Uncategorized Archives | Erik M Pelton & Associates, PLLC: Recent Episodes

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There are several different forms of intellectual property. The three that can be registered – in different ways and for different lengths – are patents, trademarks, and copyrights. A patent generally protects inventions while a copyright protects an original work of creativity. A trademark protects something that indicates the source of goods or services — generally a brand name, logo, or slogan.

See graphic below for more details:

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The following is an edited transcript of Chapter 13 of my book video Building a Bold Brand: Beware of Scams

Few things I have written about over the years have garnered more attention than my coverage of worthless scams that prey upon trademark owners. If you think you might have received a trademark scam letter or solicitation, here are some tips:

• Do not pay it.
• Search the internet for information about the material you received. Use particular language or addresses from the material and place it in quotations (“ ”) to make the search more direct.
• Contact an attorney if you have any questions.
• Contact the USPTO if you do not have an attorney at 800-786-9199 or email TrademarkAssistanceCenter@uspto.gov.
• Read the fine print.
• Be wary of requests to wire money to any bank, particularly a foreign one. Any such request should raise significant red flags.
• Try contacting the company that sent the letter via email or phone or online.
• Don’t pay for trademark directory listings. No one uses them!
• Check the list of “Non-USPTO Solicitations That May Resemble Official USPTO Communications” provided by the USPTO at https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices.
• Check the list of unofficial solicitations compiled by the World Intellectual Property Organization (WIPO) at http://www.wipo.int/pct/en/warning/pct_warning.html.
• Remember that if the correspondence did not come from the USPTO in Alexandria, VA, or from uspto.gov, then it is not official nor from the government.
• File a complaint with the Federal Trade Commission (FTC) at www.ftccomplaintassistant.gov.

For more, visit www.istthisatrademarkscam.com.

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The following is an edited transcript of my video 25 Tips from a Former Trademark Examiner.

You might know that I’m a former examiner at the USPTO who reviewed trademark applications from the inside of the process. The following are some tips that are useful on the outside, but that one learns on the inside.

1. You can contact the examiner by phone or email if you have a question or you want to discuss something, so you can always look up the examiner’s phone number or email.
2. Files get assigned to the examiners randomly, the exception being if there are other pending applications from the same owner applicant, they might be able to be grouped for consistency.
3. Examiners get reviewed and receive performance bonuses.
4. Examiners receive points for certain types of actions, and then they can receive bonuses based on exceeding the number of points that are expected.
5. Examiners are on your side. It’s their job to register a trademark unless there’s a reason not to register it.
6. Examiners receive just as many points—if not more—for approving an application as they do for denying one, so they’re not out to get applicants.
7. Measurements are done quarterly based on the fiscal year, so at the end of each quarter there’s generally an influx in office actions and steps taken by the examiners because they’re trying to meet or exceed their goals for the end of the quarter. At the end of the fiscal year in September, you’ll see a boost those last couple of weeks as they try to close out the year.
8. Examiners get extensive training from the USPTO.
9. The vast majority of examiners work remotely all over the country.
10. Examiners have supervisors and managing attorneys.
11. Examiners are broken out into law offices or units.
12. Examiners work on all goods and services.
13. Sometimes be a small handful of examiners appointed to a special issue for consistency.
14. Sometimes a delay can actually clear the way better for approval.
15. Sometimes cutting from an application can help get approval.
16. Sometimes a request to divide can help get a big chunk of an application approved while part of an application remains at issue.
17. Examiners are generally available for a phone call to discuss issues, and can be a productive way to try to resolve something.
18. Evidence is key. Evidence to support the applicant’s position is the most powerful way to try to convince the examiner to change their mind.
19. Be careful of any calls that purport to be from the USPTO or an examiner asking for filing fees over the phone. These are scams. The USPTO does not collect over the phone.
20. Examiners search the same database that applicants do.
21. In the TSDR file for any application, you can find information about the search that was done by the examiner and how it was built.
22. The USPTO does not search outside of their database for conflicts. They’re not going to refuse an application based on a trademark that is being used but has never been filed at the USPTO.
23. The TMEP is the resource that examiners use for their rule book, and it’s equally available to us on the outside to use and cite those rules and the cases therein.
24. Examiners are bound by the filing dates of applications. If somebody applies second for a trademark, but they were using it first, the USPTO’S hands are tied. They only look at the order in which applications were filed in terms of whether or not they’re going to issue a refusal.
25. Be patient. There’s a lot of delays at the USPTO, but the delays are not the fault of the examiners. The delays are not controlled by examiners. The post 25 Tips from a Former USPTO Trademark Examiner appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of Chapter 12 of my book video Building a Bold Brand: Using and Choosing Trademark Counsel

I get asked all the time, “Can I file a trademark application by myself?” The simple answer is YES. No attorney is necessary. But just because you CAN does not mean that you SHOULD. By attempting to register a trademark without counsel, a business may create more problems than it began with, may incur more expenses than it would have by hiring a professional from the start, and may increase its risk of litigation.

The following are good questions that business owners should ask of any prospective trademark lawyer:

• How much experience do you have working in the field of trademarks?
• Does your practice handle other types of cases, or is it focused on trademarks?
• Have you ever worked for the USPTO? Inside experience can’t hurt.
• What are your fees and what do they include? How are they calculated (hourly or flat)?
• How do you keep abreast of developments in the field of trademark law?
• How many registered trademarks do you or your law firm own?
• How do you keep track of deadlines with the USPTO?
• How many trademarks have you registered?
• How large is your staff? Do you outsource or do you personally handle/directly supervise all the work on a client’s application(s)?
• What type of content have you created and shared so that the public can learn more about your work and experience?
• How many oral arguments have you handled before the Trademark Trial and Appeal Board (TTAB)?

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The following is an edited transcript of Chapter 11 of my book video Building a Bold Brand: Responding to Office Action Refusals

Once a trademark application has been filed, it generally takes the USPTO approximately four months to complete its initial review. The review that takes place at that time is the first substantive step in the application process. In the majority of cases, something called an “Office Action” is issued by the USPTO following review of a trademark application, even when the application was filed by an attorney. An Office Action can cover procedural issues, substantive refusals, or both, as well as numerous issues or a single issue. Responding can be complex, and all applicants have six months to respond to the first Office Action.

An effective response requires a lot of nuance, such as knowing the relevant laws and cases, crafting an argument, attaching evidence, and possibly amending the application to change the analysis.

It is possible to respond without an attorney, but the risks and the time needed are significant. An improper or incomplete response can jeopardize the application, alter the protection available, result in additional USPTO fees, or delay the application process.

More at Building A Strong Office Action Response

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The following is an edited transcript of Chapter 10 of my book video Building a Bold Brand: Trademark Registration is More Valuable than Ever

Protecting your trademark provides more benefits than at any time in history:

• Simply appearing in the USPTO’s online database can prevent someone who otherwise would have adopted a similar name for a similar product or service from going forward with that name.
• Obtaining a registration may be statistically more difficult, given the sheer number of existing registrations, and is therefore much more valuable.
• Protecting your trademark now to potentially block, stop, or avoid future infringement is extremely valuable.
• A trademark registration is an important tool in seeking to enforce rights against someone cybersquatting on a domain name (a Uniform Domain- Name Dispute-Resolution Policy (UDRP) domain name complaint). Having a trademark registration is likely to make blocking a conflicting domain easier, quicker, and cheaper.
• Having a trademark registration is a valuable tool in making a complaint regarding social media username infringement.
• A trademark registration can be renewed forever, provided the mark is still used in commerce.
• The internet has lowered barriers to starting a new business, therefore finding a good and protectable brand name is becoming increasingly difficult. Those who have protected trademarks are in a better position than those who do not.
• Non-traditional trademarks (shapes, sounds, smells, configurations, and other “odd” trademarks) are increasingly becoming part of marketing for small and big businesses. The USPTO’s online application system has made obtaining these non-traditional trademarks far easier and cheaper than a decade ago.
• Our culture’s obsession with brands continues to grow deeper, and America’s reverence for great brands and their trademarks continues to expand. Every business has the same opportunity, and they all share a common first step: Register your trademark!

Learn more about trademark registration here.

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The following is an edited transcript of Chapter 9 of my book video Building a Bold Brand: Registration: Better Late than Never

Ideally, a business should protect its trademarks from the outset, filing as the brand launches or even earlier based on an intent-to-use the mark.

However, if that opportunity has passed, it is still tremendously valuable to seek registration of a trademark, because having the trademark registered prior to a future infringement or dispute is really the key.

Why is registering a trademark important, whether it’s before a brand launches or after?

• Appearing in the USPTO database could prevent future brands from adopting a similar name at any time.
• Blocking domain names or social media names could always be useful, especially as new ones are introduced.
• A trademark registration creates a valuable, tangible asset that can be transferred or used as a security interest.

The post Is it too late to apply for trademark registration if you are already in business? Probably not! appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of Chapter 8 of my book video Building a Bold Brand: The Trademark Registration Process: A Long and Winding Road

The trademark application process at the United States Patent and Trademark Office (USPTO) is generally long, complex, and full of deadlines. It’s also full of bumps, potholes, detours, wrong exits, and toll booths. Errors have the potential to limit or jeopardize a brand owner’s trademark rights; result in a voided application; delay the application process; or result in the loss of non-refundable USPTO filing fees. But, the goal—a registered trademark—is worth the trip, as it strengthens a brand; creates tangible intellectual property assets; and, generally, makes it easier, quicker, and cheaper to resolve any issues with infringers.

To help you navigate the path toward a registered trademark, keep the following key points in mind:

• Words are generally more important to protect than designs. When a brand owner registers the words, the ® can be used whenever those words are used—in text, in logos, and more. Generally, registering words alone will also provide better protection regarding domain names and usernames. A brand owner who registers a logo can only use ® next to the logo. Note that creative and distinctive logos should also be protected but should generally be handled via a separate application.
• Patience is a virtue. In general, the entire registration process—from filing through use of the trademark in commerce—takes about one year. It can take many years if there are hiccups in the process, such as a dispute or a “suspension” of the application pending the outcome of some other, earlier-filed applications.
• Search first. Without first doing a comprehensive search, a brand owner will not know whether someone may already be using a similar name for a similar product or service, whether there is a pending application or registration that could block their application, or to determine if someone else is already using a similar mark in a related or competing industry, even if they do not have a registration.
• Think it through. Each application must include a “drawing” of the word or design to be protected. The wording of the proposed trademark and the image of a proposed logo cannot be significantly or easily amended after the application is filed, so put a lot of thought into the specific wording and design before you submit.
• List the owner correctly. Who owns the trademark and the application? The ownership must be identified correctly (e.g. corporation, LLC, individual, partnership, joint venture), or the application could be void.
• Know whether the trademark is currently “used in commerce.” Stating that there is a current use in commerce when there is not could affect your rights, while stating that the applicant intends to use the trademark when you are already using it in commerce could make the application take longer and cost additional government filing fees.
• Know your business. 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.
• Understand the difference between a “collective membership” or a “certification” trademark. A collective membership mark is used by members to signal their membership in a group or organization. A certification mark is used by authorized parties to show that goods or services meet certain qualifications and standards. These types of marks require special applications with additional information and evidence.
• Know what it means to file a Trademark Electronic Application System (TEAS) form vs. a TEAS-Plus form. When using the “TEASPlus” form, an applicant saves a $50 per class filing fee but agrees to certain restrictions. In my experience, these restrictions can cause problems or delays during the application process and are not worth the savings for most applicants.
• Signature, please! For an application to be valid, it must be properly signed. To be properly signed, the signatory must have the authority or the title that meets USPTO guidelines.
• Whitelist the USPTO. The USPTO will generally send all correspondence regarding the application to the email address provided in the application. It is critical to make sure that USPTO emails are not blocked by spam filters and can be received.
• Pay attention to deadlines. Missing a deadline during the application process can cost more money in USPTO filing fees, but, perhaps more importantly, it can lead to delays and can jeopardize the entire application.
• Check your status. To make sure the process is completed as quickly as possible, check the status of your application every month or so—at a minimum—via the USPTO website to ensure that you haven’t missed any correspondence.

Generally speaking, the ideal process for protecting and launching a new brand name is:

1. Search potential names for clearance and settle on one available name.
2. Apply to register the name at the USPTO based on an intent to use the name.
3. The application will be reviewed by the USPTO.
4. Receive preliminary approval at the USPTO.
5. The application is published in the public record (the “Official Gazette”) by the USPTO.
6. During the 30-day publication period, hopefully no one files an objection (“Notice of Opposition”) or an extension of time to oppose.
7. The USPTO issues a “Notice of Allowance.”
8. Begin using the trademark in commerce any time after the publication period in Step 6.
9. Submit evidence of using the trademark in commerce to the USPTO and complete the registration process.
10. Receive a registration certificate. The entire registration process for an “intent to use” application takes approximately one year or longer with no delays.

More about the long and winding road here.

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The following is an edited transcript of Chapter 7 of my book video Building a Bold Brand Chapter 7: Registration is the Keystone to Brand Protection

While there are many incredible sights and millennia of history to write about in the city of Rome, one feature is central to all of the great buildings there: arches. From the first basic structures to the Colosseum, from the castles to the bridges and aqueducts, archways were central to building large and lasting structures.

The most important part of any arch is the keystone, the center stone at the top of the arch that supports the weight above and creates the entryway below. The Roman Colosseum, which has stood for centuries, was essentially arch built upon arch, over and over again. Without the keystone at the heart of the architecture, such large and magnificent structures would not have been possible.

Registration of a trademark is akin to the keystone of a brand’s protection. While it is not a legal requirement, registration strengthens a brand’s protection immeasurably and makes everything else related to brand growth, expansion, and protection easier and stronger. A creative and unique name is the first foundation upon which brand protection is built.

Read more about why trademark registration is the keystone to the brand protection arch here:https://www.erikpelton.com/trademark-registration-is-the-keystone-to-the-brand-protection-arch/

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The following is an edited transcript of my book video Building a Bold Brand Chapter 6: Why Apply to Register

Trademark registration with the USPTO has tremendous value. The basic government filing fee is as low as $250 (as of this publication), and the resulting trademark registration provides a myriad of benefits to its owner, such as:

• Use of the ® symbol, which helps ward off potential infringers by demonstrating to the public that the brand is taken seriously and has the USPTO’s legal protections behind it.
• Appearing in the USPTO’s online database. Most companies and trademark lawyers are going to look when seeking to clear possible new names, thus just appearing in that database reduces the risk that a competitor will try to adopt a similar name. That protection works 24 hours/day, 7 days/week, 365 days/year.
• A trademark registration is a tangible asset that can be assigned, licensed, or used as collateral in the sale of a business. A trademark can even be assigned a dollar value.
• Trademark owners can sometimes use a US application or registration as the basis for trademark rights in another country, giving the owner enhanced options for filing international protection.
• Owners of registered trademarks can also record them with US Customs for a small fee, and Customs and Border Patrol will then monitor shipments at our ports and borders. That only applies if there’s a good or product involved, but it’s still a valuable tool.
• Owners of registered trademarks can sue in US District Court, which generally provides more opportunities to obtain an injunction and to collect damages and attorney’s fees.
• If someone infringes the trademark, a cease and desist letter featuring a registered trademark is much stronger and more likely to lead to a quick and cheaper resolution of that situation with positive results.
• Reduces the probability of being accused of infringement because it demonstrates that a brand owner has taken proactive steps to protect the trademark, and it means that the USPTO at the time it examined it did not find any confusingly similar trademarks.

The cumulative effect of all of these benefits is a powerful warning to others to avoid using infringing marks and gives the trademark owner tremendous peace of mind, which is priceless.

For more about trademark registration, see https://www.erikpelton.com/services/trademark-registration/

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Evidence of use for a apparel (shirts, sweatshirts, etc) can be tricky for a trademark filing with the USPTO. See the graphic and video below for more details on what generally makes the best types of use and evidence for your trademark in connection with clothing:

The post Trademark Use and Evidence for Apparel: Best Practices appeared first on Erik M Pelton & Associates, PLLC.

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We know that there are a lot of options when choosing who to work with protecting your trademark and brand. We feel quite confident about how we stack up against other law firms and filing options. Not just our experience and flat fees, but our values and much more.

For more about our work and experience, see https://www.erikpelton.com/about/.

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The following is an edited transcript of my book video Building a Bold Brand Chapter 5: Searching for Conflicts.

After brainstorming name ideas and developing a solid list of possibilities, the second major step on the way to trademark protection is to do some preliminary searching to see if there are any obvious conflicts in use that could present an infringement or a registration issue. A preliminary search may easily turn up results of competitors already using a similar name for a similar product or service, and it may even inform you if there’s a pending application or registration that could block your application. Generally speaking, you can probably eliminate some names based on your own preliminary search. It is also recommended that after you conduct your own initial search that you consult an attorney for a more comprehensive clearance search and analysis.

Without performing a full clearance search, it is impossible to know for certain whether another company is already using the same name or a confusingly similar one in the marketplace. While you can never be one hundred percent certain, you can minimize the risks as much as possible.

Only an attorney can really assess whether another name or use is confusingly similar or presents a trademark protection problem. Searching for logos presents additional challenges. It’s a common misperception that if the USPTO site is searched via their search engine TESS, and no one else has registered a conflicting name with the USPTO, that name is safe to use.

Another brand name could still have superior rights based solely on their use of the name even if they never applied to register the trademark at the USPTO. This is called Common Law Rights. A search of the USPTO is valuable, but by itself it does not provide a full picture of the potential risks surrounding a name.

There are a variety of types of trademark searches. Almost always a comprehensive search and analysis from an experienced trademark attorney is advisable to determine whether a new brand name is available before investing in it, using it, and protecting it.

Part of any comprehensive search includes but is not limited to:

• USPTO records
• domain names
• state records
• business databases
• online search engines
• alternative spellings, spacings, and other variations of the possible name

Once all of the data from a comprehensive search is obtained, an analysis of the potential conflicts must be undertaken. Such an analysis is not simple and depends on the strength of the relative terms, the amount of overlap, the potential dilution of the marks at issue, variations in goods and services, and more. That’s why it’s important that an experienced trademark attorney help you conduct and analyze the search.

There are some great free sites where you can get started on doing some searching:

• window1.com allows you to type a search one time, but perform it in variety of different search engines at the same time
• Amazon, of course, just because of their size
• Hoovers is a great business database that’s been around for many years.
• CIPO is the Canadian Trademark Office

These tools are a helpful start. Consulting an experienced attorney for more information about a clearance search and a thorough analysis of the search findings is highly recommended.

Six steps to a branded protected name:

1. Brainstorm for brand names
2. Narrow the list to several possibilities that you like
3. Consult with a trademark attorney to see if your preferred names have potential
4. Choose one or two favorite names.
5. Check domain names
6. If available, acquire that domain name and file trademark application as quickly as possible with the USPTO based on your intent to use the trademark in commerce

For more, see my video Key Trademark Search Terms

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The following is an edited transcript of my video Trademark Application Checklist.

One of the great resources produced by the USPTO for trademark filers is the Trademark Manual of Examining Procedure (TMEP), which has hundreds of sections, guidelines, rules and procedures. Within that (TMEP, Sect. 818), there’s a particularly useful checklist which lists more than 20 items for new trademark applications and the things that go into it. What seems simple at first–like so much in the world of trademarks–is much more nuanced and often much more complicated.

Each of these checklist items has several layers of nuance, depending on the circumstances, and sometimes it can be very complicated. Even something as seemingly simple as an address can have connotations or permutations (whether it’s foreign or US, whether it’s a PO box or a mailbox). This is why having experienced counsel is very useful. There are studies based on actual data from decades of trademark filings that show working with experienced counsel increases the odds of approval and registration. Take a look at TMEP Section 818. and you can see that the trademark application process is not as simple as it appears.

Learn more about the 25trademark application process in our Trademarkive®.

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The following is an edited transcript of my book video Building a Bold Brand Chapter 4: Spectrum of Marks.

