smar(tm)ark® trademark newsletter from Erik Pelton

January 2018

In 2017, the USPTO received a record number of new trademark application filings. Trademarks have never been more popular! I believe there are three causes for the record numbers: (1) the economy and economic forecast are good, (2) social media and new styles of advertising making brand protection even more important, and (3) the value of a trademark registration far exceeds the cost.

Looking back on last year, we had the pleasure and privilege of filing more than 300 trademark applications at the USPTO and around the world, and working with more than a dozen veteran-owned business to help protect their brands in our pro bono program. Looking forward, next year will mark my 20th year of helping businesses protect their trademarks - and I am fortunate to still work with some of the same businesses that came to me for guidance in that first year.

Top 18 trademark resources online for 2018

Here are my top 18 trademark resources for 2018, presented in no particular order:

TSDR - for viewing status, details, documents, history, and more for any USPTO application or registration. More details here.
TESS - Trademark Electronic Search System, for searching USPTO trademark records
TTABvue - for looking up status and records in Trademark Trial and Appeal Board cases
sofTMware ® - free tool provided by Erik M Pelton & Associates for tracking and monitoring the status of USPTO trademark applications and registrations
TTABlog® - the latest in Trademark Trial and Appeal Board case law, with a very useful "search" function
TMView - great tool for some international searching
TMEP (Trademark Manual of Examining Procedure) - all the core trademark application rules, procedure and law in one place
Google- for finding just about anything
Trademark Electronic Application System (TEAS) - for trademark application filings, responses, and registration renewals
Trademark Fee Information - USPTO fee details
USPTO trademark ID Manual - the description of goods and/or services is a vital part of any trademark filings
Create a PDF with up to 25 USPTO trademark registration certificates at once http://tmportal.uspto.gov/external/portal/registrationcert
TTAB Manual of Procedure -Â Â all the TTAB rules and procedure
Design Code Manual and information - for searching images at the USPTO
WIPO Madrid international trademark filing system main page - for checking international filing fees, member countries, and more
Internet Archive - for researching the history of most websites
DomainTools - for researching WHOIS and other domain information
TESS Help Menu - detailed information about boolean and other searches, and search fields, for the USPTO trademark database

Beware of Unauthorized Changes to

USPTO Contact Information

I recently encountered a peculiar situation for the first time: a person not affiliated with the client trademark Applicant filed a correspondence change with the USPTO via the USPTO's online filing system (TEAS). The only change was to add an additional email address to the record. This was done just days before the registration was about to be issued.

My suspicion is that this was an effort to game the Amazon Brand Registry system, which generates a link emailed to the trademark registration email address(es) of record when creating a new account.

I filed via TEAS to change the correspondence to remove the email; and then a few days later the same email address was used to do it a second time. To add to the challenges, the email address used came from a secure private email domain ( tutanota.com).

My client and I have reached out the USPTO (who has responded quickly, I am pleased to share) and to Amazon to warn them about this. I suspect it has happened to others who may not be aware. If you have any additional information or experience regarding this issue, please let me know so we can warn others.

Big Football Game will take place one week from Sunday - be careful what you call it

The Super Bowl® will be played between the Patriots and Eagles one week from Sunday, and it will be watched by hundreds of millions around the world. I can use the words "Super Bowl" freely because I am not in any way competing with the NFL and the revenue it makes from the game and the Super Bowl® trademark.

But if you are in the apparel or entertainment industry, or you plan to show the football game in some manner that is commercial, be careful what you call the game and how you advertise it. The NFL has a history of aggressively enforcing its purported rights against multitude of businesses. A few years ago, the NFL even tried to stop businesses from using the phrase the "Big Game" in addition the Super Bowl.

The NFL owns several registered trademarks for SUPER BOWL® as well as registrations for:

trophy shape

Whatever your plans are for the big game, if you have any business related to the biggest football game of the year remember that the NFL's trademark police just might be looking to make an example out of you!

Congratulations to client Bouquet Bar® for their recent success on Shark Tank® with Mark Cuban!

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

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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.