- Software Industry Conference (SIC) (Dallas, TX) - July 15-17, 2010
Association of Professional Background Screeners - 2010 Mid-Year Meeting
Oct. 10-12 @ La
- Falls Church Arts presentation about copyright and trademark - Sept. 14, 2010
- Video from Erik's recent presentation "Leveraging Your Intellectual Property" can be found here.
Contact us at:
|Erik M. Pelton & Associates,
PO Box 100637
Arlington, VA 22210
A recent publication in honor of National Small Business Week ["From Beginners to Bigshots
profiles of several successful small businesses. A common theme among almost all of businesses profiled: great brand names! These brand names are exceptional because they are all "suggestive" meaning they provide a hint of
the services or products provided but are not overly descriptive, which would make them weaker and harder to protect as trademarks. In addition, many have creative logos and/or
- MEI Technologies
Inc. - Merging Excellence and Innovation - an advanced technology
company serving civil, commercial and defense industries. [Two USPTO
registrations: name and logo.]
Having a unique, strong, protected and creative brand name provides a
business with a better opportunity for success. Sure, some successful
companies have bland names, and some creatively named businesses fail,
but all things being equal having a memorable and creative name, logo
and slogan can provide any business with a leg up on the competition!
Trademark Tip: Avoiding Trademark and Domain Name Scams|
When a trademark application is filed with the USPTO, the information
- including the owner's contact information - becomes public record and
easily found online. Unfortunately, several companies mine the public
data and send out what are essentially scams to trademark owners. These
scams are generally letters from official-sounding entities that are not
governments and provide no tangible benefit. Their publications and
registries sound official to the unknowing and certainly many victims have sent
them checks or credit cards believing it was important or even
If you have any question as to whether a solicitation is legitimate,
contact an attorney. If the request does not say "U.S. Patent and Trademark
Office" or "U.S.P.T.O." on it, it is not a part of the trademark
application or registration process. To limit contact from these scams, our firm never
provides email addresses or phone numbers of our clients when filing
with the USPTO.
Here is a list of some of the entities engaged in these practices - none are government agencies and none are required to protect your trademark:
- TMI Trademark Info Corporation,
- United States Trademark
Protection Agency (USTPA), in Seattle, Washington
- Global Edition KFT
- Trademark Renewal Service, in
- Globus Edition S.L., in Palma de
- Company for Economic Publications
Ltd., in Austria
- Institute of Commerce for
Industry, Trade, and Commerce, in Switzerland
- CPI (Company for Publications and
Information) Anstalt, in Liechtenstein
- Société pour Publications et
Information S.A.R.L., in Vienna, Austria
For more from the International Trademark
Association about these scams, see here.
Similarly, domain name WHOIS information is publicly available and
domain name scams are becoming increasingly popular. As the owner of
apptorney.com domain name, I received an email last week
purporting to help me protect my brand name against similar Asian domain
names. Anyone who replies to one of these scams is then offered an
opportunity to purchase domain names (that they probably have no need
for) and is led to believe that if they do not purchase the domains someone else is already
signed up to buy them. Yet this scare tactic is merely a scam. If you receive any such email, copy and paste a
sentence or two from the email into a search engine and read all about
others who have received the scam.
Unfortunately, the public data used for trademark and domain
name registration is also used to perform scams. If you receive one and
are unsure what to do or whether it is a scam, contact an attorney for
Trademarks in the News|
Last month I had the privilege of attending the Senate Judiciary Committee hearing
on "Oversight of the Office of the Intellectual Property
." In my opinion, the panel and witnesses used scare tactics to
ensure that the concerns of the biggest business would be taken seriously.However, the concerns expressed were not necessarily representative of all business that rely upon intellectual property rights. Before taking any action, I hope Congress will invite testimony from a more balanced group of stakeholders.
- Erik in
background (far left) at Senate hearing -
The hearing included two parts, a report from Victoria
Espinel, the first Intellectual Property Enforcement Coordinator, following by testimony from four industry representatives - Warner Bros.,
AFL-CIO (represents many unions including several that work in film,
television and music), U.S. Chamber of Commerce, and Carlin America (a
The focus of greater attention and resources toward to Intellectual
Property issues by Congress, by Ms. Espinel's office, and by businesses is
a good thing. But I believe that more priority must be placed on balancing the interests of large companies and
owners of intellectual property on one side, and the growing number
smaller businesses who rely on trademarks, copyrights and patents as
core elements of their success.
For example, a recent Wall Street Journal report on
trademark infringement ("Name Choices Spark Lawsuits" here
) focuses on the pressure small
businesses face in defending - or deciding whether to defend -
accusations of trademark infringement. The article wisely notes that
many businesses carelessly skip a full clearance search for a brand name
prior to using it; such a search preformed and reviewed by an
experienced trademark attorney could eliminate many potential claims by
advising the business to steer clear of names with potential conflicts.
However, the article and the accompanying audio story
from Wall Street Journal radio focus on businesses that spent a lot to
defend claims or had to change their names. The article failed to devote much space to two other related outcomes: (1) small businesses that fight back and successfully get the threatening party to back down or agree to a reasonable
resolution; and (2) big businesses that overreach in their enforcement
efforts, stifle small businesses, and cost businesses with legitimate
non-infringing trademarks tens of thousands of dollars defending claims
that have little or no merit. This second scenario, in my experience, is
becoming more and more common, and big companies attempt to use their
financial strength to bring or threaten to bring trademark
cases that have little merit because small businesses often cannot
afford the time, money and uncertainty of fighting back. There is little or no
money available to be had in defending a meritless claim, so a wrongly
accused business has to weigh the cost of fighting against the cost and harm done by changing the name.
While theft of intellectual
property no doubt costs the economy significantly, abusive over-enforcement
of intellectual property also costs Americans jobs, revenue, and
opportunities to innovate. I will be working to bring greater attention to this issue.
Firm News |
We have represented clients from 48 states (sorry Hawaii and Nebraska) and more than 20 countries abroad!
Did You Know?Much has been made in the news lately about Lebron James leaving the Cleveland Cavaliers for the Miami Heat. Did you know that the LEBRON trademark is owned by Nike, Inc.!
If there are any topics or issues you would like to see covered here, let us know!
This publication has been prepared for the general information of clients and
friends of the firm. It is not intended to provide legal advice with respect
to any specific matter. Under rules applicable to the professional conduct
of attorneys in various jurisdictions, it may be considered advertising
Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.