smar(tm)ark trademark newsletter from Erik M. Pelton & Associates, PLLC http://campaign.constantcontact.com/render?v=001kRQllaBUV0dccDY_c...

1.5 : July 2010

smar(tm)ark
brand and trademark newsletter from
Erik M. Pelton & Associates, PLLC
In This Issue
Greetings!
Trademark Tip
A recent publication in honor of National Small Business
Trademarks in the
Week ["From Beginners to Bigshots"] featured profiles of
News
several successful small businesses. A common theme among
Firm News 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
slogans.

For example:

Interact with Peas of Mind LLC - healthy frozen food company.

EMP&A [USPTO registration for name.]
IPelton blog MEI Technologies Inc. - Merging Excellence and
Innovation - an advanced technology company serving
LinkedIn profile civil, commercial and defense industries. [Two USPTO
registrations: name and logo.]
Twitter feed

YouTube page

Smooth Moove Senior Relocation Services Inc. - with a

great slogan that ties in with the cow logo... "we'll
handle the udder stuff"

Breaking Ground Contracting Co. - Green building

Upcoming Events services. Slogan: "Construction. Redefined."
Speaking
Engagements:

Software Industry
Conference (SIC)
(Dallas, TX) - July
15-17, 2010
National Association
of Professional Asuragen Inc. - biotechnology company. [USPTO
Background
Screeners - 2010 registration for name.]
Mid-Year Meeting
Oct. 10-12 @ La

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Jolla, CA
Falls Church Arts
presentation about
copyright and
trademark - Sept.
14, 2010
Kwaplah International Inc. - Export services.
Video from Erik's
recent presentation "Kwaplah" means "all of us" in Liberian.
"Leveraging Your
Intellectual Lesson: Having a unique, strong, protected and creative
Property" can be
found here. 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
Questions? things being equal having a memorable and creative name,
Comments? logo and slogan can provide any business with a leg up on
Contact us at: the competition!

Erik M. Pelton &

Associates, PLLC Trademark Tip: Avoiding Trademark and
PO Box 100637 Domain Name Scams
Arlington, VA 22210
ph 703-525-8009 When a trademark application is filed with the USPTO, the
f 703-997-5349 information - including the owner's contact information -
emp@tm4smallbiz.com 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
necessary.

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, in Texas

United States Trademark Protection Agency (USTPA), in Seattle,
Washington
Global Edition KFT
Trademark Renewal Service, in Washington, D.C.
Globus Edition S.L., in Palma de Mallorca, Spain
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.

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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 guidance.

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 Enforcement Coordinator." 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

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unions including several that work in film, television and

music), U.S. Chamber of Commerce, and Carlin America (a
music publisher).

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

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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.!

Suggestions
If there are any topics or issues you would like to see
covered here, let us know!

-------------------------------------------------------

This publication has been prepared for the general

information of clients and friends of the firm. It is not
intended to provide legal advice with respect to any specific
matter. Under rules applicable to the professional conduct of
attorneys in various jurisdictions, it may be considered
advertising material.

© 2010 Erik M. Pelton & Associates, PLLC.

ALL RIGHTS RESERVED.

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