Let’s assume you have a list of creative and inspired names for your product or company. You’ve sent several to your trademark attorney for consideration and you’re ready to make a final decision. Before you do that, there’s another key consideration. Some brands and trademarks are entitled to greater protection than others. Think of it as a sliding scale with the type of brand name determining a lot about its scope of protection. There are five elements in this sliding scale and their respective strength (strongest to weakest):

1. Coined trademarks (completely new and made up terms)
2. Arbitrary trademarks (real words that are unrelated to the goods or services at issue)
3. Suggestive trademarks (words that relate to the goods or services, but that are not descriptive of them)
4. Descriptive trademarks (used to refer to a product or service or to its functions or characteristics)
5. Generic (words that are commonly used to refer to a good or service in its entirety) (generic terms aren’t trademarks at all, as they get no legal protection)

Coined, arbitrary and suggestive names are generally able to become registered, are given the strongest protection, and are thus considered by some to be the most desirable.

Descriptive trademarks may sometimes be registered, but are generally afforded less protection. For this reason, descriptive marks are generally considered weaker.

Finally, generic trademarks are the weakest—in fact, they’re not really trademarks at all. They’re entitled to no protection.

Why do I suggest suggestive marks? It tells you something about the business, but it does not hit you directly over the head. While arbitrary or coined marks can acquire even more legal protection than suggestive names, such terms may be more challenging to market and to promote, because consumers may not be able to connect the dots and therefore may not know what that arbitrary or coined brand name represents.

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The following is an edited transcript of my book video Building a Bold Brand Chapter 3: Bold Brands are Everywhere.

Bold brands, great trademarks, memorable logos, and witty slogans are all around us. They can be found anywhere in any field of business.

While it may take less effort or time to come up with a descriptive or common name for a business, such a name is a lost opportunity. Descriptive or common names are much less likely to be original, memorable, talked about or capable of strong legal protection. Searching for a new brand name is difficult, but the extra effort and perseverance is absolutely worthwhile. Even though there may be more brand names in use today than ever before, there are still plenty of great brand names being launched every single day.

If you’re having trouble coming up with your own bold brand name, don’t despair, but don’t settle for an average or bland name. Search for inspiration. While it may not be easy to strike gold when you’re trying to creatively name a brand or product, there are examples all around us every day. In fact, the USPTO records are filled with new filings for creative brand names. And although all may not be approved for registration, they’re all proof of imagination and hard work when these applications are filed

A bold brand name is worth the effort. Bold brand names are more likely to be unique, more likely to be protectable, and much more likely to get approved for registration and have strong legal status, and as a result are generally much easier to enforce if copied. Finally, a bold brand name is much more likely to have the corresponding domain names and social media handles available to register because it is not already out there.

Just as a strong name and a memorable logo are an important part of any brand, a catchy slogan is a powerful tool that can tell consumers more about your brand. The best slogans are fun, memorable, and communicate something important or unique about the brand. Slogans can also be registered and protected as trademarks, just like brand names and logos. For example, our law firm’s slogans include Making trademarks bloom since 1999®, Experience is our trademark. Trademark is our experience.®, and The non-traditional trademark lawyers®. We use these slogans in different types of marketing materials to communicate with potential clients, and they’re very powerful tools.

The key steps in creating, launching, and protecting a new slogan are the same as for a brand name:

• deciding on the message that the slogan should convey to consumers
• brainstorming
• settling on the ideal slogan
• searching the USPTO records and consulting an attorney
• applying to register the slogan with the USPTO

For more, see Bold Brands and Great Trademarks Are Everywhere

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The following is an edited transcript of my video 5 Things I’ve Learned About Trademarks in 2023.

I continue to learn new things about the world of trademarks – even after more than two decades in the field. Here are some of the highlights or recent things I’ve learned:

1. The world of trademark continues to grow. There are more small businesses, more lawyers and trademark practitioners, and more trademark stories and disputes in the news than ever before. It means that trademarks are becoming a bigger part of our lives, and businesses are paying more attention to protecting them.
2. Big businesses have an economic advantage when it comes to trademark protection, but small businesses have their own advantages. Small businesses can generally move more creatively and with more speed.
3. Artificial intelligence will change the world of trademarks in ways that we haven’t even thought of or experienced yet. We’ve played around with it ourselves with our ChatTM tool. But AI issue will not get rid of or replace attorneys and experienced good counsel. In fact, it’s going to make experienced counsel who knows how to take advantage of AI tools that much more valuable, and that will be very powerful.
4. USPTO trademark filing fees will go up. The USPTO has put forward a proposal which is working its way through the regulatory process, and it’s likely that sometime in the next year we will see fee increases. It will add some complications and layers to the application process, making it even that much more valuable to work with an experienced expert.
5. While there is more intellectual property being protected now than ever before, there is also more intellectual property than ever before that is not being protected. I’m seeing this even in big businesses. Well-known celebrities and athletes are leaving IP protection on the table. Lionel Messi signed a huge deal to come to the US and play for the Miami Major League soccer team. He has no trademark registration to protect his brand in the US. Victor Wema, the number one pick in the NBA draft, has not protected his brand in the US either. Their lawyers are going to have to spend more money and clean up more damage as a result.

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The following is an edited transcript of my book video Building a Bold Brand Chapter 2: Bold Brand Building Tools.

Coming up with a great name for a new business, product, or service can be quite difficult, even more so today than in the past since there are so many already out there, and because any business can go online and almost instantaneously be considered a national or international company. In addition, having a corresponding domain name is generally valuable, which may further reduce the number of available names.

There are a few naming concepts that are great resources for bold brands and strong trademarks:

• alliteration (the repetition of a sound in multiple words)
• rhymes (corresponding sounds between words or their endings)
• portmanteaus (a new word is formed by fusing together two or more parts of existing words)
• puns (a creative and fun way to make a memorable brand)
• double entendres (play off of words that are capable of more than one meaning or interpretation)
• telescoping words (overlapping two terms)
• creative spelling (lends creativity and zest to a name)
• provocative phrases (make the viewer stop and think)

Portmanteaus, double entendres, and puns are useful naming tools because they often lead to suggestive brand names, which are generally the best and my favorite.

For more, see Introducing: the Building a Bold Brand Wheel

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The following is an edited transcript of my video What is the TTAB?

The Trademark Trial and Appeal Board (TTAB) is an administrative court at the US Patent and Trademark Office made up of more than 20 administrative judges who primarily decide two types of cases: appeals of final refusals (ex parte appeals) or inter partes cases, which are generally oppositions to pending applications or cancellations of existing registrations. There are approximately 3,300 ex parte appeals, 6,500 oppositions, and 2,200 petitions to cancel filed every year.

Not all of those are decided by the board because many of them are resolved, settled, withdrawn, or defaulted on. A relatively small percentage get all the way to a final decision of the board, but even as a small percentage, that still adds up to a lot of cases every year. The board’s rules are governed by the TTAB Manual of Procedure (TBMP). This is a very thick document full of procedural information about the many stages of appeals or inter partes cases. You can search documents and dockets in TTAB cases in their online system, TTABVUE, and the board has its own online filing system for documents in cases that is called ESTTA.

What happens after a board decision is issued in one of these cases? It could potentially live on in another round of appeals. An appeal of a board decision could go to either:

1. the Court of Appeals for the Federal Circuit in Washington DC, which hears several different types of appellate cases, and is just one step removed from the Supreme Court, or
2. a US District court for a different type of appeal that is really more like a new trial.

For much more on TTAB disputes, see our site here.

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The following is an edited transcript of my book video Building a Bold Brand Chapter 1: Choose Wisely.

Bold brands begin with great brand names, but brands are much more than just names. They are the sum parts of a company and the customer’s relationship with its products or services. When consumers form a relationship to a brand, the relationship focuses not just on the product or service, but also on quality reliability, the consumer’s perception of what the business represents and how it operates. Brand names are at the core of a brand’s persona. While brands help identify a business and its products or services, the trademark is the legal protection that attaches to the brand’s name, logo, or other symbols to help customers differentiate it from its competitors.

What makes for a strong name that can help build a brand with strong trademark protection? It begins with the selection of a creative name combined with trademark. Registration is a strong foundation upon which to build a brand because it is more likely to be unique and protectable.

A brand built upon a name that is not unique in the industry or that is made of solely descriptive or weak terms is on a weak foundation and is therefore much more at risk for being less memorable, less protectable, and less distinctive.

A creative name is valuable for multiple reasons:

• The more distinctive a brand name is, the more likely to stand out among the competition.
• A name that is easy to remember and spell is important for building a bold brand.
• A strong, distinctive brand name is also more likely to achieve strong protection under the law and is generally easier to remember.
• Cast a very wide net and come up with a variety of options at the outset.

Brainstorming basics:

• Brainstorm for names with characteristics, prefixes, and suffixes in mind.
• Consider a variety of different ideas or pieces of a name in dozens of variations or combinations.
• Be creative. Some of the best brand names are coined unique names – they’re the easiest to protect and make the strongest trademarks.
• Creative spellings or combinations of symbols and words make for good trademark possibilities.
• Send a message. What message are you trying to communicate to consumers with your name?
• Think big. If you prepare for the possibility that your brand will be hugely successful, you will have built a bold brand equipped for such success. Customers and investors are less likely to get behind a brand name that is boring or weak.

More Brainstorming tips here: https://www.youtube.com/playlist?list=PLj16B071QCZVLtFnYzb7gLDk_AfC2vMQ-

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The quick and short answer to “How can I protect a book title?” is that you can’t. But, when it comes to the law trademarks, everything’s complicated with a lot of variables, and there are ways to work around it.* A book title cannot technically be protected under trademark law, unless it is the title for a series of multiple books. * An author can register the same phrase or words for other products or services that they may provide. * Having such a trademark associated with a book title is useful when possible, because it helps the author control the relevant domain name(s) and social media profiles. * Having a trademark registration linked to the book title, but for different products or services, will ensure that the title appears in the public records at the USPTO, making it less likely for others to use the name as their book title. * When a business owner writes a book and the publication title is distinct from the trademark used to identify the business services, the author can still use and promote the trademark on the book.

For more, visit How to Protect a Book Title**

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The following is an edited transcript of my video 25 Branding Tips.

As we celebrate our 25th year, I am excited to share 25 branding tips with you:

1. Choose a creative name – it’s the foundation you begin with to build a bold brand.
2. Begin with a clearance search to make sure that any new name is available.
3. Register your trademark.
4. Be sure to file early to help build more protection.
5. Work with an attorney to improve your odds of success.
6. Use the proper trademark symbol with your brand (TM, SM, or ®).
7. Distinguish your brand when you use it in text with bold, italics, or a different color to make it stand out.
8. Use your brand everywhere (website, business cards, letterhead, gifts, uniforms, delivery vehicles, etc).
9. Once you have a trademark registration, be sure to docket the renewal deadlines.
10. Monitor for potential conflicts and infringements.
11. Take action early if there’s an infringement situation.
12. Develop a style guide for employees, contractors, vendors, etc, so that your use of the brand is consistent.
13. Train your employees about the importance of the brand and how to properly use it.
14. Put intellectual property protection provisions in contracts (employment contracts, contracts with partners, vendors, and others).
15. Put intellectual property notices on your website.
16. Don’t use your brand name as a verb. Use it as an adjective or a noun.
17. Register your trademark with US Customs and Border patrol. If your trademark is for use in connection with products, you’re likely eligible.
18. Choose a great slogan to convey more messaging about your brand and what sets you apart from your competitors.
19. Choose a distinctive and memorable logo.
20. Consider non-traditional trademarks (sounds, colors, packaging designs). Trademark protection can extend to almost anything that helps to identify the source of your products or services.
21. Show off your registration certificate. Frame it and display it.
22. Consider international protection, especially if you are manufacturing overseas or making sales overseas.
23. Consider state protection, especially if you cannot get federal protection for your trademark.
24. Know about the Amazon Brand Registry if you’re selling on Amazon.
25. Know about the trademark application process. It takes a long time, so you want to start it as early as possible.

Learn more about brand protection in our Trademarkive®.

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I recently sat down with Alt Legal to make a short video about the history of TESS and the transition to the newer search system from the USPTO:

For more, see https://www.altlegal.com/blog/uspto-search-retire/.

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The following is an edited transcript of my video 5 Trademark Lessons from Ted Lasso.

I loved the showed Ted Lasso, with its great story lines, acting, and cheerful presence. Here are five trademark lessons we can apply from the show:

1. If you’ve seen Ted Lasso, you’ve seen the Believe poster in the locker room. Believe is important for the trademark process because trademarks are both an art and a science, so you have to have some belief when you’re building a brand that you’re on the right track and believe that the brand is worthy of being protected in order to want to take those steps.
2. Underdogs can succeed. Ted Lasso and the team are big underdogs, and they have quite a bit of success. In the world of trademarks, underdogs can succeed just as much. You don’t have to be a huge Fortune 500 company. Small businesses can take advantage of trademark protection, trademark registration, and all the other trademark tools just as much as big businesses. In fact, it’s even more important for small businesses because they don’t have the deep pockets to spend their way out of a situation if they encounter one all the time.
3. Sometimes you have to change your strategy in the middle. We see the team change their entire offensive and defensive strategy midway through the season because something wasn’t working. The coaches finally recognize it. They make a tweak and things go a lot better. In the world of trademarks, you often have to adapt, especially in the long and winding road of the trademark registration process.
4. Coaching matters. The coaches make a big difference in inspiring the team. In the world of trademarks, having an experienced, inspiring lawyer can makes a big difference. In fact, data supports with evidence that having a lawyer makes a difference in improving the odds of success in the trademark application process.
5. Be a goldfish. Ted gives the advice that how goldfish are happy, and it’s because they only have a ten-second memory. We can apply that to the world of trademarks because it’s a long and winding process with a lot of steps. Responses and amendments are going to be needed, even when you’re working with an attorney. So for the applicant, it helps to have a short memory and not be frustrated by these obstacles, knowing that if you’re working with experienced counsel, you can be a goldfish and make the process go a lot smoother. The post Ted Lasso Trademark Lessons appeared first on Erik M Pelton & Associates, PLLC.

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I recent sat down with Alt Legal to share best practices for searching trademark designs or logos with the new USPTO search system. Watch below:

For more, see https://www.altlegal.com/blog/uspto-search-design/

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The following are the comments our firm submitted today regarding the USPTO’s proposed trademark fee changes and increases:

Docket No.: PTO–T–2022–0034

Comments of Erik M. Pelton & Associates, PLLC Regarding “Setting and Adjusting Trademark Fees During Fiscal Year 2025”

The following are the comments of Erik M. Pelton & Associates, PLLC® (“EMP&A”), in response to the Notice of Proposed Rulemaking, published on March 26, 2024, in the Federal Register at 89 Fed. Reg. 20,897 (March 24, 2024) (“Rulemaking”). Since 1999, EMP&A has represented thousands of clients in U.S. trademark prosecution, maintenance, and litigation. EMP&A’s clients have received over 4,000 U.S. trademark registrations and have been involved in dozens of disputes before the Trademark Trial and Appeal Board (“TTAB”). In addition to representing myriad small business trademark owners, EMP&A itself is a small business and the owner of more than a dozen U.S. trademark registrations.

Prior to starting his own firm, Erik M. Pelton, the firm’s founder, worked as a USPTO Examiner from 1998 to 1999. Attorneys from EMP&A are actively involved in numerous organizations, including INTA, ABA, AIPF, and AIPLA. Mr. Pelton supervised the Trademark Clinic at Howard University School of Law from 2020 to 2024 and has been an adjunct trademark law professor at Georgetown University since 2023.

In general, we do not oppose across-the-board fee increases to match the growth in expenses. We understand and support the need to increase fees to cover rising costs, align fees with internal costs, and provide financial security for the agency. However, we are concerned that the Rulemaking’s impact on small businesses will be significant. Small businesses make up a large portion of the American economy: over 99% of employers are small businesses, and in recent decades small businesses have created more than 60% of new jobs.[1] Moreover, according to a 2013 report from WIPO, small and medium-sized enterprises rely more heavily on trademarks than patents.[2] Unfortunately, small businesses typically do not have associations, in-house counsel, or the resources to comment on proposals like these.

General Comments Regarding New Fee Structure

The Rulemaking contains several new features that increase the complexity and unpredictability of filing and prosecuting a trademark application, which are likely to adversely impact those without experienced counsel.[3] The Lanham Act (15 U.S.C. § 1052) directs the USPTO to register trademarks unless one of a limited number of prohibitions applies:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it …

In other words, the Lanham Act creates a structure whereby trademark applications are presumed to be registrable but for one of the statutory prohibitions. We believe the Rulemaking will create new procedural hurdles for applications that impede their presumed registrability, resulting in fewer applications being filed, approved, and registered.

In our assessment, a better alternative would be to distribute the costs of processing applications evenly across all applicants. A standard application fee for all would be more predictable and fairer; it would be without any penalty for the type of identification of goods or services used, without any penalty for the number of characters used in the identification, and without any penalty for nuanced requirements such as a domicile address, color claim, or translation. For example, a filing fee of $400 per Class for all applications, without any possible additional penalties or surcharges, would treat all applicant’s equally.[4],[5] Such a fee would cover the historical cost ($373 according to USPTO materials) and allow some padding for inflation and cost increases.

Impact on Small Businesses

The Rulemaking creates new procedures and penalizes imperfect applications by imposing additional costs, upending the established practices of the USPTO and trademark applicants. We believe that it would be prudent for the USPTO to ensure that the trademark application fee structure provides an incentive for small businesses to protect their trademarks.[6] We are concerned that the fee increases and changes will add to the burdens for small businesses seeking to obtain trademark protections. The investment in trademark clearance and registration for a small business is even more significant and valuable; it helps guard them against the risks and expenses of trademark disputes and litigation. The Rulemaking, however, is likely to provide the opposite outcome, limiting small business’ access to the benefits of trademark registration, which in turn could allow for even more overreaching enforcement efforts from big businesses.

Concerns Regarding Several Specifics of the Rulemaking

New Fee for Free-form Descriptions of Goods or Services

We have concerns regarding the new fee for using a free-form description of goods or services, rather than choosing from pre-approved options in the ID Manual. Many goods or services are described well in the ID Manual. But sometimes the ID Manual entries are too detailed and specific; sometimes they do not appropriately describe an applicant’s goods or services; and other times they feature more specification than is required to serve as a sufficiently definite identification.[7] Pro se applicants may choose inaccurate descriptions or descriptions for which specimens of use are not available. We are also concerned that requests to update the ID Manual may not be responded to in a timely fashion, given that such requests will likely increase. Finally, the Rulemaking sets the cost for choosing a free-form identification at $200 per class, which increases the application filing fee by more than 50%. Such an increase outpaces the additional examination burdens; a free-form identification fee of $50 or $100 would be more reasonable, while still incentivizing applicants to use the ID Manual.

New Fee for Insufficient Information

The Rulemaking features a new fee of $100 per class if an applicant fails to provide sufficient information across any one of twenty categories. The proposed penalization adds another layer of complexity to an already very intricate application process, along with the potential for additional costs. Again, this leads to increased unpredictability for applicants and their counsel. Notably, many of the “[r]equirements for a base application” are not affected by the number of classes in an application. For example, an applicant’s name, domicile address, legal entity, citizenship, color statement, and mark description, are uniform across all classes in an application and require the same time and attention irrespective of class count. We propose that the USPTO reconsider whether the fee imposed for such information deficiencies should be per class or, more reasonably, per application.

Letter of Protest Fee

Letters of Protest frequently aid the examination of applications and help increase the Register’s reliability. As a result, the proposal to triple the fee from the current $50 to $150 is not reasonable and will disincentivize third parties from providing information that can assist examiners who are, according to the USPTO’s own data, facing a huge backlog.

Greater Transparency Needed on USPTO Budget and IT Expenditures and Projects

The Rulemaking does little to detail or justify the overall financial needs of the USPTO, including the increased IT costs. At the end of FY2022, the USPTO’s trademark operating reserve was $208.7M, which is considerably above the minimum operating reserve level of $120M. Surprisingly, despite significant projected rent savings, the TPAC FY2023 annual report issued last fall, forecasted a trademark operating reserve of $92M at the end of FY 2026.[8] This means that the USPTO trademark operation is operating at a loss and at a real risk of dipping below the minimum level of reserves within two and a half years.[9] According to the USPTO’s materials, this is due, in part, to a historically low rate of post-registration filings.[10],[11] Not discussed, however, is the impact of IT expenditures and delays on the budget. Importantly, the USPTO’s forecasting presumes that the proposed fee increases (along with newly created fees) will not lead to any decline in the number of new applications being filed; however, such an assumption may prove incorrect.

