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What Can the Sales World Learn from 2012?

We’re three months into the New Year, so most businesses have turned their attention to the challenges (and opportunities!) that 2013 will inevitably present.

And why not? Whether you killed it last year or struggled to live up to your lofty expectations, 2013 presents new hope. The economy seems to be showing signs of life, and both B2B and B2C buyer behavior is trending upward in many industries.

But let’s stop for a moment and reflect a bit on 2012. After all, the only way to really improve in 2013 is to better understand what held us back last year and what we need to avoid doing going forward.

So, what’s the biggest sales lesson we can learn from 2012?

Avoid sales whiplash™ like the plague.Be cognizant of it. Constantly look for signs of it. And course correct before you fall into a very dangerous sales trap. Because if sales whiplash goes unnoticed or untreated, it will cripple your company before you knew what hit you.


What is Sales Whiplash™?

What I call “sales whiplash™” you might refer to asboom and bust revenue production, fluctuating sales performance, or underperforming sales teams.

The most obvious symptom of sales whiplash is your company crushing its revenue targets one quarter, only to fall completely on its face the next. It’s a proverbial roller coaster ride that – unless you like drama, uncertainty, and unpredictability – isn’t much fun to ride. Just imagine going up and down hills at 100 miles per hour one moment, only to come to a screeching halt the next.

That’s not at all what I’d call enjoyable, efficient, or productive.

Ideally, sales team performance should follow a smooth, upward path that yields a perpetual sales boom. And that boom doesn’t have to be – and shouldn’t be – followed by a bust on the other side.

But that’s exactly what sales whiplash is – a boom one quarter, a bust the next. Ultimately, you might still end up hitting your annual revenue targets, but even if you do, the side effects of sales whiplash will reveal themselves eventually.


One Example of Sales Whiplash™

Recently, I worked with a client that had two sales teams selling into two very different markets. Team A sold very big multi-million dollar contracts that spanned multiple years. Team B sold smaller, faster transactional deals.

For much of the company’s life, profits were carried by two very large deals that Team A had closed. Team B, by contrast, never really delivered on its targets, but nobody caredbecause Team A’s success overshadowed its underperformance.

Then, in Q3 of one year, the company encountered a major problem. Its larger annuity contracts were going to end and not renew in January, and its smaller transactional business wasn’t delivering enough revenue to counterbalance the loss. In fact, only 10% of Team B’s pipeline was in place to secure deals in January.

You can probably guess what happened.

The company didn’t have enough time to react (sales whiplash), and the bust that followed its boom wasn’t fixable. Ultimately, sales teams and VPs were fired, and it took the company an entire year to rebuild its pipeline and revenue.


4 Causes of Sales Whiplash

Unfortunately, the example above is just one of several that I could share.

And as much as those companies would prefer to believe that their sales whiplash was caused by fickle markets, new competition, underperforming sales reps, or other extraneous factors, the truth is that it wasalways self-inflicted.

Yes, sales whiplash can be caused by those things, but those causes areoften symptoms of some much bigger internal problems. Specifically, there are four core causes of sales whiplash:

1.      Sales leadership and individual sellers only focused on one aspect of client engagement.That’s a critical mistake. Every part of client engagement – attraction, participation, retention and leverage – is important to long-term sales sustainability. For instance, if your salesperson closes a deal and then passes the customer off to someone else for onboarding (during the participation phase), and then never speaks to that customer again, they are opening the door to sales whiplash. Why? Because it becomes nearly impossible to ensure customer satisfaction when no one person is monitoring them throughout the entire engagement process.

If customers aren’t satisfied, they won’t be retained. If they are not retained,whiplash is likely. Every individual in your sales organization – whether it’s one person or one hundred – must sync up to ensure that every aspect of client engagement is given its due attention, and that the customer is never left to its own devices.

2.      Sellers only nurture one buyer relationship.To protect and retain your customers, you have to expand your breadth of relationships inside an organization. I saw too many clients in 2012lose business that they should have won because they were the incumbent; they hadn't built out a broad base of support. These sellers were relying on a single decision maker, only to find out that person was either influenced by his colleagues or people below him, or he left the organization altogether. And when you lose this “easy” business, it naturally causes sales whiplash because you’ve got to make it up with new prospects, which take time to close and require capacity you might not have.

