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Upcoming Events
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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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Questions?
Comments?
Contact us at:
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Erik
M. Pelton & Associates, PLLC
PO Box 100637
Arlington, VA 22210
ph 703-525-8009
f 703-997-5349
emp@tm4smallbiz.com
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Greetings!
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.
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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.
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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.
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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.
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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'
 -
for 'Legal services'
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Suggestions
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.
ALL RIGHTS RESERVED.
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