We understand that the USPTO needs to ensure proper funding and that filing levels have dropped from recent all-time highs. But details on where and how the USPTO trademark operation spends its money have been largely absent from the published materials. There has been no public discussion of alternatives that might assist in balancing the budget while filings are lower, such as cuts to some spending,[12] reducing overtime, employee buyouts, or a hiring freeze.

IT improvements are certainly valuable and needed, but the general public and users of the USPTO’s systems are entitled to know more about what specific improvements are scheduled and upcoming, and why the costs and delays have escalated over previous projections. For example, no details were provided to the public about the cost of the new trademark search system, or for how long the USPTO was aware of the need to retire TESS by a certain date. A March 13, 2019, report from the Office of Inspector General of the U.S. Department of Commerce (OIG-19-012-A) titled “USPTO Needs to Improve Management over the Implementation of the Trademark Next Generation System,” noted the tremendous delays and cost overruns in trademark IT expenditures at that time.[13] In the five years since that report, we believe the USPTO has not sufficiently discussed and addressed, in public forums, the concerns it raised. Because the primary effect of the Rulemaking is to generate more revenue and fees for the USPTO, we believe the USPTO is obligated to more openly discuss how it spends its funds.

Finally, if the USPTO’s investments in IT enhancements and updates over the last few years come to fruition soon (for example, the retirement of TRAM), they should lead to considerable savings of time (and thus expenses) in processing trademark applications. We encourage greater discussions with and feedback from users about how IT improvements and software tools could potentially reduce USPTO costs and examiner hours.

Impact of Proposed Fees on Equity

The proposed fee increases and procedural hurdles created by the Rulemaking are inconsistent with the Office’s goal of increasing access to IP protections for individuals and businesses that are part of underserved and disadvantaged communities. We applaud the USPTO’s efforts to narrow the gender gap and to support inventors and rights holders from minority communities. But across-the-board trademark fee increases, combined with the increased complexity in predicting the total cost of applications, could very well set back those efforts.

We implore the USPTO, at a minimum, to search for ways to conduct greater outreach to populations historically underserved by intellectual property rights. In our opinion, the interests of equity would minimize fee increases for new trademark applications and prevent the newly created fees and the unpredictability that they will bring. We also suggest that the USPTO consider exploring reduced trademark application fees for small businesses and first-time applicants to promote trademark protection in communities that have been disadvantaged over the years.

Conclusion

Trademark fee increases are understandable as costs rise. However, we implore the USPTO to work to minimize the impact of the increases on small businesses. The Rulemaking features increased application fees and complexities that will no doubt adversely affect small businesses, and thus could easily impact the entire trademark Register and the American economy. Additionally, the public is entitled to greater transparency regarding the fee increase justifications, including the USPTO’s expenditures on IT upgrades.

Sincerely,

Erik M. Pelton & Associates, PLLC

[1] U.S. Chamber of Commerce, https://www.uschamber.com/small-business/state-of-small-business-now.

[2] See https://www.wipo.int/edocs/pubdocs/en/intproperty/944/wipo_pub_944_2013.pdf at p.9

[3] We recognize that from the USPTO’s position reviewing applications, the changes may decrease complexity.

[4] There are examination time savings when applicants file multiple co-pending applications that feature identical information but for one category, namely the mark (logo vs words, for example) or the class. The USPTO could explore discounting filing fees for such filings because the time and effort to review them is reduced.

[5] Higher fees for Petition to Revive and post-registration grace period filings would help better incentivize timely action and generate additional fees from filers who have fail to comply with deadlines.

[6] To our knowledge, the USPTO does not collect or maintain statistics in trademark cases on small versus large entity applications. Collecting and tracking the filing and renewal information related to small businesses could help the USPTO better understand the needs of small business applicants, and thereby better align the USPTO with its goal of reducing the burden on small businesses.

[7] One example is the term “education”, which is featured in 378 current entries including “Children’s educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself” and “Research in the field of education.”

[8] Also unreported by the USPTO is the saving generated when printed registration certificates were stopped, along with the fees generated by the new 3-month office action extension fee.

[9] The USPTO’s FY 2025 Budget estimates a reserve of $85M at the end of FY2025. https://www.commerce.gov/sites/default/files/2024-03/USPTO-FY2025-Congressional-Budget-Submission.pdf

[10] Note that our comments to the USPTO in 2020 predicted such a decrease. See https://www.regulations.gov/document/PTO-T-2019-0027-0001/comment.

[11] In addition, the Rulemaking’s proposed increases to post-registration fees may add to the decline in such filings.

[12] For example, we recommend undertaking a cost–benefit analysis of the IPR Attaché Program.

[13] https://www.oig.doc.gov/OIGPublications/OIG-19-012-A.pdf (“July 2017 estimates for TMNG placed the final cost at $260.7 million, with completion planned for 2021— more than eight times the initial estimated cost and 7 years later than originally planned. TMNG’s escalating costs and schedule delays are, in part, the result of inadequate oversight, planning, and a flawed process to correct deficiencies.”).

Photo of Erik Pelton testifying at the TPAC 2023 trademark fee hearing

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The following is an edited transcript of my video 4 Tips for a TTAB Hearing.

TTAB hearings can be important tools in a trademark dispute or appeal at the USPTO. I’ve watched dozens of hearings, and participated in many myself. Here are my key tips:

1. Know the rules of the Trademark Trial and Appeal Board (TTAB): the rules for evidence, for the case, and for the hearing. They’re very similar to the Federal Rules of Civil Procedure, but they have their own nuances and it’s important to know what those are.
2. Know the evidence of record in the case. Generally, I always prepare for the hearing by making a binder full of all the evidence in the case. At the hearing, I have the entire binder organized and tabbed with me so that if I need to refer to specific evidence in the record, I can show the judges that the evidence is tangibly in the record. Saying there’s evidence about a particular fact is one thing, knowing there’s evidence is better, but knowing there’s evidence and pointing directly to the page number of that evidence is far and away the best and most convincing.
3. Stand. With so many things on zoom or video, people have a tendency to sit at their desk. I strongly recommend investing in a standing desk. Standing has much better energy, better eye level and focus for the camera, and makes your performance while thinking on your feet that much better. When people are sitting, they tend to slouch, look down at their materials, and have lower energy. Standing up is a simple but key tip.
4. When to request a hearing: Request a hearing when you have something important to say about evidence that’s hard to explain in the brief, about the story of the party and the history of the case, about a new law issue that’s never been examined or decided before. When you have something to say, it’s worth doing a hearing and can only strengthen your advocacy for the client before the TTAB. The post Trademark Trial and Appeal Board (TTAB) Hearing Tips appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video What is Trade Secret Protection?

There are numerous different types of intellectual property, such as trademarks, copyrights, and patents. Another type of intellectual property is trade secrets, such as the formula for Coca-Cola, or the original recipe for Kentucky Fried Chicken. These examples of intellectual property are protected because they have been kept secret, which makes them different from trademarks, copyrights, and patents in several ways—a key differences being that all those other forms of intellectual property are filed publicly and are disclosed as part of the process of obtaining protection. By its very nature, trade secret is undisclosed.

Business internal workings are kept secret and protected as trade secrets. An example is some of the algorithm that Google uses to build its search results, which has been kept secret to keep it away from competitors and to keep people from trying to game the algorithm and the system. The recipe for WD40 has been kept secret for many decades. Trade secret protection is available for any type of information or idea that is secret and undisclosed and gives your company a competitive edge. Keys in protecting trade secrets include:

• you must hold the information tightly closed internally and keep it secret
• you must have written protocols and policies within the company for the protection of the secrets
• you must follow those protocols and guidelines, and you must enforce them if somebody breaks them

One key piece of protecting trade secrets can be confidentiality agreements and NDAs (non-disclosure agreements). If you have trade secrets or you’re going to develop trade secrets within your business, you want to talk to an attorney about helping to construct and build a set of policies and protocols and enforcing them so that you can ensure that your efforts regarding the secret are fruitful and you can benefit from the protection if it’s done correctly.

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The following is an edited transcript of my video 25 Benefits of Trademark Registration.

1. It allows the owner to use the ® symbol, which conveys a brand’s status and helps ward off Infringers.
2. You appear in the USPTO database, so when other brands are searching and clearing new names, it helps avoid conflicts.
3. By being in the database, examiners will automatically block any conflicting application for a similar name, similar goods and services, and likely to cause confusion.
4. Registration creates a tangible asset that can be bought or sold, licensed and assigned value.
5. That tangible asset can be used as a security interest or collateral for a loan.
6. Should you need to go to court, registration allows you to seek potentially triple damages and attorney’s fees, making for a much more compelling threat or negotiation.
7. In going to court, having a federally registered trademark gives you jurisdiction in a federal district court, which is significant and important.
8. For such a court proceeding, having a trademark registration gives you the presumption of owning that trademark, which carries important benefits in any dispute.
9. Conveys nationwide priority throughout the US in all 50 states and US territories, and that protection can start as early as the filing date of the application.
10. Registration can form the basis of filing for international protection in other countries.
11. When dealing with potential infringement or cyber squatting situation, it’s a powerful tool to attach to a letter and to make a demand for a quick resolution.
12. The ability to record a registered trademark with US Customs and Border Patrol, who can block and screen at the ports of entry.
13. A wonderful registration certificate that you can display.
14. By investing in brand protection, you are saving multitudes of the potential for a much more costly, protracted dispute.
15. Registration is essentially insurance for your brand by building up a fort of protection around it.
16. It shows competitors that you’re protected. This is valuable in being taken seriously and not being knocked off and copied.
17. It shows customers that you’re protected, conveying a message that your brand is important and significant to you.
18. It shows your employees that your brand is important and protected, so your staff will know how much effort, energy, and value has gone into creating your brand and what stands behind it.
19. It makes the business as a whole more valuable. Studies show that businesses with registered trademarks generally perform better than businesses that don’t.
20. Enforcement of any trademark issues are generally less expensive, less burdensome.
21. The ability to enter into the Amazon brand registry.
22. Provides more tools to deal with any domain name disputes or cyber squatters.
    1. 1. Provides more tools and a stronger claim against any social media infringers.22
23. Discourages others from even thinking about infringing or copying your brand.
24. Having a trademark registration is a tremendous tool if an issue does arise, by making it easier, cheaper, and faster to deal with. Collectively, you can see trademark registration is a very important and valuable tool for any business—big or small.

For more information about trademark registration, see here.

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We recognize that business owners have a choice when it comes to protecting their brand and who they hire to work with them. We stack up differently against most others in the field of trademarks. To the best of our knowledge, no one else offers the same suite of characteristics that we have at EMP&A, see below:

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The following is an edited transcript of my video What Are the Steps in the USPTO Trademark Application Process?

The trademark application process is very complex. Even a straightforward application generally takes over a year and has many steps—from getting signed, submitted, filed, and assigned a serial number to getting reviewed, approved, published, and registered. Those are the minimum number of steps, and you can see from this graphic that there are a whole roadmap of possible steps depending on what happens with the application. Experienced trademark attorneys know every step of the way because we deal with it repetitively over and over again. Our firm has helped thousands of applications become registered.Not only are there many steps, but each step has rules and forms, and this adds to the complexity. The USPTO manual about the rules is hundreds of pages long. Data shows that working with an experienced trademark attorney improves the odds of success significantly. Don’t be overwhelmed by the complexity of the process. Instead, find a expert partner to help navigate that process for you.

Learn more about working with us here.

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A recent report from the United States Government Accountability Office detailed the need for better handling of the fraudulent trademark filings at the USPTO. The report, which was sent to the judiciary committees of the House and Senate, as well as the Secretary Commerce, notes that the GAO recommends “improving USPTO’s fraud risk management to help address the problem” of registrations that “may include false or inaccurate claims and could be fraudulent.”

Some key findings from the report:

• The USPTO has not conducted a comprehensive fraud risk assessment of the trademark register or designed a fraud risk strategy. Implementing leading practices from GAO’s Fraud Risk Framework would allow the USPTO to comprehensively consider fraud risks, establish more effective controls, and fully articulate a tolerable level of fraud risk while considering the costs and benefits of potential control activities. GAO also found that the USPTO’s current data systems do not allow the agency to: (1) assess the effectiveness of current trademark fraud prevention programs and (2) implement new technologies for identifying fraud. Academics told GAO that computational tools such as predictive analytics could help the USPTO identify trademark applications with false or inaccurate information more effectively.

Details and full report from the GAO here: https://www.gao.gov/products/gao-24-106533

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The following is an edited transcript of my video Trademark Lessons from Taylor Swift The Eras Tour.Have you seen The Eras Tour, live or on video? It is a tremendous show and performance. I found five takeaways for brand owners.1. Many elements go into making something great. Great songs, great voice, great connection with the audience, great charisma, great performance, great production—a lot of elements that go into it. And a trademark application has a lot of elements that go into it: the drawing, the description of goods and services, the dates of use, the evidence of use, the ownership. 2. It takes a lot of help to make something great. Incredible musicians playing on stage, dancers, choreographers, a whole team of people that make this event great. Experienced attorneys, in my opinion, are the best type of team to help make a trademark application the best it can be. 3. It’s a very long concert, and the trademark application process is a long and winding road, and currently takes a minimum of about a year and about a year and a half on average. 4. Creativity is key. This is part of what makes Taylor Swift’s brand and music so great. Nothing sounds exactly like it, and her voice changes from era to era, from album to album. In trademarks, creativity is also an essential key. To have a strong brand, you must build it on a creative name and a creative foundation in common.

Taylor Swift is a master of branding and trademark protection. She has over 180 registrations and applications at the USPTO. Before the concerts launched, she filed to protect Taylor Swift’s the ERAS tour, and on the day the movie announcement was made, she filed to protect the name in connection with films and movies. She is an expert at trademarks. You don’t need to be Taylor Swift to protect and register your brand — in fact, registration is even more important for small businesses because they don’t have a team of lawyers who can send demand letters and file lawsuits easily. So don’t let the success of Taylor Swift dissuade you from the importance of protecting your brand regardless of the size.

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The following is an edited transcript of my video Key Trademark Terminology.

I find it fascinating when I’m in somebody else’s place of business and I’ll hear words that might have a meaning to me, but I know that they’re using them in a way that’s specific to their work and their industry. At the dentist office or at the auto shop, they’re using vocabulary terms to talk about their work that don’t resonate with me because I don’t know anything about dentistry or the insides of a car. The same thing can apply in the world of trademarks. There are lots of terms: many of them are common words in the English language, but they have very specific, unique, important meanings in the world of trademarks, and there can be a lot of nuance to it.

On their face, some of these words (such as application, common law, priority), are easily definable, but to know what they mean in the world of trademarks and trademark protection and a potential trademark dispute is a much more sophisticated question. To somebody who doesn’t practice trademarks every day, it’s not really possible to know the full meaning of all of these terms, like a comprehensive search vs. a knockout search; what does incontestable mean; descriptive vs. suggestive vs. generic when it comes to the strength–or lack of strength–in a particular term; or whether a term is arbitrary or fanciful.

If you work with a trademark attorney, you have a better chance of getting it right, and part of it is because of knowing the terminology. The data shows that experienced trademark attorneys have a greater rate of success in getting applications approved and registered at the USPTO.

Learn more about trademark registration – and terminology – in our Trademarkive®.

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The following is an edited transcript of my video Measuring the Competition.

There are a lot of trademark lawyers out there, and different firms can be a fit for different trademark owners depending on the client’s needs. If I were hiring a firm, Here are some things to consider.* If one competitor is much cheaper than the average in the field, you might ask “Why would I choose the cheapest option if it’s not providing all of the same things that the other options might provide?” * Do they charge flat fees or hourly fees or a combination? * Do they have former USPTO examiners on staff? * How much experience do they have? * Do they own trademark registrations of their own and practice what they preach? * Do they educate others in the field of trademarks by teaching, providing webinars, or creating content? * Do they use patent pending software that’s proprietary and developed for their clients? * How many registrations have they obtained for their clients? * Do they have a laser focus on trademarks? * Do they take part in policy discussions with organizations, associations, and the government agencies that are involved in the world of trademarks? * Do they provide personal service or do they have layers of people to talk to before you get to the actual attorneys handling of the work? * Have they published any books? * Do they provide free information and resources on their website to help educate others about their trademark needs and the world of trademarks? * Are they invested in providing pro bono services and giving back to those who may not have the resources available to do it on their own?

Learn more about our experience at:https://www.erikpelton.com/about/ The post Trademark Law Firms – Measuring the Competition appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video Proper Evidence of Use for Clothing Trademarks.

In any application to register a trademark at the USPTO, it’s important to have the proper type of evidence to support, use, and register the trademark—whether it’s a name, a logo, or a slogan. This is most complicated, believe it or not, when it comes to clothing. The reason is that clothing is often expressive. Generally, the indicator of source for clothing will be in the back of the neck or on a hang tag or packaging when it is sold and purchased, as you can see in the visual below.All of these things are very nuanced, and depend upon the specifics of each situation—another reason why it’s valuable to work with a experienced trademark attorney. For more information about trademark registration, see here.

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The following is an edited transcript of my video Trademark Stories to Watch in 2024.

The first big story I’m watching is USPTO fee changes and increases. The USPTO will be issuing a proposed rulemaking in the next few months, which will turn into a final rule that will lead to new fees. The timeline the USPTO has provided says that the new fees are likely to go into effect around the end of the fiscal year in the fall.Another big story is USPTO Trademark Technologies and Systems. At the end of 2023, the new USPTO search system rolled out. The USPTO has said that there’s also a new assignment filing system coming, and a more user-friendly new trademark application filing system.Lots of celebrity trademark stories to be in the news again this year. I talked a lot about Taylor Swift in 2023, but also other celebrities with protected brands, like Tiger Woods and his recent breakup with Nike. Lionel Messi—who continues to expand his portfolio of endorsements, but still has not fully protected his name at the USPTO. Finally, Monster Energy, which lost several trademark cases last year and has long been accused of being overly aggressive or perhaps even bullying in their trademark litigation enforcement tactics. With these losses, will we see any change in how aggressive Monster Energy is, will we see appeals, or will we see other cases where Monster Energy either succeeds or is rebuffed in their efforts to stop other brands from using the word “monster”?Lastly, the pending Supreme Court case about “Trump too small”, and whether the refusal to register that name without consent violates the First Amendment. This issue is interesting because it’s before the Supreme Court and relates to trademarks, but does not impact the vast majority of trademark applicants.Follow along as we update these stories by subscribing to our YouTube channel or to our podcast wherever you listen.The post Trademark Stories to Watch in 2024 appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video Trademark Lessons from The Bear.

The Bear is a great television show about a restaurant—specifically building out a restaurant—and my family is in the restaurant business, so it hits close to home for me. Here’s a few trademark lessons that we can learn from The Bear.In the restaurant industry, there’s always some emergency, something going wrong. They discover mold. The fire detection system won’t work. Whatever it is, there’s always a fire, literally or figuratively to put out. In the world of protecting a trademark, there’s going to be fires from time to time, whether it’s a copycat that pops up; a hiccup during the application process; a hurdle from the examiner and the examination process—there’s always fires to put out.

In season 2, we learned a lot about how training and experience matters. I loved how Carmi sent several of his staff away for training to become experts and learn from others. I’ve been in the world of trademarks for 25 years. and I’m always still learning—going to trainings, conducting trainings, being both the student and the teacher. Training and experience matter.

The Feast of the Seven Fishes episode in season two is so riveting and so real. The world of trademarks can feature stress and drama. Whether it’s dealing with a refusal at the USPTO, having to go to court to defend yourself against an infringement claim, or to sue somebody else for an infringement claim, there can be a lot of stress and drama. However, registering your trademark and working with experienced counsel is going to help minimize the odds of that.

The restaurant world is also full of fun and excitement, and it’s the same in the world of trademarks. Getting that registration certificate, launching a new product or logo, using the ® symbol.

In restaurants, one has to expect the unexpected. In a trademark registration process, you have to expect the unexpected. It’s a long and winding road to trademark registration.