3.      An overemphasis on closing. Now, before you freak out and think, “what the heck are we supposed to be talking about or emphasizing,” let me explain. You have to put equal emphasis on attraction, closing, and engagement. If all you say to your sales team is, “close, close, close,” and you stop paying attention to the front end of the sales cycle, you risk having an empty pipeline the next month or the next quarter. And, when you do that, you create these booms and busts in sales production. So, I'm not saying don't focus on closing. I'm saying don't stop focusing on other areaswhile you’re closing.

4.      Sales teams favor one product or service line at the expense of others. Sometimes you do this by accident. Perhaps because you receive directives from above stating, “sell this new producthard at launch, we want to make a big splash.” Or, maybe you have a new product that’s exciting and easy to sell, so you focus on that and stop paying attention to other lines of businessthat create consistent revenue. Sometimes, it’s purposeful because one line of businesscloses more quickly or results in bigger deals. Other times, it happens because you believe in one product line over another.

Either way, favoring one product or service is a big mistake. That singular focus naturally creates holes in your pipeline and booms and bustsin your revenue production. Different products have different sales cycles. To create a perpetual boom of revenue you need to focus your team (and pay them) to attract and retain customers across all lines of business. If you don't, you’llcreate bow waves of revenue rather than a consistent flow, and put your neglected business lines at risk of losing market share

OK, you should have the gist of Sales Whiplash™ and what causes it. Doing any one of the things listed above will cause sales whiplash, and trust me when I say that it’s not something you want to experience in 2013 if you didn’t go through it in 2012.

The best companies last year were set up so that the whole sales organization was focused on all four areas of the client engagement – attraction, participation, retention, and leverage. They closed new business, brought customers onboard quickly, retained, up-sold, cross-sold, and created new opportunities.

Not surprisingly, that will continue to be critical to sales success this year, as well – and, frankly, every year for the foreseeable future.


Growth Strategies: How to Decide Which Customers are Up-sell and Cross-Sell Worthy

By Colleen Francis


In one of my recent articles, I wrote about why up-selling and cross-selling to your existing customer base — rather than focusing most (or all) of your attention on new business development — is the easiest and most efficient way to drive business growth.


Those up-sell and cross-sell opportunities, after all, very often yield quicker sales, higher profits, and improved leverage, largely because existing customers know you, trust you, and have displayed a clear affinity for your company’s products and services. As a result, they typically require less work to convince them to buy more of the products and services you offer.


So, why shouldn’t businesses simply eliminate new business development initiatives altogether and focus instead on up-selling and cross-selling to their current customer rosters?


Business owners and executives should know the answer to that question (hint: new business development must always be at least a small part of your sales strategy). And while selling to existing customers might offer the path of least resistance to driving efficient growth, that doesn’t mean you should be trying to sell more products and services to all of your customers. In fact, if you spend too much time up-selling or cross-selling to certain types of customers, you’re probably creating a sales formula that will produce more chaos than profits.


For instance, if you’ve got a few customers who buy several of your products but are perpetual complainers and total customer service headaches, do you really want to keep trying to sell more to those clients? Probably not. In fact, you may want to do the opposite, and subtly eliminate them from your client roster. Especially if the cost of maintaining and servicing those customers is higher than the money they bring in.


Far too many salespeople and business owners forget that no one is putting a gun to their heads and forcing them to sell to certain customers. We live in free countries, after all, and you can sell to whomever you want. If a customer doesn’t feel right or they’re more trouble than they’re worth, then you should filter them out and focus more on the customers who are truly worthy of your time and energy.


Which leads me to a very important question: How can you determine who those perfect up-sell and cross-sell candidates are, and what should you do once you’ve identified them?


There are a lot of different ways to go about that process, but one of the easiest and best ways to handle it is to implement a customer review system that gauges your new and existing customers’ path to purchase, and their current needs or concerns. In many ways, it’s simply an intelligence gathering process that will allow you to better understand who your customers are, why they buy, and what their current and future pain points are.


During those engagements with new and existing customers (which should happen within the first 30 days of acquiring new customers, by the way), you might ask questions like:


  • What prompted you to buy our product or service?
  • Why are you continuing to do business with us?
  • Why did you buy more from us in the past?
  • How is our product helping you, and are there additional features that could add more value?


Be sure that you don’t simply focus on acquiring positive customer feedback, however. It’s also critical to uncover your customers’ concerns and objections. That information can help you understand what’s keeping your customers from buying additional products or services from you, or why they’re choosing competitors to fulfill a particular need that your product might address.


