Issue 1.2 of our newsletter.

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1.2 : April 2010


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

In This Issue
Trademark Tip
Trademarks in the News
Firm News

empa logo

Interact with EMP&A

Upcoming Events

  • International Trademark Assoc. Annual Meeting (Boston, MA) – May 22 – 26, 2010

Speaking Engagements:

  • Software Industry Conference (SIC) (Dallas, TX) – July 15-17, 2010
  • National
    Association of Professional Background Screeners – 2010 Mid-Year Meeting
    October 10-12 La
    Jolla, CA
  • Erik
    recently spoke on video with Patrick Reilly of IPSociety about handling
    infringements. The recorded video can be found here

Contact us at:

Erik M. Pelton & Associates,
PO Box 100637
Arlington, VA 22210
f 703-997-5349
Join Our Mailing List


Welcome to issue number two of smar(tm)arkSM, the monthly
newsletter from Erik M. Pelton & Associates about protecting, enhancing,
and leveraging your brand.  Notice how there
is now an “SM” on the right shoulder of the newsletter name.  The “SM” is used because the newsletter name is
a brand name, it is used to market and promote the firm, and we have filed to register it as a trademark. (Yes, we practice what we preach!)  For more information about trademark symbols
– TM, SM and ® – see below.

Trademark Tip: Proper Trademark Usage

Following a few basic guidelines for proper usage of trademarks can improve
your legal protections and add value to the brand by reinforcing to customers
that the mark identifies you and only you.  Here are a few quick tips on
proper use of a trademark:

  • Do not use it
    as a verb.
    Despite the wishes of Microsoft’s CEO (see here), generic use a
    trademark diminishes its value and may harm its legal protections. While it can be flattering when
    others refer to your brand as the entire category of a product or
    service, educate your customers, vendors, and partners about how to
    properly use your
    trademarks. A
    person cannot Xerox® papers, they make a copies using a Xerox® device.
    Linoleum, Escalator, and Asprin used to be registered trademarks, but were
    cancelled when they became generic names. For a fascinating list of generic trademarks and more in
    jeopardy of becoming generic, see here.  Google® fights back against people using its
    brand name to be synonymous with ‘searching’ on the internet.
  • Make it stand out.Make sure everyone knows that you are using a trademark – put brand names
    and slogans in bold type, italics, different font, or otherwise make them stand
    apart from the rest of the copy on your website and materials. This
    reinforces that the highlighted text is special, is your brand, and has value.
    And it helps add to your protection by showing the public that it is not just
    any wording, it is protected trademark wording.
  • Use the correct symbols! The ® is for federally registered trademarks.
    (TIP: on a full keyboard you can generate the symbol by holding down the “ALT” key and 1,7,4 on the number pad.) Technically, the circle-R
    should only be used for goods or services which a USPTO registration covers.
    If a registration covers tires, but the brand name is also used on
    headlights, the packaging for the headlights should not use the symbol (and
    perhaps a new registration should be obtained to cover headlights).
    • The TM (trademark) or SM (service mark) symbols may be used by anyone who claims
      rights in a mark, whether or not they have filed an application with the
      USPTO. This claim may not be valid, but asserts that the owner is
      claiming or seeking some trademark protection in the word, logo, or slogan. TM is properly used in connection with
      physical goods (computers, coffee beans, eyeglasses, etc.), but SM is properly used
      in connection with the provision of services (website, consulting, retail store
      services, real estate agent, etc.)
    • Where
      are the symbols used?
      Generally the
      proper symbol should be used on the upper right ‘shoulder’ of the
      relevant text.  For a logo, placement on the upper right or
      lower right corner is generally accepted use.
    • When are the symbols used? Use them
      often.  You do not need to use them every time your
      trademarks are used, but you should use them frequently, especially on the
      most visible uses of your trademarks, letterhead, first website
      page or
      top of website pages, business cards, etc.

Trademarks in the News:
Maker’s Mark Wax Seal

Traditionally, trademarks are brand names, logos, and slogans.  But
they can also be shapes (Coke bottle), colors (pink for insulation, purple for sandpaper, and
more), sounds (NBC chimes), patterns (Burberry fabric, Yankee pinstripes),
and more. A trademark can be anything that distinguishes your brand from the competition.

empa logoempa logo

[Maker’s Mark and Cuervo Reserva bottles (A.P.)]

A recent opinion by

the United States District Court of the Western District of Kentucky ruled
that the red dripping wax seal used to bottle Maker’s Mark bourbon is a
protected trademark. The court issued an injunction barring Cuervo from use of
similar red dripping wax on its spirits.  “The court considers the red
dripping wax seal inherently distinctive, because it is a unique mark used in
an unusual way to draw in the consumer,” Judge Heyburn wrote.

The judge
got the decision correct in my opinion.  Anything unique to promote and
distinguish your brand in the eyes of the consumer may be protectable as long
as it is not just a functional part of the product. Consumers familiar with
Maker’s Mark, upon walking into a bar and seeing a bottle on the shelf topped
with dripped red wax, would be likely to presume that the product came from or is
related to Maker’s Mark.

The red dripping wax configuration has been registered to the parent company of
Maker’s Mark since 1985 with the following description of the trademark: the
mark consists of a wax-like coating covering the cap of the bottle and
trickling down the neck of the bottle in a freeform irregular pattern.
They also have separately registered the
color red as applied to the seal on the bottle neck. Note that it appears from the ruling that Cuervo may use a dripping wax seal
so long as it is not red; or at least that issue was not decided in this case.

Many bottle shapes are also protected trademarks.  Can you match the
registered trademark shape with the brand? (ANSWERS BELOW)
a)evianb) b1 c) 2

d) b3 e) b4 f) b6 g) b7

What makes your brand distinct?  Is each
distinction protected to provide your brand maximum protection and

Firm News

Yet another sign that the economy is on the rise: clients are investing in
growing and protecting their brands. Through
the first 3 months of 2009, we filed 26 applications on behalf of clients. This
year, new applications more than tripled (83) during the same period.

Did You Know?

In Fiscal Year 2009, more than 350,000 trademark applications were filed in
the US Patent and Trademark Office.  If
you created a new brand in 2009 – a product name, service name, slogan, logo,
newsletter, website, or blog title – were you among them?

a) Perrier; b) Evian; c) Absolut; d) Gatorade; e) Tropicana; f) Coca-Cola; g) Patron

Thank You

Thank you for reading our newsletter.  We truly enjoy spreading the message about
trademark protection to businesses across the USA. It gives us great pride to
help businesses thrive with strong brands.
If you are involved in any trade associations or other groups that would
benefit from a presentation featuring information about creating, protecting,
and leveraging strong brands, please 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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