Finally, the end of season two features the grand opening of the new restaurant, and it’s full of tension and stress, but also so much joy. Seeing the customers’ reactions to the top quality service and top quality food that makes all of that hard work, all of that drama and stress so worthwhile. We can relate that to the world of trademarks. In the end, it’s the customers and clients for us that make it all so worthwhile. We take most of the drama and deal with it ourselves so that our clients don’t have to. They learn how to navigate the ups and downs and ins and outs and deadlines and issues with the trademark application process, with monitoring, with other aspects of their brand protection. We’re trying to provide that same great service to bring that same joy to our customers’ faces.

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The following is an edited transcript of my video Top Trademark Trends of 2023.

2023 might be considered the busiest year in the world of trademark developments in a long time.

The Supreme Court heard a trademark case involving a trademark application for the phrase “Trump too small”, that it has not yet ruled on. The case relates to First Amendment issues and whether the bar on trademark registration that features the name of an individual is valid. stay tuned in 2024 as the Supreme Court issues their rulings to see what happens.

The Supreme Court decided a case that Jack Daniels brought against a dog toy that was a parody of a Jack Daniels bottle. Jack Daniels won with a finding that the dog toy bottle infringed their trademark. The Supreme Court did not use the First Amendment to analyze the parody–which is what the defendant had hoped for–and that’s how the case turned and was ultimately decided.

Another big story from this year was the USPTO’s rollout of a new search system. This happened on the last day of November, and the new search system is working well. It is more robust, more complex–and it is not easy to learn all the advanced features–but it is a big development that impacts not only the examiners at the USPTO, but also attorneys and users of the USPTO system, and how we search for trademarks there. The old system had been launched in was either 2000 or 2002, so it had a very long lifetime.

Unfortunately, 2023 also saw more new scams targeting trademark applicants and owners. We saw new scams where people called applicants on the phone pretending to be from the USPTO and asking for money and filing fees. This is obviously extremely worrisome. You can watch other videos in our playlist at erikpelton.tv to learn more about trademark scams.

Another big story from 2023 was about the fees at the USPTO. The filing fees the USPTO has proposed will be increased for the most part in 2024. They started the process with a hearing and a request for comments in 2023. There will likely be another more refined proposal coming out in spring 2024, and then new fees (mostly increases) to be rolled out in the fall of 2024.

The USPTO also saw continued lags and delays in many areas for trademark owners, applicants and registrants. Things are taking longer than ever because of the filing surge back in 2020-2021, and the USPTO is still getting out from under the burden of that surge, even though filings have been down a little bit each year since then. Filings are still at near record highs and there are still tremendous backlogs at the USPTO –such that a new application right now at the end of 2023 is unlikely to even be opened and examined for about nine to nine and a half months after it gets filed.

There were many trademark stories in the news and social media throughout the year, like the change from Twitter to X, Meta’s launch of Threads as a competitor to X, and Taco Tuesday.

You may have heard about Taco Bell’s challenge to the Taco Tuesday trademark registrations. Taco Tuesday had been registered for restaurant services for many years. It is no longer registered, so now everybody is free to use the phrase Taco Tuesday when talking about dining on Tuesdays at restaurants, although we all know that most everybody was using that phrase already.

To wrap up 2023 in the world of trademarks is Taylor Swift. She in many ways ruled pop culture in 2023 with her tour and movie (along with Beyonce’s tour and movie as well). Taylor Swift is a master at branding and at trademark protection. We sadly lost Jimmy Buffett, who passed in 2023. His trademark empire contained many hundreds of trademark registrations and brands. And Taylor Swift is on her way to catching up to his empire with an incredible number of trademark registrations, trademark filings, and overall great branding and brand protection.

To stay up to date with the latest trademark trends and news, follow us on instagram, facebook, or linkedin.

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The following is an edited transcript of my video All About the New USPTO Trademark Search System.

At the end of November, 2023, the USPTO launched a brand new search platform for their trademark database. This meant the retirement after more than 20 years of the prior search system, TESS, which had many limitations. The new system is called Trademark Search. Learning how to use it is not simple. I dedicated many hours, listened to webinars, taught a webinar, and practiced extensively on my own so that I could be an expert to help my clients and to other attorneys.

The new system was in beta for about a month or two before the full launch, but many of the features were not fully released until right near the end of the beta. In fact, features are continuously being tweaked and updated, which is a good thing. One of the benefits of this new system is that it’s built on a much more stable, agile platform, meaning modifications, updates, tweaks can be made along the way and in smaller increments without having to freeze it, take it down, and make huge coding changes. All in all, the new system has so much potential. It’s much faster and much more robust.

It has better visual display, it has better mobile formatting, it has better export options for search results, and it’s faster. It’s also much better at doing challenging, nuanced searches like searching for characters, dates, or images. You can’t search for an image just by using a graphic, but the ways that you can search for images is better than the old system.

You can find it and see for yourself at tmsearch.uspto.gov.

For more resources and information about searching trademarks, see here.

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The following is an edited transcript of my video 4 Tips for a TTAB Hearing.

1. Know the rules in the Trademark Trial and Appeal Board (TTAB). The rules for evidence, the rules for the case, and the rules for the hearing. They’re very similar to the Federal Rules of Civil Procedure, but they have their own nuances and and it’s important to know what they are.
2. Know the evidence of record in the case. I prepare for a hearing by making a binder full of all the evidence in the case. When I’m at the hearing, I have the entire binder organized and tabbed with me so that if I need to refer to specific evidence in the record, I can, and I can show the judges that that evidence is tangibly in the record. Saying there’s evidence about a particular fact is one thing, knowing there’s evidence is better, and pointing directly to the page number of that evidence is far and away the best and most convincing. And the evidence.
3. Do the hearing standing up. Now that so many things are on zoom or video, I’ve noticed that people have a tendency to sit at their desk. I strongly recommend investing in a standing desk. It’s much better energy, it’s much better eye level and focus for the camera, and it makes your performance much better.
4. Request a hearing when you have something important to say. About evidence that’s hard to explain in the brief; something important about the history of the case; something important about the law that’s a new issue that’s never been examined or decided before. Having a hearing can only strengthen your advocacy for the client before the TTAB.

For more about TTAB proceedings, visit here.The post 4 Tips for a TTAB Hearing appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of our video International Trademark Registration Basics

Trademark rights are generally limited to the country in which they are registered, but there are international agreements that allow you to file a single application to obtain trademark protection in more than one country at once. This includes regional areas which give you trademark protection in all the countries that are member to the agreements that create them. For example, the European Union, the Benelux Countries, the NDN community, the African and Regional IP Organization, and the Madrid System.

We generally advise that clients think about the countries in which they are currently present, for example:

• offering goods and services for sale
• have offices or employees
• manufacture there

If the budget allows, we start thinking about countries in which the client has plans for expansion. If selling goods, think about protecting the mark in the countries in which those goods are likely to be counterfeited.

Having trademark protection in several countries has the downside of the costs associated with maintaining and monitoring your trademark. But in general, we find that the costs of obtaining trademark registrations are cheaper than trying to fight an infringer without registration rights in a certain country.

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The following is an edited transcript of my video #1 Tip When Applying For Trademark Registration

Of all of these tips that I’ve given—probably hundreds over the years—there’s one that is far and away the most important when applying for trademark registration. And it’s simple. Even though I give away so much advice about trademark applications, office actions, and the registration process, the number one tip is to work with a trademark attorney.

The number one thing you can do to help your trademark application is work with an experienced attorney. It’s risky to apply for a trademark application any time you apply. There are fees, costs, and time involved. Working with a trademark attorney reduces those risks considerably, and therefore the Return On Trademark Investment (R.O.T.I), is going to be much higher. The costs are certainly worth it to make the application better, make it go through the process more smoothly, and improve the odds of registration and the type and scope of protection that you’re going to be granted.

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The following is an edited transcript of my video Tips for Brainstorming New Business and Brand Names

Brainstorming for new brand names is really the genesis of brand protection. The better the name you come up with at the outset, the easier it’s going to be to protect, and more likely you’ll have stronger protection. It’s not easy to come up with a bold, unique, and protectable name, but it is still possible,

Begin with pieces of words and names. Think about suffixes, prefixes and syllables—not entire words.

Think about syllables that help resonate a message about your business, your brand, and what you’re trying to convey to the consumer, such as experience, youthfulness, novelty, wisdom, or any feature of your brand.

Next, start to think about combinations of those syllables in unique and new ways, or taking syllables and adding them to other words. Great brand names such as Netflix, Uber, and Amazon don’t immediately hit you over the head about what they’re doing, but when you know what they do, they strongly suggest something about it.

Once you’ve got some ideas for names, it’s important that you don’t focus on just one name from the outset, because if you find out that it’s not available, it can stifle the brainstorming process and make it harder to go back and generate new names.

Focus on a whole list of possibilities, and then whittle it down to 10 or so, then do some preliminary searching on major search engines and the USPTO website. Narrow it down then to 3-5 names.

At this point you want to talk to your trademark attorney and start to think about what’s possible. Are there any obvious conflicts? If not, should we order a comprehensive search? Nobody’s ever going to be able to tell you that a name is entirely risk-free, but hopefully you’ll end up with at least one that has a very low risk associated with it.

After you’ve worked with an attorney to do a comprehensive search and get the green light, you want to immediately file an intent to use trademark application and start protecting it.

Too often, businesses come up with a good name and then put it to the side while they work on getting the funding and details necessary to start the business—which can be a long process—but if they haven’t filed that trademark application, they’re completely exposed and vulnerable during that window of time. If somebody else happens to come up with a very similar name in a similar industry during that time, if there’s no application filed, that name could be very vulnerable by the time the business is launched.

Lots more on this subject here: https://www.youtube.com/playlist?list=PLj16B071QCZVLtFnYzb7gLDk_AfC2vMQ-

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The following is an edited transcript of my video 3 Things I’ve Learned Teaching Trademarks

I’ve been teaching for the last few years at Howard University School of Law, where I teach and supervise the trademark clinic course. In addition, I have taught many webinars and other courses on a variety of trademark topics. I want to share three things that I’ve learned teaching about trademarks.

1. Every case is unique. When we have a client matter, there’s always some unique twist. New things come up all the time, because the facts in every case are always unique. When we’re teaching about trademarks, we’re teaching about the fundamentals and the principles, and about the framework for analysis and how to use your judgment within that framework to evaluate possible conflicts and other trademark issues.
2. Searching trademarks is incredibly difficult. Searching to clear trademark brand names both with the USPTO and elsewhere is incredibly challenging to do and to teach. It takes doing thousands of searches to really know how to build, construct, evaluate and use an effective search. Part of that is because of the search systems are complex. Part of that is because you’re using your judgment every time you do a search, look at the results and come to a conclusion, so it’s really challenging to teach that in a short period of time.
3. I get just as much—if not more—out of teaching than the students do. Teaching keeps me on my toes and in touch with new developments in the law. And also in having to explain it and answer questions from students, it forces me to sometimes reevaluate how and why we do things, so I learn at least as much as the students do. The post 3 Things I’ve Learned Teaching Trademarks appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video When Two Identical Brand Names Coexist

People often have the mistaken impression that a trademark has to be completely unique in the universe. That would have a real limiting effect on the number of brands that are out there because Apple, for instance, is in the name for many businesses. There’s Apple the computer and iPhone maker, and Apple Records and many other businesses that have Apple in the name that are in different industries or fields. When you’re doing an analysis, it depends on whether two marks are likely to be confused, on how strong, distinctive, and creative the term is, and on how similar or dissimilar the goods and services are. It depends on their channels of trade, how they’re marketed and sold, and many other factors, but those are generally the most important ones.

This is one of many reasons that it’s very important to work with an attorney and an expert when you’re dealing with trademark issues.

Recently somebody said, Peloton might be infringing the Pelton name, and I do get quite a few misspellings where people address me as Mr. Peloton, which is always entertaining, but I love Peloton. What they do with exercise and bicycles has nothing to do with what I do for legal services and trademarks. Plus, there’s a slight distinction in the spelling, and so there is no conflict there, and both of our names are registered at the USPTO.

Other names that coexist that are pretty well known are Delta Air Lines and Delta Faucets – two totally different industries that don’t interact or connect. Dove soap products along with Dove chocolate and ice cream – different products, different aisles in the store. They don’t really interact and both co-exist.

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The following is an edited transcript of my video Top Tips for Avoiding Trademark Scams

No matter how many times I speak, post, and warn about them, scams are everywhere, and I get messages from people who are receiving scams almost every week.

• Tip #1 for avoiding trademark scams is know your registration renewal dates. Many scams try to get you to renew your trademark long before it’s even possible, so if you know the renewal dates, you can avoid those.
• Tip #2 to avoid trademark scams is to keep your phone number out of the USPTO public records. New scams are coming through via phones where scammers are calling and pretending to be USPTO examiners. If you leave your phone number out of the USPTO public records, that scam can likely be avoided entirely.
• Tip #3 is check online for any information about something you receive and you’re not sure whether or not it’s a scam. Google the address, the name, more information about it. You can always go to isthisatrademarkscam.com to help identify and warn against scammers. The post Top Tips for Avoiding Trademark Scams appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of our video The WIPO Madrid Protocol’s International Trademark Filing System Part 2.

[For Part 1, see here.]

Here is more about how the Madrid System works:

• To obtain trademark protection in other countries, the owner will need a basic application or registration filed with a country with which:
  • you have a personal or commercial relationship, and
  • which is a part of the Madrid system
• Once you have the application or registration, you will file for your international registration through the Office of Origin
• The Office of Origin will certify or deny the international registration
• If certified, it will be forwarded to the World Intellectual Property Organization (WIPO)
• WIPO will examine your international application for formalities only and will give you an opportunity to remedy any irregularities
• Once any irregularities are fixed, WIPO will record, publish and register your international registration, and will notify each designated country of your intention to apply for trademark protection there
• Each country designated will examine the international application according to their national laws, and will grant or deny trademark protection
• If granted by any designated country, that trademark registration will have the same rights as any national application filed with that country. Important note: once you have an international registration, you will be able to designate countries with WIPO.
• Fees that you will have to pay to use the Madrid system include
  • WIPO basic fees
  • Fees of each designated country.
  • How much you pay will depend on how many countries you designate in your application

Three important things to keep in mind if you’re using the Madrid system to file for your international trademark protection:

1. The rights and scope of the WIPO international registration cannot exceed those of your basic application or registration. That means that things such as the type of mark, the colors of your logo and the goods and services listed cannot exceed those of your basic application or registration.
2. If there are any inconsistencies or irregularities with the basic application or registration, you will have to fix those before filing for your international application with WIPO, to avoid delays or the possibility of getting denied.
3. There is a five-year dependency period in which your international registration will depend on the basic application or registration.

If your basic application or registration gets canceled or limited in any way, your international registration will as well. After the five-year period, you will have the option to convert your international registration into a national registration in each of your designated countries.

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The following is an edited transcript of our video The WIPO Madrid Protocol’s International Trademark Filing System Part 1.The Madrid Protocol system is a trademark filing mechanism created by a series of protocols and agreements providing a cost-effective and efficient solution to register your mark in more than one country by using a single application.

Administered by the World Intellectual Property Organization (WIPO), the Madrid Protocol currently has 112 members covering 128 countries. Utilizing the Madrid system to apply for international protection in more than one country has many benefits:

• It allows a trademark owner to obtain protection in several countries by filing a single application with a single office and do it all online.
  • You have a single international registration to monitor, manage and renew.
  • You only pay a single set of fees and do all of this in one language.
• The international trademark registration will be valid for 10 years, and can be renewed.
• The trademark will appear in a global database that can be accessed by anyone around the world.
• Once registered in each designated country, the owner will have the same trademark protection in those countries as if you had applied there in the first place.
• If the trademark owner applies for international registration within six months of its “basic application,” the owner can also claim priority dating back to the basic application filing date.
• Applying through the Madrid system to obtain protection in more than one country is generally cheaper than doing so on a country-wide country basis.

How do you decide whether and when to use the Madrid system to obtain trademark protection around the world? In all of the following cases, the Madrid system provides a greater alternative to obtaining trademark protection in more than one country:

• If you have an online business and you have goods and services that are long-term
• If you already have a presence in several countries
• If you have plans for international expansion
• If you sell goods that are likely to be counterfeited

For more, see Part 2 here.

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The following is an edited transcript of our video Why Some Trademarks Receive More Protection Than Others

Not all trademarks are created equally. Some are entitled to more protection than others. A trademark can be anything that indicates the source of a business’s products or services, such as:

• words
• logos
• slogans
  • • • colors13
• sounds
• product shapes
• product packaging
• building shapes

We’re going to be focusing on words and why some get more protection than others. It’s important to remember that creativity and uniqueness are very relevant, but it only in the relevant brand or industry to qualify for stronger protection.

At one end of the protection scale are generic words. They’re not eligible for protection at all. Foe example, a camera company called “Cameras” will get zero protection because it describes the category of things that are being made or sold.

A descriptive term is weaker, but it is entitled to some protection, and over time it can become a stronger mark. A descriptive name might be “Camera Supply” for a website selling camera products. It describes what the service is, and that’s a weaker but generally protectable name.

A suggestive name is inherently distinctive. It’s not made up or arbitrary, and alludes to or suggests something about the product or services, such as Netflix. It tells you that it has something to do with movies and the internet, but because it’s a made up combination of syllables and portions of words, it’s suggestive.

An arbitrary name is something like Apple, because it doesn’t tell you anything about the products or services offered.

At the other end of the protection scale are coined or fanciful words, which are entirely made up words like Kodak for cameras. A totally made up word will get the strongest protection in general

If you look at studies that are done all the time about the most well-known or strongest brands, very few of them are descriptive words. It is much easier to become a household name when the word is suggestive, arbitrary or coined.

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Erik M. Pelton & Associates (EMP&A) is a boutique firm focusing on trademark protection for businesses and brands, including trademark and copyright applications, trademark disputes, matters with the Trademark Trial and Appeal Board, trademark clearance searches, and other matters.

We are seeking a law student for a paid IP/Trademark internship ($25/hr) from January to May 2024. Interns will be expected to work approximately 20 hours per week (onsite in our Falls Church, VA office at least one day per week). Applications will be accepted through November 24th, 2023.

Our intern will have an interest in Intellectual Property law; solid research and writing skills; and attention to detail and deadlines. Strong candidates will have coursework or other experience in the field of trademarks and intellectual property.

Intern responsibilities will include:

• Assisting associates with all aspects of trademark clearance, registration, and guidance
• Drafting responses Office Actions at the U.S. Patent and Trademark Office
• Assisting with discovery and motions in litigation matters
• Immersing themselves in the daily operations and projects of a boutique law firm

The EMP&A internship program has a history of mentoring numerous students from various law schools across the country for over a decade.

To apply, please submit a cover letter and resume, to empoffice@erikpelton.com. No phone calls, please. To learn more about our firm, and our work and values, please visit our website.

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The following is an edited transcript of our video Should You Register Your Logo in Black & White or Color?

Generally, registering a logo in black and white provides more protection because it offers broader rights and flexibility to use the colors you choose in the logo, as long as the underlying logo remains the same that you applied for.

However, there are times that registering in color provides better benefits. For instance, if color is extremely important to your brand, we recommend filing your logo in color. If you have a family of brands, meaning you use the same color for all the different brands you own, it would be important to keep the color.

When applying for your logo, we recommend the following strategy:

1. Apply for the logo in black and white;
2. Apply for the logo in color as as well if the colors are important to your branding;
3. If the logo includes words, file a separate word application.

For more on this topic, see https://www.erikpelton.com/video/protecting-words-vs-logos/

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The following is an edited transcript of our video Trademark Application Expert Tips.

Five trademark application tips

1. If saving money is a consideration, think about applying only for your core goods and services. There is an additional fee for each class that is applied for at the USPTO, so think about the goods or services that you mainly offer and apply for those.
2. To be eligible for trademark protection, goods and services must be in use in commerce (not necessarily at the start of the application process). Make sure that the goods or services you apply for are actually those you are using or intend to use with the trademark.
3. Know the differences between two different types of trademark applications:
   1. 1(a): use in commerce, which means you have your business up and running. You’re using the trademark in connection with whatever goods or services you plan on applying for.
   2. 1(b): intent to use, which means you might have an idea for a name and you know what goods or services you plan to use the mark for, but they’re not in use yet.
4. Do not delay. Once you have all the information you need for your application, you have your name picked out, you know what goods and services you want to apply for, don’t hesitate, because the date that you apply is the date that you get your spot in line with the name that you apply for. If anyone comes after you and applies for the same or a similar name, you have priority.
5. Be patient. There is a backlog at the USPTO, so the process can take over a year in some instances. But remember, the most important thing is once you have everything you need, file your application so you get that filing date date. The post Trademark Application Expert Tips appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of our video Trademark Refusal: Genericness.