To do that, you might ask questions like:


  • What kept you from buying a larger product package from us?Some customers are afraid to put all of their eggs in one basket. If you know that, then you can address that concern and tailor your package to mitigate it.
  • How important was pricing in your decision? If a customer reveals that they didn’t buy more from you because they didn’t think they could afford it, you might be able to pitch them on the value of package deals and appeal to their price-first concerns.
  • What features do you think our product lacks or what would you change?There might be some features or services that a customer wishes they had, feels would improve their experience, or is unaware that you offer. Ultimately, that could open the door to premium tier up-sell opportunities, or cross-sell packages.


Ultimately, that information will help you strike when your customers are happiest, most interested, or most needy. Quite simply, those types of customers are often the most worthy of your up-selling and cross-selling energy.


Your goal should be to determinewho your best clients are, how much they’re spending with you now, which products or services they’re not buying (and why), and what value you could deliver to improve their overall experience. With that, you should be able to easily estimate each customer’s growth potential, and the net new revenue that they represent.


If you discover that certain existing customers’ growth potential is low relative to the amount of time and energy you need to invest to maintain them, then they’re probably not the best up-sell or cross-sell candidates. If, on the other hand, you uncover existing customers with unmet needs that you could easily and efficiently fulfill, then you’ve probably found up-sell or cross-sell opportunities that will lead to quicker sales, higher profits, and improved customer leverage.  


At the end of the day, what business couldn’t benefit from identifying more of those opportunities?


Growth Strategies: Why Up-Selling and Cross-selling Provides the Path of Least Resistance

By Colleen Francis


As my most loyal readers and customers know, I’m a huge fan of and believer in retaining and growing a business’s current customers. Then again, who isn’t? Yes, new customer acquisition is important to building and scaling a business, but cultivating current customers offers the truest opportunity to drive efficient and sustainable long-term success.


Which is why (and this might surprise you) I think up-selling and cross-selling to those customers is often more important than focusing all of your attention on finding new ones. Let me explain.


Most businesses have an average closing rate of about 25 percent. So, for every four opportunities that come their way, they close just one of them. And that’s not too bad. The problem, however, is that those same businesses tend to lose half of their customers every five years. That kind of churn, if it’s not supported by an incredible influx of new business, can make it exceedingly difficult to grow.


Stronger businesses, on the other hand, close deals at a stronger clip — around 33 percent, or one of every three opportunities that cross their paths. But their customer retention rates are better, too — generally in the neighborhood of 70 percent. As a result, those companies possess stronger leverage and can grow their business more profitably.


See where I’m going with this yet?


Truly breakthrough companies — the top 10 percent, if you will — are even more remarkable, but not because their closing ratios on net new business are any better. In most circumstances, that ratio is still around 33 percent. But here’s where the magic happens: those businesses boast customer retention rates of about 95 percent, and they’re able to efficiently drive profitability by selling more new products and services to those existing customers every year.


That’s really the essence of this discussion. The most efficient way to grow is to sell more to your existing customer base. After all, that is where your highest profit margins likely lie. Yet, many companies get caught up in the uncertain rat race of trying to close more net new business to replace revenue from customers that were lost.  


In the end, that causes an often-stressful culture of chaos. You end up trying to constantly sell new products to new customers, and that can be a very expensive process. To support it, you must invest more capital and human resources into your marketing and sales operations, and the reality is that you’ll never really do much better than a 33 percent closing ratio.


So what should you be doing instead?


Quicker sales, higher profits, and improved leverage happen when you’re able to sell new products and services (or premium add-ons and upgrades of established products and services) to an existing customer base that knows and sees you as a trusted partner. Because they’ve already displayed an affinity for your business, you can go to them first with new products and services, and that’s really where the opportunity for the cross-sell or up-sell occurs. Ultimately, that can yield four distinct benefits:


  • Higher profitability than new sales
  • Stronger customer loyalty
  • Increased referrals
  • Shorter sales cycles


While up-selling and cross-selling can be done at a variety of points throughout the sales and customer lifecycle, I’ve found that two distinct stages are ripest for the picking:


1. During the initial sale


You always have the opportunity to add value during the initial sale. You could add on relevant services, draft proposals with tiered options, add complementary modules or products to supplement a customer’s experience and value, provide support packages, or pitch something like “Platinum level” access.


For instance, let’s say you’re in agricultural sales and a customer places an order for a particular chemical. Can you also recommend that the customer buy a complementary fertilizer or herbicide? Or maybe you’re in software sales and you can offer multiple support packages. In other words, with option A, a customer would get X support. With option B, a customer might get X, Y, and Z support, and around-the-clock access to your customer service team — all, of course, at a premium price.


