral arguments by our firm at the Trademark Trial and Appeal Board in such a span – four. These arguments are the last chance to make the client’s case in an appeal or dispute and are an excellent opportunity to have a dialogue with the panel of judges in each case and address their questions. Oral arguments also provide an opportunity for the judges to get to know us, the quality of work we do, and the vigor with which we represent each client’s case.

Did You Know?

In the first 7 months of 2010 164,217 trademark applications were filed at the USPTO? During the same period in 2009 155,385 applications were filed. Another sign that the economy is growing and improving!

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

© 2010
Erik M. Pelton & Associates, PLLC.

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Erik M. Pelton & Associates, PLLC | 311 Park Ave | Suite 1A | Falls Church | VA | 22046

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