Once you apply for a trademark at the USPTO, there are numerous grounds on which your mark can be refused registration, one of which is a claim that your mark is generic.Generic words typically refer specifically to a particular good or service, or a class of goods or services. They’re incapable of being protected as trademarks because they don’t indicate a particular brand or source, which is what a trademark is supposed to do. For example, a business that produces cameras called “Camera Company” tells you exactly what it is, and everyone needs to be able to use the word camera to describe a camera.

The takeaway is, when you’re choosing a name, be creative. Do your best not to come up with words that call the thing exactly what it is or that even describe it. Instead, try to think of something that hints at or suggests the good or service to make it more creative and thought provoking for consumers.

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The following is an edited transcript of our video The Importance of International Trademark Registration.

We are often asked, “Why should I apply to register my trademark in other countries?”

• Most countries around the world have a first-to-file system, which means that you’re not required to show that you are using the mark in that country to be able to register your mark.
• Registering your trademark in other countries can protect your reputation in those countries, and can ultimately increase the value of your brand.
• You have the option to use international agreements to obtain protection in more than one country, and in some cases, if you do it within a certain period of time, you can claim priority to when you first file your application with the USPTO.

How do you know if you’re ready to apply for protection in other countries?21

• If you have an online business and you’re offering products or services that are going to be long term.
• If you have an international presence or plans for international expansion.
• If you’re not currently offering your goods in different countries, but it is likely that your goods will be counterfeited in certain countries. The post International Trademark Registration: why and when appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video Practicing What We Preach.

Here at Erik M. Pelton & Associates, we really believe in practicing what we preach. As a small business law firm, we have taken our own advice and we have more than a dozen trademark registrations in our name (17 registrations as of fall 2022). One of our recent registrations is for Trademarkive®, the name of our online collection featuring some of our most valuable content on key trademark topics.We also have several pending trademark applications! It’s important to file a trademark application as soon as you come up with a brand name and plan to launch a product or service. This is called an “intent to use application.” For example, as soon as we plan a new series of videos with a creative title like Brands on the Run or Trademark Briefs, we search and make sure the name is available—just like we advise our clients—and then begin the process to start applying to register with the USPTO.Why it’s important to start early:* You start getting protection early * The process is quite lengthy. It’s always better to start, get your place in line, and get your filing date because that filing date grants you some important rights.

We love working with our clients’ brands and helping protect their brands, and we love branding and trademarks so much that we are always working on our brand and making it clean and consistent, to have the type of brand that we recommend our clients have and to take steps to use it properly and register it.

This is because we love what we do and we think it’s important to practice what you preach. And because we are a small business, we recognize how important our brand is to our success and growth, and how valuable it is to protect it.

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The following is an edited transcript of my video 5 Free Ways to Strengthen Your Brand. Here are five free things that any business can do to strengthen their brand. No matter how long your brand has been around, whether … Continue reading →

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The following is an edited transcript of my video What Are the DuPont Factors in a Trademark Confusion Analysis?A topic that comes up all the time in our line of work is the DuPont factors, and the analysis of them. This famous case (called In re E. I. DuPont DeNemours & Co., from the Court of Patent Appeals in 1973, that then became known as the Court of Appeals for the Federal Circuit) laid out the factors for analyzing a likelihood of confusion in any comparison of trademarks at the USPTO.It’s important to note at the outset that in every case, the facts are unique, and the weight given to the different factors varies. The factors are:1. The similarity or dissimilarity of the marks, in appearance, sound, connotation, and commercial impression. 2. The similarity or dissimilarity and the nature of the goods or services in the relevant applications or registrations at the USPTO. 3. The similarity or dissimilarity of established, likely to continue channels of trade. 4. The conditions under which, and buyers to whom, sales are made. Is it a sale that’s made quickly on the fly? Or is it a type of transaction, product, or service where there’s going to a great deal of time, consideration, and research involved in making a purchase? 5. The fame, if any, of the prior mark. 6. The number and nature of similar marks in use on similar goods and services. 7. The nature and extent of any actual confusion, if there has been, between the two marks at issue. 8. The length of time and the conditions under which there’s been concurrent use of the marks without any evidence of actual confusion, so sort of the flip of actual confusion. 9. The variety of goods on which the mark is used or not used. 10. The market interface between the applicant and the owner of the prior mark. 11. The extent to which the applicant has a right to exclude others from use of its mark on its goods. 12. The extent of potential confusion, and 13. A good catch-all, any court would like to have, any other established fact probative of the effect of use.

In the vast majority of cases, the first two factors are going to carry the majority or all of the work in deciding whether or not there’s a likelihood of confusion. However, the other factors can also be important. But it’s important to also remember that there’s no litmus test. There’s no singular rule, that is one big reason why there is so much gray area and quite a bit of subjectivity in the world of trademarks, and why in doing any kind of an analysis of whether or not there’s potential confusion, or lack thereof, it is important to work with someone who re31ally understands and has gone through this analysis many, many times.

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The following is an edited transcript of my video Will AI Change Trademarks?

Artificial intelligence has been in the news in 2023. And a lot of that is due to the amazing tool ChatGPT, which is a breakthrough in terms of artificial intelligence technology. The company, OpenAI, that built ChatGPT, was valued at $29 billion recently. And yet, they only filed the trademark application for ChatGPT a few weeks ago, and they only filed for OpenAI last year. So big companies sometimes need reminders about the value of trademark protection as well.

Whether AI is going to affect and impact the world of trademarks, and filing and registering trademarks has some of my attorney colleagues up in arms, wondering if their jobs are going to be replaced by artificial intelligence the next five years. I have no such fears.

The process of applying for a trademark registration is both an art and a science, and I don’t think that will ever be replaced by computers. Computers can do some of it. They can certainly approach doing the science part of it. But the art of it is much more nuanced.

Knowing the nuances of how to describe a product or service for a client, how to potentially avoid a refusal, and all the strategy that goes into filing a good trademark application; those are going to be, in my opinion, impossible to replicate with AI.

However, I do think that there are some areas where AI will impact what we do; hopefully, in a very positive way: doing studies based on consumer behaviors, based on brands that are already registered, and based on decades of court decisions about what types of marks are confusing, what types of goods and services are related and unrelated, for that matter.

Perhaps AI can build a very useful body of research that will help give us guidance about likelihood of confusion analysis. But again, it’s only going to be guidance. Every situation is unique, and there are a multitude of factors. That’s why artificial intelligence, my opinion, will never replace attorneys for their counsel and guidance in the world of trademarks.

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The following is an edited transcript of my video Filing Your Trademark Application Early: A Cautionary Tale. It’s very important to file your trademark for protection as early as possible for a variety of reasons. One reason is that USPTO … Continue reading →

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The following is an edited transcript of our video Protecting a Brand in the Amazon Brand Registry. Did you know that 70% of American adults shop through Amazon? That is why it is important to protect your brand on Amazon. … Continue reading →

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The following is an edited transcript of my video 3 Things I’ve Learned Teaching Trademarks. In addition to teaching and supervising the trademark clinic course at Howard University School of Law, I have taught many webinars and other courses on … Continue reading →

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Trademark scams continue to proliferate. This looks essentially identical to past scams, but with a new “name” from TMP and a new address at TMP Online Services, 31-07 31st Avenue, Unit 102, Astoria, NY 11106. The offer asks for $1280. … Continue reading →

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The following is an edited transcript of my video Will AI Change Trademarks? Let’s discuss artificial intelligence (AI) in general, and whether it’s going to affect and impact the world of trademarks, and filing and registering trademarks. Some of my … Continue reading →

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B-I-N-G-O …. have fun with our new game board as you look for brands around you to try to complete the BINGO!

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The following is an edited transcript of our video International Trademark Registration Basics. We often get asked by clients how they can obtain an international trademark registration. Trademark rights are generally limited to the country in which they are registered, … Continue reading →

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The following is an edited transcript of my video Data Demonstrates the Value of a Trademark Attorney. A recent study titled A Tale of Four Decades, Lessons from the USPTO Trademark Prosecution Data by Deborah Gerhardt and Jon Lee, dives … Continue reading →

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The following is an edited transcript of my video Why Some Trademarks Receive More Protection Than Others. Not all trademarks are created equal. Some are entitled to more protection than others. A trademark can be anything that indicates the source … Continue reading →

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The following is an edited transcript of my video The Power of Brand Jingles. A jingles is a form of slogan, but with a tune or sometimes music that accompanies it. Some memorable jingles include: McDonald’s: I’m lovin’ it Rice … Continue reading →

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The following is an edited transcript of my video 5 Free Ways to Strengthen Your Brand. Use the proper symbol for your trademark. If you have a registration, use the ® prominently with your brand. If you don’t, you can … Continue reading →

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The following is an edited transcript of my video Trademark Registration Provides Double Protection. Trademark registration is such a valuable tool to protect a brand that it actually offers double protection, both before and after an incident occurs, should one … Continue reading →

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The following is an edited transcript of my video 3 Things to Do When Rebranding We frequently work with businesses that are in the process of rebranding. Rebranding usually comes about one of two ways: Voluntarily, when a company decides … Continue reading →

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The following is an edited transcript of my video Anatomy of an Appeal to the TTAB. Every year, a few hundred refusals from the Patent and Trademark Office on trademark applications end up getting appealed to the Trademark Trial and … Continue reading →

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On Friday, the USPTO sent out a notice to many trademark owners whose email address were “recently identified a data security incident that impacted domicile information in certain trademark filings between February 2020 and March 2023.” This incident is quite … Continue reading →

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Last week, Erik provided comments to the USPTO’s Trademark Public Advisory Committee regarding proposed changes (increases) to many trademark fees. My comments touched on numerous topics, but focused in large part on the impact that USPTO trademark filing fee increases … Continue reading →

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The following is an edited transcript of my video How to Protect a Book Title. The quick and short answer to “How can I protect a book title?” is that you can’t. But, when it comes to the law trademarks, … Continue reading →

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Unfortunately, I received a new scam in the mail this week. A few weeks after filing a new trademark application, the letter pictured below arrived. The postage and envelope were from Germany! The scam is for a bogus publication that … Continue reading →

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The following is an edited transcript of my video “5 Things Yoga Taught Me About Trademarks“. Lately, I’ve been trying to get back into a routine of practicing yoga, at least once a week. I really enjoy practicing yoga – … Continue reading →

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The following is an edited transcript of my video “Responding to a Trademark Office Action”.

After a trademark application is filed with the US Patent and Trademark Office, it is generally about nine months (as of May 2023) until anything is heard back by the applicant. A great majority of the time, the response is an office action. An office action is a letter—really a refusal—issued by an examining attorney at the USPTO that outlines what requirements have not yet been met in the application. In order to achieve a registration, an office action is issued in a majority of all trademark applications, even when experienced trademark council is used to file the application. Sometimes the issues are small and technical, such as: procedural, tweaking the description of the services, submitting additional evidence of using the trademark. Sometimes they’re more serious and substantive. The most common is a finding of a likelihood of confusion with a perceived conflict with another registration on the register already at the trademark office.

The applicant has three months to file a response, and there’s a lot of nuance that goes into an effective one: properly attaching evidence, knowing what the relevant case law is and how to cite to it, and there’s an art in crafting a argument. When a response is filed by the applicant, the examining attorney reviews it and determines whether the requirements have been met or the refusals have been withdrawn, or whether a subsequent and possibly final office action will be issued. If a final office action is issued, there still is a potential remedy to appeal the decision to a panel of judges at the Trademark Trial and Appeal Board (TTAB).

The important thing is whether or not the end result, is an approval, so I highly recommend using experienced counsel when going through the office action process.

For more about office action responses, and a sample, see Anatomy of an Office Action response to likelihood of confusion under Section 2(d)

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The following is an edited transcript of my video The Value of a Great Slogan.

Slogans are powerful tools that tell consumers about your brand. The best slogans are fun, memorable, catchy, and communicate something important or unique about the brand. Slogans can be registered and protected as trademarks, just like brand names and logos. Here’s a few examples of great slogans.

• HBO: “It’s not TV, it’s HBO.”
• Timex: “It takes a licking and keeps on ticking.”
• M&M’s: “Melts in your mouth, not in your hand.”
• Taco Bell: “Think Outside the Bun.”
• American Express: “Don’t leave home without it.” — and they’ve actually tweaked that over the last few years as the world has moved online to “Don’t live life without it.”

Many of these slogans have alliteration, a rhythm to them, or a play on words, and that makes them even more playful, catchy, and memorable.

Here are some steps for creating, launching and protecting a new slogan.

• Decide on what kind of message the slogan should convey to your customers.
• Brainstorm possible slogan ideas that relate to this intended message, and hopefully settle on the ideal slogan.
• Before you commit to this slogan, search the USPTO records and consult an attorney to do a more thorough search and make sure no one else is using a similar slogan in the appropriate field of business.
• If the name is clear, apply to register that slogan with the USPTO, based initially on intent to use the name, and then to go ahead and begin using the slogan along with the proper trademark symbol.

We like to practice what we preach here at EMP&A: We have several different slogans that we use in different context to convey messages with different audiences or at different times, and each of them are registered. We have our core slogan, “Making Trademarks Bloom since 1999.” It reinforces that we’ve been around for more than two decades; that we help grow, create color and vibrancy with brands and trademarks; and we tie in the sunflower imagery that we use. Whenever I talk to people, they enjoy and remember our slogan and it resonates with them, so we get tremendous feedback on it.

From time to time, we also use, “Experience is our Trademark. Trademark is Our Experience.” This one is playing up our experience of many years and that our focus is just trademarks — it’s one thing to have been around for a long time, but it’s another thing to have been around for a long time with a steady, consistent focus on protecting trademarks that we have.

Another slogan that we’ve got is, “The Nontraditional Trademark Lawyers.” We use this from time to time because it’s a play on trademark terminology – a nontraditional trademark is something that’s not a word or a logo, it’s something like a sound or a packaging design or a color. It has a double entendre, meaning the trademark terminology, and that we’re nontraditional because we charge flat fees, we’re more approachable, and we are a little different.

Here are a few great client slogans that we enjoy:

• A local client here in Virginia is an axe throwing called Axes and O’s, whose slogan is, “Chop Local.” A great play on the “shop local” theme.
• A client that does fitness-related video and other services with the slogan, “Where Every Body Fits.” A play on everybody and every body.
• Chad Barr, my marketing, content and video guru has the great slogan, “Raising the Barr”, a great play on words with his name.
• For consulting that relates to physical spaces and office environments, one of our clients has the great slogan, “Great Places & Spaces.” A nice rhyme and rhythm to that slogan.
• Gary Furr, who’s a consultant, uses the slogan, “Turning Complexity Into Simplicity.” Perfect example of a nice message that conveys something important about your business and is fun, catchy, and memorable.

These real world examples demonstrate how a slogan can help bring to life a brand, add depth and color to it, and reinforce a message that resonates with consumers and tells them more about your business, about what you do, and about what your values or principles are. And that’s why slogans can be so useful and powerful!

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The following is an edited transcript of my video Color Trademarks Case Study: T-Mobile Magenta.

Non-traditional trademarks are some of the most interesting and fun topics to discuss in the world of brand protection. They’re not terribly common for most brands, and that’s part of what makes them interesting. Non-traditional trademarks include sounds, sense, motions, lighting, colors, and more. Essentially, things that are not made up of logo designs or words. I want to focus on color trademarks. Colors can be protected. The brown color used by UPS is a registered trademark. John Deere has the combination of particular shades of yellow and green that they use on farm and tractor equipment registered, and Home Depot has their shade of orange registered. Of course, this does not mean that these brands have exclusive right to use that color in all different ways. We can use those colors, but we may not be able to use those colors for the products or services that those brands have them registered for.

A non-traditional mark—including colors—is generally going to have an even more narrow scope of protection. Very specific as to the shade, the color, how it’s applied, and what the goods or services are. For instance, the magenta of T-Mobile is a registered trademark. T-Mobile does a great job with their magenta color and branding. If you see any T-Mobile promotion—flyer, billboard, store, commercial—it always features magenta and features it in a substantial manner. In order for a color trademark to be registered, it has to have acquired distinctiveness, it has to have acquired secondary meaning. It has to be used over and over again in prominent ways, and that’s what T-Mobile has done such a great job of. That’s what UPS has done such a great job of. UPS also uses the slogan, “What Can Brown Do For You?” That’s called “look for” advertising, which helps the consumer know and think about the color protection even more. T-Mobile does this as well. I believe they have some services that go by Magenta Club or that otherwise use the word “magenta” in the name of the services.

All of this came to mind for me recently at a music festival, where T-Mobile had a VIP booth set up (see pics in the video at erikpelton.tv). T-Mobile had magenta plastered everywhere throughout their booth—on the banners, on the signage—even the lighting for their booth at night was all the same exact shade of magenta. This is a great example of what can be protected for a color trademark, and how to go about doing it in terms of acquiring secondary meaning with extensive use and really getting consumers to focus on that color as part of the marketing.

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The following is an edited transcript of my video “The 5 Ws of Copyright Registration”.

The five Ws: Who, What, When, Where, and Why. Maybe you remember these from elementary school—I know I do. I want to apply that to copyright registration

Who can register a copyright? The simple answer is the owner of the copyright, but that can be more complicated than it seems, particularly if there’s an appointment relationship or other contractual relationship. The author of the work is not always the owner of the work. It is the owner of the work who generally would register a copyright.

What is a copyright registration? A copyright registration is a certificate. You can see an example on the video at erikpelton.tv, a certificate issued by the Library of Congress that contains all the details of the copyright and describes the deposit of the actual work that is submitted to the Library of Congress in order to obtain that registration. When the Library of Congress reviews a copyright application, they don’t do the same kind of in-depth substantive review that the USPTO does for a patent or trademark filing. It’s more of an administrative review. If ever there’s a dispute about the copyright involving the registration, then a court would dig in more to the substance.

When to register a copyright? There’s no timing requirement, but It’s always advantageous to do these things sooner rather than later, because you can only assert statutory damages in a claim in court if the copyright is registered or pending. You could always go back if the work is evolving or changing and file a new copyright for the updated versions in the future.

Where does one register a copyright? The Library of Congress, which hosts the copyright office. You can find more information about that at copyright.gov, where copyrights are registered.

Why would one want to register a copyright? It helps to deal with copycats and infringers. Having a registration makes a much stronger claim, a much stronger threat or letter when you’re trying to get someone who might be copying it to stop and to take it down. The reason is because it gives the owner rights and the ability to sue in court and collect more money, and therefore, that makes the threat that much more intimidating.

EMP&A recently and proudly became the owners of copyright registration for the Building A Bold Brand book. On its face, it appears somewhat simple to answer the questions and fill out the fields in the form. But, there’s a lot of nuance as to how the work is described, what gets deposited, the ownership and authorship questions, and things are never quite as simple as they seem when it comes to intellectual property.

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The following is an edited transcript of my video What is a Presentation Copy of a Trademark Registration?

One of the recent changes at the USPTO in 2022 was the transition to electronic registration certificates. For any trademark that now becomes registered, the recipient automatically receives an electronic version of the registration certificate, and the USPTO no longer mails out a physical copy.

This concerns me. I’ve previously talked about where the savings in terms of the costs are bring passed along to users and filers, but another concern is that the USPTO now says if you don’t purchase a physical copy, you can order a free presentation copy (free only if your application was already pending at the time of the switch in June, 2022). If your application came along after that, you have to pay a small fee to get the presentation copy.

My concern is that the presentation copy is not valuable. In comparing a presentation copy and an actual registration certificate, it’s not as nice looking and it doesn’t contain all of the same information. It’s missing information about the history of the application, the goods and services that the application is tied to, and other important elements.

I’m a big believer in the value of registration certificates—framing them, hanging them to show your employees and your customers how important your brand is and how proud you are that you’ve protected it. The presentation copy falls a little short in my opinion.

