1.9 : November 2010
brand and trademark newsletter from
Erik M. Pelton & Associates, PLLC
Erik M Pelton
In This Issue
Trademark Tip
Trademarks in the News
Firm News

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Interact with EMP&A

Upcoming Events
Speaking Engagements:
  • American Bar Association's Cyberspace Law Institute: January 28-29, 2011 @ Austin, TX
  • American Bar Association 26th Annual Intellectual Property Law Conference: April 6-9, 2011 @ Arlington, VA
  • Video from Erik's recent presentations "Leveraging Your Intellectual Property" can be found here.
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Erik M. Pelton & Associates, PLLC
PO Box 100637
Arlington, VA 22210
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Great trademarks are all around us. What makes them great? Here are some of the attributes of an excellent brand and trademark:

  • unique in the industry
  • creative
  • suggestive of the services or products sold
  • resonates with consumers
  • easy to remember, easy to find
  • thought provoking

For some examples, see my slideshow featuring some of my favorite trademarks.

Did You Know?
Pop culture and branding slogans often interact. Well known slogans often become a part of the cultural lexicon. Sometimes part of the pop culture discussion is too good for brand owners to pass on.

A few recent examples:
  • THERE'S AN APP FOR THAT. Apple has filed to protect the popular phrase. It was first used in an Apple iPhone commercial but has since become a part of the lexicon.
  • IT'S ON LIKE DONKEY KONG! This phrase references a video game, was first used in a song, and has since entered the general slang. Nintendo filed to register and protect the phrase this month.
  • GYM TAN LAUNDRY. Phrase popularized by the Jersey Shore reality program. Viacom, which owns MTV, has filed to register the phrase for use on clothing.
  • YOU'RE FIRED! The company that produced the television show has registered the phrase for clothing and other items.
  • THREE-PEAT. Pat Riley's company registered the phrase in connection with clothing in 1989. If the Los Angeles Lakers win another championship this year, he might make a lot of cash. Or have a lot of trademark disputes to deal with.
Trademark Tip:
Top Nine Trademark Application Mistakes

I have often noted the benefits of applying for trademark registration with the U.S. Patent and Trademark Office as it enhances your protection and value for the trademark. However, if you plan to file a trademark application be aware of the following nine ways to make an error that could prevent it from becoming registered or limit its effectiveness even if registered:

  • Failure to search first. Without first doing a comprehensive search, you do not know whether someone may already be using a similar name for a similar product or service, or whether there is a pending application or registration that could block your application.
  • Not including the proper logo or wording as the "drawing." The wording of the proposed trademark and the image of a proposed logo cannot be significantly amended. There are procedural restrictions regarding any such amendment. As a result, errors in the wording or the image can derail an application.
  • Listing the owner incorrectly. Who owns the trademark and the application? A corporation? An LLC? An individual? A partnership or joint venture? It must be identified correctly or the application could be void.
  • Not knowing whether the trademark is currently "used in commerce." U.S. trademark applications can be based on current use in commerce or a bona fide intent to use the trademark for the goods or services identified in the future. Stating that there is a current use in commerce when there is not could affect your rights. And stating that you intend to use the trademark when you are already using it in commerce can mean that your application will take longer and cost you additional government filing fees.
  • Improper description of goods or services. The scope of the goods or services in the application cannot be expanded after the initial filing is made. In addition, if there is a potential conflict, defining the goods or services with the potential conflict in mind may be significant.
  • Is the trademark used as a "collective membership" or "certification" mark? Certification marks and collective memberships marks are special types of trademarks that require special applications with additional information and evidence. A certification mark is used by authorized parties to show that goods or services meet certain qualifications and standards. A collective membership mark is used by the members to signal their membership in a group or organization.
  • Filing with the U.S.P.T.O. TEAS form or its TEAS-Plus form? When using the "TEAS-Plus" form, an applicant saves $50 on the USPTO filing fee per Class, but agrees to certain restrictions. Two significant restrictions are (a) selecting only a description of goods or services which is in the USPTO's database, and (b) agreeing that all flings for the application will be made electronically or be subject to an additional fee.
  • Properly signing the application. For an application to be valid it must be properly signed. To be properly signed, the signatory must have the authority and/or title that meet the USPTO guidelines.
  • Make sure you receive USPTO emails. The USPTO will generally send all correspondence regarding the application, including the filing receipt and any Office Actions, to the email provided in the application. It is critical to make sure that USPTO emails are not blocked by any spam filter and can be received.
Trademarks in the News:

A recent piece in Forbes Woman about the difficult situations business owners who do not properly clear and protect their trademark may face, such as paying lawyers to defend a trademark case that might not be successful, spending money to re-brand, and the obstacles to letting go of the original name and communicating the change to customers. Of course, many allegations of infringement are worth defending. But sometimes, even if the legal defense is fairly strong, defending the case may not be the best business decision.

The article's author, Kelly Watson, notes an interesting twist on trademark infringement situations that I have often found to be true quite as well:

Surprisingly, many of the people I spoke to who faced potential trademark infringement litigation saw the experience as a blessing in disguise.

"Once I found a new name and rebranded myself, it felt like a breath of fresh air," Hatcher says. "I felt reborn and recommitted to my business. And of course one of the first things I did was register the business name."

I, too, felt surprisingly positive about the situation once several months had passed. My new business name was even better than the old, but I would have never rebranded had I not been threatened with a lawsuit. It would have been too much work.

Tip: If the name you have chosen is not distinctive, is not protectable, and does not communicate a message to your potential customers, you may be far better off re-branding with a new better name instead of sinking money into defending the old one.

Firm News
The title of this newsletter, smar(tm)ark is now a registered trademark, and joins the other registered trademarks used by the firm:
  • IPELTON - for 'On-line journals, namely, blogs featuring information and observations in the fields of law, branding, and intellectual property'
  • TM4SMALLBIZ.COM - for 'Legal services'
  • emp- for 'Legal services'

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.

� 2010 Erik M. Pelton & Associates, PLLC.