What I recommend is to order a certified copy of the registration from the USPTO, which doesn’t cost much more than the presentation copy, and is a much more complete version of it. Check the USPTO website on how to order a certified copy of your registration.

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The following is an edited transcript of my video Great Trademarks Are Everywhere…You Just Have to Look (to see the images discussed, view the video at end of this post)

When I’m out and about, I’m always cognizant of the brands around me, in particular paying attention to—and amazed by—creative brand names.

When developing a new trademark or brand name, it sometimes seems challenging to come up with something unique, new, and important. But it’s worth the effort. I want to share some examples of some great brand names that I’ve recently come across.

You can see the hat that I’m wearing in the video has the logo of the Jacksonville Jumbo Shrimp, which is a minor league baseball team in Jacksonville, Florida. Beautiful stadium, great ballpark, fun time. Jumbo Shrimp is an oxymoron, it’s unique, and it’s fun, which makes it a great name.

I recently was behind a food truck that was a play on K-pop, Korean pop music, and was called K-Bop.

How about jar of pickles that I found in the supermarket that uses the slogan “NOT YOUR TYPICKLE PICKLE”, using a creative play on the spelling of the word pickle within the word typical.

A beer company based in Philadelphia with the slogan “Brew Unto Others”, a witty play on words.

A pho restaurant called Ph’East, P-H’ E-A-S-T.

Panera restaurants donate all of their leftover food items—particularly the breads and pastries at the end of every day—to local organizations such as nonprofits and homeless shelters. Their program is called “Dough Nation”, D-O-U-G-H Nation, which of course rhymes with “donation”.

Finally, on a summer day at the beach in Ocean City, Maryland, I came across Beachin’ Bikes rental shop.

Great brand names are everywhere. You just have to look and pay attention.

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The following is an edited transcript of my video Pickleball: A Boom in Trademark Filings

If you haven’t played pickleball yet, you’ve certainly heard about it. Although it was invented a couple of decades ago, ever since the pandemic in 2020 its popularity has boomed. Some studies indicate that it’s the fastest-growing sport in the United States.

Pickleball is a booming sport, and we can track that in the records of the USPTO. In 2018, there were just 20 filings that referenced pickleball at the USPTO. In 2021, there were 80. In the span of 3 years, it grew fourfold. Continuing into the first 8 months of 2022, there were over 180.

The trademark records of the USPTO really are a microcosm of the overall economy, and you can use it to research many things, such as in this example to show the trends in pickleball. Businesses can use this research to look at trends are in their industries or among their competitors.

The takeaway is don’t underestimate the power of the data in the USPTO record. It can show important things for your business, for your brand, as well as fun and interesting things like the boom in pickleball.

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The following is an edited transcript of my video 3 Things I Learned in Law School That I Apply to Trademarks Every Day.

It has been more than 25 years since I graduated law school (!) and I was reflecting on some of the lessons that I learned in law school that I apply to my trademark work every day.

The first thing I learned in law school is that the practice of law and the connection with entrepreneurs is tremendously underserved. The majority of big law decisions, cases, and court filings relate to big corporations. They have the money. They pay the big law firms. That’s how the world works, unfortunately.

So small businesses and entrepreneurs—while they are the backbone of the economy and of many communities throughout the United States—that connection to working with lawyers is not nearly as strong. They don’t necessarily know about the law… or know what they don’t know about the law. They don’t necessarily have a lawyer on retainer, or they don’t necessarily want to work with a lawyer until they are in a difficult situation. I’m always working on spreading the message of trademark protection to more entrepreneurs and thinking about that all the time.

The second important thing I learned in law school that I apply every day in the world of trademarks is that billing by the hour—which is what most law firms do—is silly. Billing by the hour means that time is the controlling mechanism, and that time is going to impact cost. It’s going to impact decisions. It’s going to impact strategy. Since day one in 1999, we bill based only on flat fees, because we are charging for the value. Of course, time is a factor in the overall project, but we want to bill based on our experience, our service, and the value that we’re providing to our clients. We fight for a trademark application, whether it takes 2 hours or 20 hours, it’s the same flat fee, because we’re charging for the value of our service guiding through that entire application process.

Third and finally is that I begin to realize when studying law, that on one hand there is the law: the statutes, laws, court opinions, interpreting them, and the facts of any given case or item. On the other hand is persuasion. And persuasion is really the important part. Who’s going to do a better job taking the facts, and persuading a judge, a jury, a trademark examiner of the outcome that is desirable? And persuasion often means telling a story. You see this in opening arguments, closing arguments, or in trials and litigation. What I’ve come to realize is that this story applies to the trademark application process as well. We’re telling a story for a brand and in strategizing how to best protect that trademark and sometimes how to navigate it through the obstacles at the USPTO.

We’re essentially telling and writing a story for that brand so that brand becomes protected. I think all of this is because I majored in undergrad in anthropology—this for me is really connecting that anthropology, liberal arts background to the more rigid concrete legal training and focusing on the story. A trademark application is really a blend of an art and a science. And where that blend really comes through is the story. Twenty-five years after graduating law school, I am still reflecting on all that I learned.

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The following is an edited transcript of my video What is the Trademark Public Advisory Committee (TPAC)?

The Trademark Public Advisory Committee (TPAC) is a public committee commissioned by the USPTO that helps advise and give feedback on important issues. There are nine members in TPAC, who serve three-year terms on a rotating basis. The committee meets 3-4 times annually to get updates from the USPTO and give feedback on issues that relate to public interest in the world of trademarks.

I recommend that you check out some of these meetings because they review important matters such as: the latest filing statistics; hiring information at the USPTO; important trademark data and trends; how many filings are coming in from abroad vs. the US; and processing times. The meetings also cover current and upcoming policy issues and changes as well as legislative issues. If there are bills on Capitol Hill that relate to trademarks and intellectual property, they touch on the USPTO budgets, how much revenue and expenses they have, and the related forecasts. They also cover updates from the Trademark Trial and Appeal Board (TTAB): what are its recent activities? What are the backlogs? How many cases have they decided recently?

A topic that I’m always watching closely is IT: what upgrades users can expect to the outdated online systems that we use so frequently and the challenges that the USPTO has dealt with in trying to upgrade and modernize those.

Visit the USPTO website for information on upcoming meeting dates by searching TPAC.

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The following is an edited transcript of my video Our Unique Patent Pending Tool at EMP&A.

At our firm, we aim to practice what we preach. We own more than a dozen trademark registrations for our brand, slogans and other creative trademarks, and we recently became the owners of a patent application.

The internal name for this patent pending (as of June 6, 2022) tool is Tracker, because it is our proprietary internal system for monitoring all of our files. Tracker contains thousands of entries and records for all of our client’s trademark filing work. It goes out every night, downloads updates from the USPTO, syncs data, and delivers reports to us so that we can update clients. It manages tasks and deadlines for us and much more—it is essentially our secret weapon, and has allowed us to file and manage hundreds of trademark applications harmoniously every year for more than a decade.

What makes our system different?

• It is exclusive to our firm.
• It is exclusively for trademarks.
• It is built by trademark attorneys.

People have asked me, “What about protecting the Tracker trademark?” Because Tracker is an internal system, essentially like an intranet, it is not really used in a public facing way, and as such does not function as a trademark because it is not indicating the source of something to the public, which is why we have not applied to register the Tracker name.

Tracker’s cousin software, SOFTMWARE®, which is publicly available and does share some functionality, is free at softmware.com.

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The following is an edited transcript of my video Examples of Great Branding – to see the images and logos, watch the video below.

I want to share several examples of great branding that I’ve encountered lately. The first example is from Peloton. If you notice the Peloton logo, it’s a nice, clean, simple, forward moving logo. They use the logo consistently and place it extremely well all the time. You’ll see the Peloton logo on the bike in several key places: on the screen, on the app, and on the instructors’ apparel. They use the logo to reinforce the brand over and over again, in both direct and subtle manners. This is a great example of clean, consistent use of a brand.

What good is using your beautiful logo if it’s hidden in a place where customers aren’t likely to find it all of the time? Logos and brand names used to be on the hang tags on the back of a shirt, and that would be it. But now we are seeing much more creative expression of where logos are placed, because you want to place it where the customers will see it and know about the brand and the manufacturer.

The second example of great branding is a little different, it’s really the story used to sell the product. The product is the Solo Stove. It’s a mobile, portable fire pit that you can hose off and put in your trunk, or you can leave it in your backyard. The belief when they created this product was that it would be the last fire pit you ever needed to buy, that it would last for a long time, and you could take it with you if you traveled or moved. In their commercials, their brand story is tremendous. Solo Stove isn’t really selling or advertising a fire pit in their commercials. What they’re advertising is something much more valuable: memories, family, good times, and the fun and peace of mind of hanging out at the fire pit. Their commercials do a great job of capturing this. In the end, you’re buying a fire pit, but their advertising is so creative, it’s selling much more than that.

Example number three: Sleep By Number sells you not just a mattress, but a good night’s sleep. And what does a good night’s sleep lead to? It leads to a more productive and more enjoyable day the next day.

Those are some examples of great branding. Think about your brand. You’re not just selling a product or a service, but you’re selling what comes from that. And think about how you use your logo in a consistent, creative manner where customers will see it.

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The following is an edited transcript of my video Trademarks: Measure Twice, Cut Once.

What could carpentry and trademarks possibly have in common? It’s the phrase “Measure twice, cut once.” This is such a simple but powerful phrase. It means hold up, double-check before you move forward. A bit more time up front could save you a lot of time or a fiasco later on.

This applies to the world of trademarks as well. You always want to double-check all of the details when you’re getting ready to file a new application or submit anything to the USPTO. The filings are all public documents, and errors could affect the odds of getting approval. Putting a little bit of extra time up front to make sure that everything is accurate could save time and help reduce the odds of problems later on during the process.

So just like in carpentry, when it comes to your trademark, measure twice, cut once.

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The following is an edited transcript of my video What Are Common Law Trademark Rights?

What are common law trademark rights? These are rights that a business receives from using a trademark, brand name, logo, slogan, or some other indicator or source without registering it. There is not a requirement to register it—many businesses begin using their trademarks before they register them. We recommend registering as soon as possible, but if a business uses a trademark for some period of time without a registration or before they registered, it doesn’t mean that they have no rights.

They have what are called common law rights, which are not necessarily as strong as registered rights. There are limitations. It may be harder to enforce or certainly harder to get damages when you’re relying solely on common law rights, but they do exist and they are valuable. One of the great benefits of registration with the USPTO is that it gives you nationwide protection in all 50 states. Common law rights, on the other hand, may be limited to the geographic scope where the business is located.

For example, a restaurant in Northern California that does not have a trademark registration but has been operating for several years does have common law rights. But those rights may be limited to Northern California because the business may not have transacted any business or be known outside of that geographic area. Geographic scope is another reason that it’s so valuable to apply for trademark registration to have nationwide protection.

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The following is an edited transcript of my video Protecting a Law Firm Brand.

Over the years, we’ve had the good fortune to work with all types of businesses, including many law firms, to protect their brands. Law firm brands can be protected just like any other business. Law firms have logos, brand names, slogans, names for their newsletters or apps, or other features that are creative and worth protecting.

The reasons for law firms to be protected are the same as for any business: to be able to stop others; to create a tangible asset; to use the ®; to communicate to your employees, customers and competitors that your brand is valued and protected; and much more. We’ve actually worked with some trademark and IP law firms because—believe it or not—law firms sometimes get in disputes over brand names, just like other businesses, and we feel blessed that other firms have come to us to help protect their brand.

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The following is an edited transcript of my video 3 Steps to Protect Your Brand in the New Year.

Protecting your brand has tremendous benefits for your business, and there are three things in particular to focus on at the beginning of the year and ensure that you are protected.

1. Check your renewal deadlines for any trademark registrations you have. Whether they’re at the USPTO or internationally, look at all your registrations for any renewals that might be coming due this year. If they’re eligible for renewal, get those renewals submitted quickly so that you don’t risk losing a registration that has a built-up value. File towards the beginning of the renewal eligibility period—that gives you more flexibility if there is a problem during the process.
2. Do an audit of your business and it’s branding. What are all the different brand names, logos, and slogans that you use? Are they all protected and registered to the extent that they could be or should be? If you launched any new logos, slogans, or product names, or if you’re about to launch any of those things in the coming year, have you begun the process to register and properly protect those? Look at how you’re using your brands. Are you using the proper trademark symbols? Are you making your brand stand out in a way that not only benefits its strength with customers, but that helps benefit its strength legally by separating it and making it stand out? Have you revisited your contracts with employees, vendors and independent contractors? Have you made sure that intellectual property and trademark clauses are in those agreements so that you’re building more protection for your trademarks in intellectual property? If your business has been growing and expanding internationally of late, consider whether you should be filing in any other countries to protect your brand assets. Wherever you are expanding, consider protecting your brands in other countries where you’re doing business.
3. Use copyright notices where applicable on your website and on content that you create. Videos, podcasts, eBooks, articles, blog posts, visuals and images—whatever type of content you’re generating, use copyright notice. Each New Year, make sure you’re reflecting the proper year on those notices. Update the footer on the website and any other ongoing materials to note that the year of protection includes the current year.

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Those brand with YouTube channels (if you don’t have one, what are you waiting for?!) can now add some additional brand protection by claiming their new YouTube ‘handle.’ In essence the handle is another way for others to tag your account in videos, it is akin to a username or handle on Instagram, Twitter, or TikTok.

It is worth claiming the handle because:

• you then ensure no one else will claim it and possibly cause confusion
• you make it easier for others to tag and collaborate with you
• it probably gives some favorable results in the YouTube and Google algorithms
• it is simply good brand protection

Some more details from YouTube: A YouTube handle is a new way for people to find you and connect with you. Unlike channel names, handles are unique to each creator, making it easier for you to establish a distinct presence on YouTube.

For more details, see: https://www.youtube.com/handle

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The year saw many trademark stories in the news as backlogs continued at the USPTO even while application filing numbers dropped from their all time highs during the two previous years. It also saw the biggest procedural change to the USPTO application process in decades. Here are the biggest trademark stories of 2022 that we have been following at EMP&A.

USPTO backlog continues. USPTO pendency rates are at an all-time high, as it currently takes about 8 or 9 months, or more, for most new applications to be reviewed. Meanwhile, the USPTO shortened the response time for most Office Action responses from six to three months in December. While filings are down some from recent record levels, they are still quite high. And the number of active trademark registrations in the USPTO database is larger than ever. Additionally, since late December 2021, when new procedures went into effect, the USPTO has received around 100 expungement petitions and about 100 re-examination petitions to get rid of registrations for marks that are allegedly not in use.

IP Cases Abound at the Supreme Court. The Supreme Court will hear the “Bad Spaniels” appeal this term, a case in which Jack Daniels claims that a dog toy manufacturer is liable for trademark infringement and dilution for making dog toys that parody the Jack Daniels bottle. Also on the docket is Abitron Austria GmbH v. Hetronic International, Inc., which will determine the scope of the Lanham Act as applied to trademark infringement that occurs outside the US. The Court has also agreed to hear a patent case this term, and it will rule on a copyright fair-use case brought by the Andy Warhol Foundation for the Visual Arts that was heard this fall.

Queen of Christmas. All Mariah Carey wanted for Christmas was a trademark registration. Last March, Ms. Carey applied for the mark “QUEEN OF CHRISTMAS” at the USPTO for use in connection with a wide variety of goods and services. The application was initially approved and published for opposition in June 2022. But Elizabeth Chan, a musical artist who specializes in making Christmas music and has an album called Queen of Christmas, opposed the application in May. A notice of default was issued against Ms. Carey after no answer was filed in the proceeding. This story garnered much media attention, but much of it was inaccurate. Carey may still be able to use the phrase even without registration.

Celebrity trademark messes. Besides Mariah, there were many other celebrity trademark stories this year, as more an more celebrities launch more and more brands. One example was the November release of the Her Loss album by artists Drake and 21 Savage which included a fake Vogue magazine cover as part of the album artwork, as well as a fake version of Vogue magazine. On November 7th, Conde Nast sued Drake and 21 Savage for $4 million for false advertising and infringing Vogue’s trademarks. The court issued a preliminary injunction and the duo agreed to no longer use Vogue’s marks in connection with the album.

Metaverse and NFT Filings Decrease. While substantially more applications for goods and services that include the terms “NFTs” and “non-fungible tokens” were filed in 2022 than 2021, the number of NFT applications began to decrease in the second half of 2022. Likewise, the number of applications for “virtual goods” and goods and services related to the “metaverse” have also declined in late 2022. It will be interesting to see if this decline continues into the new year.

Offensive names rebranded. A story that was many years in the making, but the football team in Washington, DC is now known as the Commanders, and the baseball team in Cleveland suited up in new Guardians uniforms.

Trademark Scams. Unfortunately, 2022 was yet another year in which trademark scams have continued to proliferate, and new scams were uncovered that dupe trademark filers in various ways. The FTC has also issued a proposed Trade Regulation Rule on Impersonation of Government and Businesses that will hopefully help increase enforcement efforts and reduce the number of scams. We intend to keep an eye on the implementation of the proposed rule and the impact it could have on scammers moving forward.

Looking ahead to 2023. It looks like next year will likely be another busy one in the world of trademarks, between the Supreme Court rulings and the backlogs and changes at the USPTO. My prediction is that backlogs at the USPTO will continue to grow before they begin to come down later in 2023. It will also be interesting to track how the recent economic uncertainties will impact the number of trademark application filings.

© 2022 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 4,000 U.S. trademarks for clients and has represented hundreds of parties in trademark disputes.

Past issues of Top Trademark Trends:

• 2021: https://www.erikpelton.com/top-trademark-trends-of-2021/
• 2020: https://www.erikpelton.com/top-trademark-trends-of-2020/
• 2019: https://www.erikpelton.com/top-trademark-trends-of-2019-2/
• 2018: https://www.erikpelton.com/top-trademark-trends-of-2018/
• 2017: https://www.erikpelton.com/top-trademark-trends-of-2017-by-erik-pelton/
• 2016: https://www.erikpelton.com/resources/articles/top-trademark-trends-of-2016/
• 2015: https://www.erikpelton.com/2015/12/30/top-trademark-trends-of-2015-supremes-slants-swiftmas-and-more/
• 2014: https://www.erikpelton.com/2014/12/31/top-trademark-trends-of-2014/
• 2013: https://www.erikpelton.com/top-trademark-trends-from-2013/
• 2012: https://www.erikpelton.com/resources/articles/top-trademark-trends-of-2012/
• 2011: https://www.erikpelton.com/top-trademark-trends-of-2011/
• 2010: https://www.jdsupra.com/legalnews/top-trademark-trends-in-2010-88564/

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The following is an edited transcript of my video Why Restaurants Need Trademark Protection.

I love restaurants for many reasons. I love a great meal, I love supporting small local businesses, and I have a connection to the restaurant industry: my wife and my brother-in-law own two restaurants. I’ve seen firsthand the power of protecting a restaurant brand. I’ve been blessed to work with filing more than 200 trademark applications for restaurant services. Everything from cheese steaks to sushi, to Korean barbecue, to food trucks, to diners, to ice cream. I get particular joy out of working with them because I know that so many of them are small businesses, local businesses, mom and pop businesses, family run businesses, and I take great pleasure and pride in working with those types of clients.

I’m fortunate because I get to work with ones who understand the value of protecting their name and registering it as a trademark. But many thousands of restaurants have not understood that value proposition. Most restaurants do not have registered trademarks. And they should, because a restaurant name is valuable just like any other brand name. The way people find the restaurant, the way people tell their friends about it, search for it online, or follow a social media page all revolves around the name of the restaurant.

Restaurants are frequently sold to investors or to new owners at some point. And having a protected name is an asset for that transaction and adds value to the business, because any future owner will know that it’s protected.

Restaurants are often copied or imitated, so protecting the restaurant name has value to make sure that if there is a knockoff, you have tools to deal with it more easily, more quickly, and cheaper.

In a world where so much of the communication is online, that makes protecting it even more important. If a restaurant has just one location in one geographic area and is online, and there’s another restaurant with an identical or very similar name in another area, people could get confused, see the wrong menu, find the wrong directions, follow the wrong Instagram account, you name it. And I have seen this happen with clients.

Protecting your trademark with a USPTO federal trademark registration gives you nationwide rights. And even for a local restaurant business, having nationwide rights can be very important for those reasons. When you put that all together, it’s a great investment for the restaurant. Yes, it’s an expense, but it’s an investment. It’s an investment of protecting the future, of enhancing the value of the brand and of the business.

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The USPTO recently submitted comments to the FTC regarding its proposed rulemaking, Rule on Impersonation of Government and Businesses.

The USPTO comments, submitted on December 2, 2022, highlight the wide range of scams that are impacting the trademark system today, and their tremendous impact on all types of trademark operations.

Some quotes from the USPTO comments:

• Specifically, scams involving the impersonation of the USPTO are prevalent, and, as a result, intellectual property owners have suffered significant financial harm as well as the loss of valuable intellectual property rights.
• Scams involving the impersonation of the USPTO are prevalent, affecting tens of thousands of individuals and businesses that own trademarks and causing them financial harm.
• Regarding trademark filing scams, those that involve the impersonation of the USPTO impact thousands of applications and cause losses to mark owners totaling in the tens of millions of dollars.
• As shown in the example reproduced above, the USPTO’s logo, not just its official seal, has been used by bad actors to extort money from USPTO customers.

These comments are some of the most revealing ones ever published by the USPTO regarding the extent of the scams and their impact on the USPTO and users of the USPTO’s filing systems.

USPTO scam comments: FTC-2022-0064-0026_attachment_1 by erik5733 on Scribd

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The following is an edited transcript of my video Update on Trademark Backlog at the USPTO.

Late in 2021, I provided some information about the backlog of trademark filings at the USPTO. As of May 2022, the backlogs are worse. I predicted that they would get worse before they get better, but hopefully we’re close to the peak worse backlog, and soon will see improvement.

The most important impact of the backlog is new applications. New applications are now taking more than eight months to get reviewed before anything substantive happens at the USPTO—before an examiner picks up a new application that’s been filed and begins the review of it, it’s taking more than eight months from the filing date.

The delay reviewing new applications leads to other delays throughout the system and to challenges for applicants who are trying to clear marks that might be impacted by pending applications and are waiting to find out what happens to somebody else’s application. It also means that the delay takes longer for anybody who’s going to ultimately get approval and benefit from a registration, the ®, the ability to sue in federal court for damages, certain types of damages, etc.

Other impacts include renewals taking a lot of time to file. We’re seeing evidence of use filings take longer than usual to file, and all of these have a ripple effect throughout the entire system that impacts every applicant in some way. One way is that by the time something gets reviewed, a period for responding may have expired or lapsed at the USPTO, which causes additional fees or limited options if the filing that took so long to get reviewed gets rejected or needs modification or tweaking. These are real impacts.

I know the USPTO is trying hard to fix this. It takes time to hire and train people, but I would like to see them hire more people, come up with new ways to train people, maybe a task force with some members of the public to help brainstorm ideas for how to attack this backlog. How do we get more examiners trained and up to speed? How do we help keep examiners from leaving the USPTO for private practice or retiring? What incentives might help keep those examiners who might otherwise move on to other careers?

It’s always important to file a trademark application sooner rather than later, but now more than ever, because we know it’s going to take so long—more than a year on average—to get that registration. A lot of rights begin when you file the application, and it’s important to get that serial number and get in the database. But because of the backlog, it’s even more important to begin that application process as soon as possible.

These are some of the issues and some of my suggestions for how to deal with this backlog, which is in fact so significant that even the USPTO’s own dashboard about the backlog is often delayed in getting updated. So let’s work together to try to solve this by sending a letter to the USPTO with some constructive suggestions for how to attack this issue.

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The following is an edited transcript of my video The Value of a Great Logo.

Great logos can be very powerful marketing tools for big businesses and the smallest of businesses as well. A great logo is memorable and can convey a message about the business, the brand, and the products or services to the customer in a way that the words can’t or that enhance what the words the brand itself would convey. Now, a brand name is always going to be more important to protect than a logo. A logo is easier to modify and is less likely to be infringed or copied. But it still is important—especially if you have a great logo—to protect that logo.

Some examples of great logos: [See video for images]

• Nike, the swoosh. If I tell you those words, you know exactly what I’m talking about. It’s simple, it’s powerful, it’s unique. It conveys something about the brand.
• Amazon has a wonderful logo. The arrow that goes from the A to the Z in the logo could be looked at in one of two ways if you look at it closely. Number one, it forms like a smiley face, so it brings happiness and joy. And number two, it goes from A to Z. It literally links the A to the Z in the word Amazon, and that’s a subtle message about Amazon carrying all types of products from A to Z.
• The Washington Capital’s hockey team logo has a great use of white space that shows the US Capitol and an eagle at the same time, and it uses the red, white, and blue because it’s Washington DC and patriotic. It stands out, makes an impression, and conveys something about the team.
• FedEx, another all time great logo. Simple, basic. But uses white space. Did you notice the white space between the E and the X forming an arrow of forward motion? Because FedEx is all about transportation, delivery, and motion. Once you see it, you can’t unsee it.

Great logos are everywhere. They’re on restaurants, they’re on software. Think about all the apps on your phone and those little icons and logos that help you distinguish between the different apps. Great example of the power of logos.

If your brand has a logo that is not yet protected, think about whether it makes sense to file and register the logo. Again, words almost always more important to protect than the logo, But if you have an excellent logo, it is an important part of your intellectual property portfolio to protect and register that logo, grow it as an asset, have tools in case it gets copied, and all of the other great reasons to register a trademark.

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With the FIFA 2022 World Cup in full swing, it is a great time to review the “playing field” for trademark protection.

• Goalie – The ultimate protector and backstop: Trademark Registration
• Defense – Common law rights acquired by use of the mark
• Midfield – Both attacking and defensive for protection when needed: Issuing ‘cease and desist’ letters when infringements occur
• Offense – goal scoring and attacking: litigating as needed to protect the brand

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The following is an edited transcript of my video “Can an Emoji Also Be a Trademark?”

Here at EMP&A, we recently had a lot of fun developing and launching our own emoji icon. Be sure to check out the video at erikpelton.tv to see the emoji: a smiley face with glasses featuring two ® symbols instead of eyes. We thought this was a playful, creative icon to use in videos, on social media, and elsewhere: such in the footer of our website, in some of our posts on Twitter, Instagram, and elsewhere. It’s a fun way to give our stamp of approval to things that we see out there, or to content that we’re creating.

People often ask me, “Can I register an emoji as a trademark?” The answer is, it’s a little bit tricky. Just using it as an emoji for messaging communications on a phone is going to be much more challenging. We’ve done a hybrid where the emoji also functions as a logo. The purpose of trademark law is to indicate the source of a product or service. Because we use it in a variety of different manners—and extensively—we believe that it is a trademark usage. We have, in fact, applied to register the emoji with the USPTO.

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This weekend, the USPTO changes the response time for most trademark Office Actions from 6 months to 3 three months. This is a big change – the biggest procedural change in many years. One 3 month extension is available – but for a fee.

Learn more here:

And here: https://www.uspto.gov/trademarks/laws/2020-modernization-act/new-response-deadline-applications

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The following is an edited transcript of my video The Benefits of Trademark Monitoring.

Trademark monitoring is a tremendous tool in the toolkit for brand owners. Once you have an established, protected brand, there are benefits to staying on top of it and dealing with any infringement that might come up as quickly as possible. Traditionally, big, established, wealthy brands found out about all the things out there that might be problems with their trademarks by paying for monitoring services. These services used to be quite expensive, but they have come down in price dramatically because of all the wonderful online search tools that are available.

Monitoring is a regular check for possibly infringing brands. There could be different scopes. It could be looking everywhere on the internet for domain names, all kinds of databases, including the USPTO. Or it could be more limited, sometimes there would be a benefit in just searching the USPTO records.

The earlier you act, the far better chance you have of getting the other business to make a change, make an adjustment, drop their plans without a significant dispute. From their perspective, once they’re a 1-2 years into building their business, generating revenue and having customers, it’s much more difficult to disconnect from a brand, even if it is a problem in terms of the trademark and a possible infringement. It’s much more difficult practically, and the business owner is likely to be much more financially and emotionally invested in it. That’s why catching it quickly is important, and that’s why monitoring is important and valuable.

If you’re interested in monitoring, look into services that will generate reports for you. Many law firms will generate reports for you with a summary of what they found using a database specialist that goes out and every month, crawls the databases, highlights findings. You want to ideally have an attorney reviewing those findings so they can discuss anything that’s worth considering taking action and taking it from there. We’ve begun offering monitoring to our clients, because we have had so many requests for it. We’re already seeing the benefits and ramifications after beginning to monitor for just a handful of clients. There may be a tremendous value for your brand as well. Check out our monitoring page to learn more.

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The following is an edited transcript of my video The Golden Ratio of Trademark Protection.

We love sunflowers at Erik M Pelton & Associates as a symbol of growth and renewal, and tie that into trademark and brand protection. We’ve been using the phrase, Making Trademarks Bloom since 1999® and using sunflowers for at least 10 years in our marketing, and I recently learned about the golden ratio and sunflowers. The golden ratio is an exponential curve which builds on itself and increases infinitely. It is found throughout nature—from the human body to plants—and creates structure and harmony intentionally by design.

The sunflower is a great example of this golden ratio. If you look at the inner circle of a sunflower—which appears to be rows of seeds—it’s actually not rows, it’s a spiral. The spiral is packed with density at the rate of the golden ratio to allow for the maximum number of seeds and impact to be packed into the size of that sunflower, and scientists have studied this.

The golden ratio is also found in art, music, design and many other places. We can apply it to trademark protection as well. The more a business protects its trademark, the more that protection will build on itself over time and expand. When a business starts out and chooses a unique and bold brand name, that’s going to add to more protection over time. When a brand goes through the process to apply and register with USPTO, that’s going to lead to building and growing more protection over time. When a brand takes steps to monitor and enforce their trademark, that leads to this sort of increase doubling down over and over again for more protection.

The golden ratio is just one way to think about building your trademark protection. The more you invest in trademark protection, the more protection you get and the more you get out of it.

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The following is an edited transcript of my video Tips for Brainstorming New Business and Brand Names. It’s not easy to come up with a great name today, nor has it ever been. But it is still possible—especially with these … Continue reading →

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The following is an edited transcript of my video Trademark Protection for Bands and Musicians. I’ve been blessed over the years to be able to work with a lot of clients that are in the music industry – whether they’re … Continue reading →

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The following is an edited transcript of my video State vs. Federal Trademark Registration. When we’re dealing with the world of trademarks, more than 99% of the time we’re dealing with federal trademark protection with the USPTO, which extends to … Continue reading →

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The following is an edited transcript of my video #1 Tip When Applying For Trademark Registration. Of all of the tips that I’ve given over the years, there’s one that is far and away the most important tip when applying … Continue reading →

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The following is an edited transcript of my video Proper Copyright Notice While this podcast is predominantly about trademark issues, I do from time to time like to talk about other intellectual property issues, especially copyright issues. Today, I want … Continue reading →

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The following is an edited transcript of my video Do I Need a Lawyer to File a Trademark Application?. It is not technically required that you have a lawyer if you are domiciled in the United States when you’re filing … Continue reading →

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The following is an edited transcript of my video Trademarks in the Cloud. The USPTO recently phased out issuing trademark registration certificates on paper to all registrants automatically, and are instead issuing them electronically.  When I launched the firm in … Continue reading →

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The following is an edited transcript of my video Brand Protection Cheat Sheet. I like to have visual aids when explaining topics, so I came up with the cheat sheet below for new brands to go through the basic steps … Continue reading →

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The following is an edited transcript of my video The Recipe for Strong Trademark Protection. The recipe for strong trademark protection is a very simple one. What you need for strong trademark protection is a creative and unique name, register … Continue reading →

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The following is an edited transcript of my video An Ounce of Trademark Protection is Worth a Pound of Curing a Trademark Dispute. There is a very well-known quote from Benjamin Franklin about an ounce of prevention being worth a … Continue reading →

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The following is an edited transcript of my video Building a Bold Brand Wheel: 8 Types of Bold Brand Names. I am always looking for ways to help take trademark and branding concepts and boil them down to a visual … Continue reading →

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The following is an edited transcript of my video When Should I Apply for Trademark Registration?. One of the most frequent questions I get is “When should I begin the process to start applying to register my trademark as a … Continue reading →

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The following is an edited transcript of my video What is the Trademark Modernization Act?. There’s a lot to unpack in the Trademark Modernization Act, but I want to hit the highlights here. It was passed by Congress in December … Continue reading →

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The following is an edited transcript of my video Trademark Applications: What You See vs. What You Don’t. I’ve always been intrigued and fascinated by great magicians – I love watching Penn & Teller for example. I’ve been to several … Continue reading →

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The following is an edited transcript of my video Copyright Concerns When Using Others to Create Content Lots of us use others to help create content online. Many of my clients have contractors or vendors or virtual assistants who assist … Continue reading →

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The following is an edited transcript of my video The Trademark Scam Decision Tree Past listeners and viewers of my videos and podcasts will know that from time to time I provide an update and more information about trademark scams, … Continue reading →

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The following is an edited transcript of my video What Information Becomes Public in a Trademark Application? An important topic that I get asked about frequently is, “What information from my trademark filing will be public?” I’ll get to explaining … Continue reading →

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A lot of design and planning goes into the drafting and filing of a trademark application at the USPTO, each application has a unique blueprint.

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The following is an edited transcript of my video How Does the Supply Chain Impact the World of Trademarks? The news is full  of stories lately the supply chain, trucking, store shelves, shipping, ports, customs, and all of these things … Continue reading →

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Today is apparently something called “World Anti-Counterfeiting Day”. This day is used – by big companies no doubt, to call attention to the harm that fakes cause, and how prevalent they are. Fakes are a problem and one that is … Continue reading →

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30The following is a transcript of my video Red Flags for Any Trademark Application Trends on social media move so quickly, but this one has lingered, and it’s about red flags. Because it’s related to social media, I only learned … Continue reading →

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Prior Preparation Prevents Poor Performance in the world of trademarks; a lot can be done prior to submitting a trademark application at the USPTO to ensure the best chances of success.

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The following is an edited transcript of my video Trademark Protection for eSports and Gamers The world of gaming has come a long way since my Atari 2600 and my addiction to Donkey Kong and Adventure and other, at the … Continue reading →

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The following is an edited transcript of my video Sounds, Colors, Scents, and Other Nontraditional Trademarks Non-traditional trademarks are those things that indicate the source of a brand, but are not brand names, logos, or slogans. And it’s one of … Continue reading →

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The following is an edited transcript of my video Does My Non-Profit Need Trademark Protection? We have been blessed at EMP&A to work with dozens and dozens of nonprofits over the years, doing all kinds of great work. Some of … Continue reading →

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The following is an edited transcript of my video Even Trademark Lawyers Make Branding Mistakes Believe it or not, even trademark lawyers can make branding–or maybe even trademark mistakes–from time to time. I am here to tell you about a … Continue reading →

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The are 8 main types of word tools for creating bold brand names. See my new visual below to lean about the meaning tricks, sound tricks, and combination tricks to help make bold brands. You can read more details about … Continue reading →

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It may not be easy to find a create, creative, bold brand name. But it can be done, and in fact it is done all the time. It doesn’t come easy, but the effort is worth the challenge  – and … Continue reading →

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This trademark scammer has recently moved addresses to 2058 County Line Road #113, Huntingdon Valley, PA 19006. But the scam is the same — warning about trademark registration renewal deadlines with false information long before renewal can be filed. Sadly, … Continue reading →

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The following is an edited transcript of my video The 5 Most Common Trademark Application Mistakes and How to Fix Them In addition to filing many, many trademark applications on our own here at Erik Pelton & Associates for our … Continue reading →

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Tonight in the men’s Elite Eight® of the NCAA® March Madness® basketball tournament, many will be rooting for the underdog, the St. Peter’s Peacocks, against one of the powerhouses of basketball, the University of North Carolina Tar Heels. This isn’t … Continue reading →

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The risks can be very significant. Searching provides the applicant with knowledge, data, and therefore impacts strategies and decisions. The failure to search for potential conflicts can be fatal to an application. More about searching trademarks: \

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The following is an edited transcript of my video How to Water Your Brand for Growth Do you have a green thumb and are good at gardening, growing vegetables, taking care of plants? I wish that I did, but I … Continue reading →

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I recently gave a presentation regarding the Trademark Modernization Act. Since the material was very well received, I thought it would be useful to share my slides more widely here: New Tools and Procedures Under the Trademark Modernization Act from … Continue reading →

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The following is an edited transcript of my video Most Valuable Trademark Features of the USPTO Website Did you know that the U.S. Patent and Trademark Office has a very robust website that has tons of useful information? In fact, … Continue reading →

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In our continuing effort to combat trademark scams and raise awareness of this important issue, we have recently submitted comments to the FTC. “The Federal Trade Commission (“Commission”) proposes to commence a rulemaking proceeding to address certain deceptive or unfair … Continue reading →

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The USPTO website at www.uspto.gov is packed with trademark and brand protection resources. See more in my video below, or read more here. More Peltonisms® at https://www.erikpelton.com/resources/peltonisms/

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I’ve made many mistakes in business over the years. Far and away, the worst marketing mistake I ever made was paying money – several thousand dollars – to be on Forbes radio on airplanes more than a decade ago. After … Continue reading →

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The following is an edited transcript of my video Key Trademark Search Terms I recently saw an ad for a new children’s play activity center that opened just down the street from our office, and the ad had one of … Continue reading →

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The following is an edited transcript of my video Trademark Registration: The Whole is Greater Than the Sum of Its Parts I don’t know where the phrase “the sum is greater than the parts” came from, but I do know … Continue reading →

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The following is a transcript of my video The Time I Got a Negative Review Our topic : the only time I’ve received a negative review online. And it’s still up there. I have not contested, or taken it down, … Continue reading →

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Non-profits benefit from trademark protection too, it is vital for them as it is for any other business. For more, see   More Peltonisms® at https://www.erikpelton.com/resources/peltonisms/

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The following is an edited transcript of my video What Happens When Appealing a Trademark Refusal to the TTAB The Trademark Trial and Appeal Board, or TTAB, is a panel of judges that can decide cases on appeal. They also … Continue reading →

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We are pleased to release our new TRADEMARKIVE. Trademarkive℠ is a one-stop resource for all things trademark. We have curated this content from hundreds of EMP&A videos, podcasts, blog posts, visuals, books, and more — created over more than a … Continue reading →

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Even if there have been some measures to stop, punish, and prevent scammers preying on trademark filers at the USPTO over the last year, it is not enough. More must be done. I get multiple calls, emails, and comments on … Continue reading →

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Even as the USPTO takes new measures that may help in combatting scammers, trademark scams are everywhere. If you’ve received questionable mail about your trademark that was filed with the USPTO, there is a real possibility that it is a … Continue reading →

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That feeling that our clients get when they receive their trademark registration certificate – pride in their brand, and assurance know that it is protected – I know that feeling firsthand, having received more than 10 trademark registrations for our … Continue reading →

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It has been a little while since I’ve seen a WTMR, LLC scam mailing. But a client forwarded this “WTMR 2022 OFFER” letter to me last week. The services are worthless. The $980.00 is a scam. The address listed in … Continue reading →

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We are growing again at EMP&A. We are excited to to announce that we are hiring an Associate Attorney to join our trademark firm! Details and application information below: 2022 Job Posting – Associat… by Erik Pelton

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It says a lot if you file a trademark application without counsel. And it is in the public record for everyone to see. Not only will the odds of approval for the application be lower, but if there is ever … Continue reading →

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The USPTO recently announced, via notice in the Federal Register, that it intends to issue electronic trademark registration certificates, and only will print physical certificates upon request and with a small fee ($25 per copy). Our firm submitted comments this … Continue reading →

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Summer is around the corner, which means we are seeking law student(s) for a paid IP/Trademark internship from May/June – July/August 2022. Intern(s) will be expected to work approximately 30-40 hours per week, primarily onsite in our Falls Church, VA … Continue reading →

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Top Trademark Trends of 2021 By Erik Pelton® 2021 was a busy year in the world of trademarks. The uncertainties of COVID in a second year couldn’t stop huge application filing numbers and many developments in the world of trademarks. … Continue reading →

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Dogs might be man’s best friend, but trademark protection is a brand’s best friend. Here are some fun canine themed trademarks we’ve helped protect:

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10The following is an edited transcript of my video, Preventing Trademark Problems is Like Preventing Cavities. Preventing trademark problems is like preventing cavities. lieve that is for two reasons. One is doing the work of taking care of my teeth: … Continue reading →

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The following is an edited transcript of my video, Creative Trademarks Are Alive and Well on Main Streets in America.  One summer tradition that my family and I really enjoy is a great road trip to explore someplace new, especially … Continue reading →

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At EMP&A, we love good coffee. And we love coffee brand clients who have great trademarks to protect – a few of which are in the image here.

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The following is an edited transcript of my video, The Trademark Protection Decathlon.   One of the most intriguing events in the Olympics is the decathlon, at least from my perspective. The decathlon was created to try to measure the … Continue reading →

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The following is an edited transcript of my video Letters of Protest at the USPTO. There is a tool that comes into play in a very small percentage of trademark application filings—but is an important tool to know about—called a … Continue reading →

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The following is an edited transcript of my video, 50 Ways to Use Your Trademark. Clients ask all the time, “Now that I’ve got my trademark protected or registered, how do I use it? Where do I use it?” The … Continue reading →

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A toast to our numerous clients in the beer industry that we love to work with and sample!

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The following is an edited transcript of my video, The Trademark Instrument Panel.   I’ve had the pleasure and challenge recently of helping teach my son to learn how to drive. It brings back lots of memories of learning to … Continue reading →

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The following is an edited transcript of my video, What Is a Brand Style Guide. A style guide is a wonderful asset for any brand that has grown beyond just one name or one logo to a portfolio of marks … Continue reading →

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The following is an edited transcript of my video, Having Trademark Registration is Like Double Insurance for Your Brand. I will never forget this day about two years ago, because it was one of the biggest panic attacks that I’ve … Continue reading →

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The following is an edited transcript of my video, What Is a Likelihood of Confusion. A phrase that comes up all the time in several different aspects of trademark work is likelihood of confusion. This is a legal standard, but … Continue reading →

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Over the years, we’ve been blessed to work with – and sometimes ride with – many clients in the bike industry!

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We love working with all types of businesses, but earning the trust of many other lawyers and legal industry businesses has been extra gratifying.

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A lot of elements going into making our firm what we are and making it successful. More than just inputs and outputs, work and fees. The things that make up our firm as a whole include people, experience, education, practicing … Continue reading →

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Some proactive habits can help greatly boost the health of our teeth and prevent cavities. Similarly, some proactive measures can help protect a brand and significantly lower the risk trademark problems!

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The following is an edited transcript of my video, 7 Keys to Branding Success. I get asked all the time, “What are the key things I need to know to make my brand successful, to make my trademark successful and … Continue reading →

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The following is an edited transcript of my video, Customs and Border Patrol Registration for Your Trademark. Customs and Border Protection is in the news a lot these days with all sorts of immigration and other issues, but one thing … Continue reading →

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Did you know that trademark registration extends protection to all 50 states, plus US territories?

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The following is an edited transcript of my video, Is Your Brand Seaworthy? Is your brand seaworthy? You’ll see what I’m talking about with my comparison of trademark and brand protection to a strong ship navigating the ocean waters. To … Continue reading →

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I recently co-wrote and article with Olivia Muller about the never ending threat of trademark scams. In the article we detail the scams and how they operate and what they look like, we discuss what is being done about them, … Continue reading →

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The following is an edited transcript of my video, Why Are US Trademark Applications Taking Longer Than Ever?   This year, one of the questions I’ve been fielding more often than ever before is “When? When can I expect my … Continue reading →

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Tricks of the trade(mark)® is my podcast on branding and trademark topics. You can listen to episodes (be sure to subscribe!) here: Web Apple iTunes Spotify

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The following is a transcript of my video, How to Monitor for Infringements. In the past, I’ve talked about some of the ways to keep a trademark strong over time, and some of the things that brand owners must do … Continue reading →

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sofTMware® : a free tool for monitoring the status of trademark applications and registrations. For more about sofTMware®, visit www.softmware.com.

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The following is a transcript of my video Improving the Odds for Your Trademark Application. I get asked a very challenging question all the time “What are the chances do you think this will get through, this will get approved, … Continue reading →

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When driving, the dashboard tells you a lot of information about the vehicle in the moment – the speed, mileage, gas, engine temperature, and more. For brands and trademarks, there is now an instrument panel to use to measure the … Continue reading →

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There are a stunning variety of flowers …. and a stunning variety of trademarks as well. Brand names and logo come in all shapes, sizes, and colors – just like flowers. Below is just a small sampling of recent client … Continue reading →

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The following is a transcript of my video Influencers Need Trademark Protection Too. On social media these days, much of the content and the news that I see relates to influencers. No doubt this is partly related to the fact … Continue reading →

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We’ve been making trademarks bloom since 1999, including these flora logos for client!

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Big businesses need trademark protection; small businesses need it even more. A small business can be crushed by a trademark dispute, or a rebranding. Trademark protection costs money, but the benefits far outweigh the costs. If you are a small … Continue reading →

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My jaw dropped a few weeks ago when I received the response to our FOIA request from the U.S. Postal Inspection Service. They quoted me a $949,284 estimate to retrieve documents regarding trademark scam letters. See full letter below. Given … Continue reading →

The post $949,284 quote from US Postal Inspection Service to address my FOIA request regarding trademark scammers! appeared first on Erik M Pelton & Associates, PLLC.

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A “brand” is the sum total of a number of things that go to the heart of a business’ relationship with its customers and within the marketplace of competitors: For more about Building a Bold Brand, see my book!

The post What is a brand made of? appeared first on Erik M Pelton & Associates, PLLC.

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The following is a transcript of my video Big Businesses Need Trademark Protection; Small Businesses Need It Even More. Over the last 20 years, I have been so incredibly blessed to work with thousands of small businesses. The vast majority … Continue reading →

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A new report from the Department of Commerce, the agency of which the USPTO is a part, was released last week following its ” audit of the United States Patent and trademark Office’s (USPTO’s) efforts to improve the accuracy of … Continue reading →

The post Department of Commerce issues report finding that “USPTO’s trademark registration process was not effective in preventing fraudulent or inaccurate registrations” appeared first on Erik M Pelton & Associates, PLLC.

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Trademark protection isn’t free. But it isn’t terribly expensive. And most important, the Return on Trademark Investment – R.O.T.I. – far outweighs the costs. The returns from investing in trademark registration include Use of the ® Increased protection online with … Continue reading →

The post A brand’s R.O.T.I. – Return on Trademark Investment – far outweighs the costs of trademark protection appeared first on Erik M Pelton & Associates, PLLC.

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This week is the decathlon at the Tokyo summer Olympics. It is one of my favorite events, because it is test of versatility and overall athleticism in track and field. To win, one must be well rounded and very good … Continue reading →

The post The trademark decathlon: 10 events to build a strong and protected brand appeared first on Erik M Pelton & Associates, PLLC.

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Trademark registration guards a brand in the USPTO database 24 / 7/ 365 when other people are research new brand name possibilities, and when examiner are reviewing new trademark applications for possible conflicts. This is a tremendous benefit and value … Continue reading →

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The following is a transcript of my video Three Mistakes That Can Sink Any Trademark Application. I’ve working with thousands of trademark applications that I have filed clients and, before that, as an examiner at the USPTO. In addition, I … Continue reading →

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Building a portfolio of trademarks begins with one. But many – if not most – businesses have several potential trademarks to put in their portfolio. Logos, slogans, product names, and more may be part of a portfolio. Below is what … Continue reading →

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Here are what I believe are The Keys to Branding Success: S start thinking about brand protection from the outset U use mark properly C creative names are bolder and better C clearance search before committing to a name E early … Continue reading →

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We recently revisiting our own branding here at Erik M. Pelton & Associates and undertook the exercise to create Style Guide & Brand Guidelines. As you can see below, the guide summarize our core brand elements – logos, names, slogans … Continue reading →

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Decision tree: Is This a Trademark Scam? If you receive mail that looks like it is about a trademark application or trademark registration, it could be a scam. There are lots of scams – publications that are worthless, renewal services … Continue reading →

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The following is a transcript of my video Vaccinate Your Brand with Trademark Registration. As I record this episode, I’m in between my first and second dose of getting the Pfizer vaccine. I actually heard a friend of mine yesterday … Continue reading →

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The huge influx of US trademark application filings from China may be a form of economic terrorism, intended to create delays and chaos in our system. There is no question that the USPTO has huge backlog right now affecting every … Continue reading →

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The number of influencers who generate significant revenue, sometimes millions of dollars, stemming from their personal brand and yet have never filed for trademark registration is astonishing.

The post An influencer essentially is a brand, and should be protected with trademark filings appeared first on Erik M Pelton & Associates, PLLC.

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One of the key choices at the start of a trademark application process for many is whether to protect a name alone (standard character) or a logo (design mark). Below are some of the key differences to consider when making … Continue reading →

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The following is a transcript of my video Bold Brands Are Like Bees to Pollinate Marketing. As you know, one of my slogans is “Making Trademarks Bloom Since 1999”. As a result, I use a lot of plant and flowering—in … Continue reading →

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My office has filed thousands of responses to trademark office actions from the USPTO, and I’ve worked as a USPTO examiner issuing Office Actions and reviewing responses from applicants. Because I kept getting asked to share details about what goes … Continue reading →

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The following is an edited transcript of my video, Why Suggestive Trademarks and Brand Names Are My Favorite. I get asked all the time about what type of brand names I prefer. The answer for me is easy: for commercial, … Continue reading →

The post Suggestive trademark and brand names are better than the rest. Here’s why: appeared first on Erik M Pelton & Associates, PLLC.

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The USPTO has received record numbers of filings in the last few months and the last few years. And the numbers continue to climb. This has led to record backlogs and delays. The delays are not only impacting new applications … Continue reading →

The post Tips to mitigate the effects of record delays for USPTO trademark filers appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, Building a Strong Office Action Response for a Trademark Application. An office action is when an examiner at the USPTO issues a letter to the applicant asking for more information, notifying … Continue reading →

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The proper trademark symbol is generally use on the right shoulder of the word or logo. See image below to see where it is placed on the sample BRAND logo design. The same applies in text — so I would … Continue reading →

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The following is an excerpt from my video 5 Trademark Lessons from a Year of Pandemic and Quarantine. In some ways, it’s hard to believe that it’s been more than a year of living in times of the coronavirus pandemic … Continue reading →

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The following is an edited transcript of my video, Can You Change a Trademark? Brands often evolve over time, and sometimes brand names or logos change or evolve. Some changes are subtle – such as Coke at one point evolving … Continue reading →

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The following is a transcript of my video Amazon Brand Registry Update for Trademark Owners. For those of you who sell online, you’ve probably heard of the Amazon Brand Registry. We have worked with many, many clients who have participated … Continue reading →

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A portfolio of trademarks entails multiple brand names, logo, slogans, and/or other source indicators protected by a business. Many, or even most, businesses have more than one trademark that could be protected – different brands, or a good slogan or … Continue reading →

The post What does a trademark portfolio look like? appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, How to Monitor for Infringements. In the past, you’ve heard me talk about some of the ways to keep a trademark strong over time and some of the things that brand … Continue reading →

The post How to Monitor for Trademark Infringements appeared first on Erik M Pelton & Associates, PLLC.

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It is not easy to come up with a great new brand name, one that is bold, unique and protectable. Here are some tips: Begin with suffixes, prefixes, root words, and the message to convey to consumers. Use these parts … Continue reading →

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The following is an edited transcript of my video, Why You Should Check Trademark Registration Renewal Deadlines Now. I want to share two important reasons why trademark owners should think about their renewal deadlines right now.  With trademark renewal deadlines … Continue reading →

The post Avoid scams: Check Your Trademark Renewal Deadlines Now appeared first on Erik M Pelton & Associates, PLLC.

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When new clients ask me about what they should do to fully protect and guard their brand, I point them to the five most common habits of a successful trademark client: They don’t delay. They file early and they file … Continue reading →

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The following is an edited transcript of my video, Great Trademarks Are  Everywhere, Even in the Trash. Over the years, I’ve found many interesting trademarks everywhere I go. I think my senses are particularly heightened when I’m traveling and outside … Continue reading →

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This scam showed up in a client’s mailbox this week. WTMR is back. They were going by WTRM.  And now they want your scam check mailed to a PO Box in Fort Lauderdale. I am sick and tired of these … Continue reading →

The post Beware of latest trademark scam from WTMR, LLC appeared first on Erik M Pelton & Associates, PLLC.

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There are numerous and significant differences between the two USPTO TEAS trademark application forms. One question that comes up a lot when people go to file a trademark application at the USPTO (US Patent and Trademark Office) is TEAS PLUS … Continue reading →

The post Differences between TEAS Plus and TEAS Standard trademark filings with USPTO appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, Rome Wasn’t Built in a Day and Neither is Trademark Protection A few years back, I had an incredible opportunity to spend a week in Rome with my family and friends. … Continue reading →

The post Rome Wasn’t Built in a Day and Neither is Trademark Protection appeared first on Erik M Pelton & Associates, PLLC.

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A ship needs several key elements to be seaworthy and withstand the risks and battering of being out at sea. On a recent trip to the Atlantic Ocean, I was struck by this metaphor – a brand also needs several … Continue reading →

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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.

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The following is an edited transcript of my video, Invest in Your Brand Protection and Watch it Grow. You know those commercials for investment services that always have more legal disclaimers than a normal commercial stating that they can’t guarantee … Continue reading →

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TPAC met last Friday. I was waiting for the USPTO to post the full slide deck, but that hasn’t happened yet and I wanted to share these very important data points and slides. See some of the most important slides … Continue reading →

The post TPAC slides from meeting March 12, 2021 appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, What Are the Potential Costs of an Unprotected Trademark. I recently spoke with a small business owner who bought a restaurant, rebranded it, opened it to the public, and received critical … Continue reading →

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I was quoted in an article by World Trademark Review this week about the ongoing and growing scams targeting trademark owners in the US as suggesting a taskforce to help tackle this complex issue on multiple fronts. The full World … Continue reading →

The post Pelton quoted calling for USPTO taskforce to combat trademark scammers appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, How to Use the Bold Brand Scoresheet. The Bold Brand Scoresheet is a metric that I created to help assess a brand and how well protected it is. Using the table … Continue reading →

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If WTP sent you mail about publication in a trademark directly (see image below), beware. Trash it. It is a scam. The cost of the scam has changed over the years, but the essence of this trick is the same. … Continue reading →

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Trademark registration acts much like a vaccine: a proactive step to help a brand fight off potential infringers 24/7 by appearing in the USPTO database, and by strengthening the brand’s immunity system in the event of an infringement or dispute. … Continue reading →

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I confess that I’m no expert on investing, stocks, and finance. But I do know that over time, the stock market almost always goes up. Even where there are downswings, playing the long game tends to lead to significant gains. … Continue reading →

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There are three things that I believe set Building a Bold Brand: The foundations of trademark protection apart from any other book that’s been written on the topic of trademarks and branding. The first is it’s a blend of perspectives. … Continue reading →

The post Building a Bold Brand: What Makes This Book Different appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video, The Types of Acceptable Evidence for Trademark Applications. An important piece of the trademark application puzzle is submitting proper evidence to the USPTO to demonstrate use of the mark in connection … Continue reading →

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One of the most common questions I get is about which symbol to use. Here is a handy cheat sheet I made: ® – a.k.a “circle-R” – Registered trademark with the USPTO TM – Unregistered mark, used with products and … Continue reading →

The post Which trademark or copyright symbol do I use? appeared first on Erik M Pelton & Associates, PLLC.

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The Super Bowl is always exciting from a marketing and trademarks perspective. In this episode, Erik features some of the interesting brands, logos, and trademarks that will be on the field this weekend.

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The following is an edited transcript of my video, When Is the Right Time to Register a Trademark? I was recently asked, “When is the best time to apply for trademark registration?” Of course, every situation is unique and if … Continue reading →

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The following is an edited transcript of my video “How Can You Avoid Losing Your Trademark Rights Over Time?” There are four things that a trademark owner should do to ensure that they don’t lose the strength or protection in … Continue reading →

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The following is an edited transcript of my video, What is a Disclaimer in a Trademark Filing? A request for a “disclaimer” from the USPTO is common during the application process, but for many it may not be clear exactly … Continue reading →

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The following is an edited transcript of my video, Why Apply to Register Your Trademark. There are several key benefits to trademark registration. The registration provides so much value, it actually works for the owner 24/7  – what I mean … Continue reading →

The post Trademark Registration works for the owner, even in their sleep appeared first on Erik M Pelton & Associates, PLLC.

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The following is an edited transcript of my video Do Restaurants Need Trademark Protection? Over the years I’ve had the fortune to work with a tremendous variety of businesses as clients, from accountants, to real estate agents, to software companies, … Continue reading →

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By Erik Pelton® This year – despite the cliché – has been unprecedented in many ways; it featured the COVID-19 pandemic, lockdowns, quarantines, masks, and social distancing, as well as protests in the street, a presidential election, economic volatility, and … Continue reading →

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The following is an excerpt from my video, The Many Pieces of a USPTO Trademark Application. Have you ever looked at the USPTO Trademark Application Form online? It’s called the TEAS Form, – TEAS Standard or TEAS Plus. TEAS is … Continue reading →

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The following is an edited transcript of my video All About Trademark Searches. Searching for trademark conflicts is one of the most important things about the practice and protection of trademarks and brands. I often speak and wring about conducting … Continue reading →

The post Trademark Searches – what is a TESS search, a common law search, a clearance search, and more appeared first on Erik M Pelton & Associates, PLLC.

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For more on Building a Bold Brand, see my recently published book. Naming a new product or service is painting with a blank canvas; be boring or be bold. For more Peltonisms®, see https://www.erikpelton.com/resources/peltonisms/

The post Peltonism: Naming a new product or service is painting with a blank canvas; be boring or be bold appeared first on Erik M Pelton & Associates, PLLC.

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The USPTO will put into effect on January 2, 2021 what is quite likely the largest trademark fee increase in US history. Many fees are going up, and several new fees have been created. These fee changes have been in … Continue reading →

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Learn all about the Bold Brand Scoresheet, and how to use it, in this brief video (2:41). For more details and to download your own copy of the scoresheet: see: https://www.erikpelton.com/the-bold-brand-scoresheet-how-protected-is-your-brand/08  

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Bold brands are a bridge, linking creative marketing and solid legal protection. For more on Building a Bold Brand, see my recently published book. For more Peltonisms®, see https://www.erikpelton.com/resources/peltonisms/

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Listed to this brief video (less than 3 minutes) as I discuss the many benefits adding up to show why trademark registration is an incredibly valuable investment for an small business, new business, established business, old business, or big businesses … Continue reading →

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The following is an excerpt from my book, Building a Bold Brand. To learn more about the book, visit www.buildingaboldbrand.com.  Trademark Tips for Blog Owners Be creative. A creative name is generally much more likely to be unique and much … Continue reading →

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New York is the “city that never sleeps.” A trademark registration’s protection never sleeps too: it can appear in searches of the USPTO database conducted 24/7. More Peltonisms® at https://www.erikpelton.com/resources/peltonisms/

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The following is an excerpt from my book, Building a Bold Brand. To learn more about the book, visit www.buildingaboldbrand.com.  I am particularly sensitive to the trademark challenges that small businesses face for several reasons. Since 1999, I have built … Continue reading →

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In this video, I share for the first time some of the favorite insights and lessons learned after more than 20 years of helping businesses register trademarks and protect brands. For example, did you know that I used file applications … Continue reading →

The post What I’ve learned in 20 years of trademarks, and where my passion for trademarks comes from appeared first on Erik M Pelton & Associates, PLLC.

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When choosing a trademark attorney, applicants are best served by focusing on the value provided by the protection and the counsel, not the costs.

The post When choosing a trademark attorney: focus on value, not cost appeared first on Erik M Pelton & Associates, PLLC.