It’s important to note that you need to focus on adding value, rather than simply adding up-sell or cross-sell options just for the sake of adding them. So, ask yourself what additional or new products and services your customers could benefit from? And how you can go about selling those things to them?


2. After the initial sale


Naturally, this is another great opportunity to up-sell and cross-sell. When you release new products and services, it’s an absolute no-brainer to reach out to your existing customer base first.


So, for instance, maybe your company has always offered existing clients on-site training as part of their package. Next year, however, you’re planning to roll out web-based training, as well. How can you leverage that as an up-sell or cross-sell opportunity? Maybe you continue to offer those clients large classroom-based training for one price, and for a small fee they can also have access to web-based seminars and a library of interactive videos.


There are numerous iterations of that model, too. Take a look at what you’re doing right now and figure out if there’s something you could be doing differently next year to add value.


The key is to never lose sight of sales opportunities with your existing customer base while you engage in new business development.


In sales, that can be admittedly hard to do. We’re a group that tends to get distracted by shiny new objects, after all, and it’s often more fun and exciting to bring a new customer into the fold than simply nurture long-term relationships with existing clients. Yet, as a sales leader or a business owner, nurturing those relationships and sell more to existing clients is the key to sales efficiency and profitability. And it’s exactly what you need to be doing.


Trust is Not Enough

By Colleen Francis, Engage Selling

For many years, developing trust and rapport was considered the hallmark of a great sales process. Driving sales required exposing your sales team to a maximum number of prospects and developing trust and rapport with those prospects. As such, the primary objective for most salespeople has always been to find as many qualified prospects as possible to speak with and to spend their time developing a relationship and trust with that prospect network. By putting a sales rep in front of as many prospects as possible, the opportunity to sell increases but what’s important is not the exposure, but the relationship.


The theory has always been that, all things being equal, if a prospect trusts you more than another potential supplier, when the time comes for them to make a purchase, you’ve won their business. But today, just knowing, liking and trusting a potential supplier is not enough. It’s important that the prospect also sees you as an expert in their business. One that they can trust not only personally but professionally to guide them through their purchase and future business problems.


Many buyers now consider expertise an essential element in any purchasing decision. So how do you add that element to your sales process, especially with a team focused on selling? And how do you demonstrate that expertise to your clients and prospects?


It’s often difficult to motivate sales reps to focus on developing expertise when they want to develop relationships, but the two can go hand in hand. If your team has developed expertise through their experience in the industry and the problems your clients want to solve, it’s essential that you demonstrate it and prove it to your clients.


Buyers seek proof of your expertise in order to mitigate the risk they take on in making a purchase with you. That proof goes beyond just your word that your team is experienced and well-versed in the issues your clients face. Motivate your sales team to undertake activities that demonstrate your expertise and help to build their network at the same time.  Here are three profitable ideas:


  1. Encourage your team to develop case studies around client success stories that demonstrate your company’s understanding of common and specific client problems and how your solutions address it.
  2. Gather testimonials from satisfied customers about the care and knowledge that your team puts into customer care.
  3. Provide opportunities for your team to demonstrate their knowledge through industry articles, speaking engagements, teleseminars and webinars that put them directly in front of your prospects with an opportunity to get to know your company outside the sales process. 



Once you’ve established proof of your expertise, it’s possible to elevate your sales further by focusing on who knows you, as opposed to who you know. There’s a subtle difference in these two concepts. Instead of making calls and being proactive in your outreach, focus on getting yourself out there in many different ways.


Make yourself ubiquitous.


Your prospects should see you everywhere, from social media to events, sales strategies and other approaches to the marketplace. Seeing you everywhere within their market draws customers to you. By providing exposure outside the traditional sales process, you introduce prospects to your solutions and your team in the places they trust and frequent, which is an opportunity to build rapport, trust  and proof of expertise.


Top Trademark Stories of 2012


Top Trademark Trends of 2012

The top trademark trends in 2012 continued several themes from recent years including celebrity brand names and domain name developments. Other big news stories, like the election, also affected the trademark world. Here is a summary of the year’s major trademark related developments:

Celebrity trademarks – and problems – continue to increase. What do Tim Tebow, Jeremy Lin, Psy, and the Kardashians have in common? All made news with trademark issues in 2012. On the field, Tebow led a playoff run and was traded to the New York Jets; off the field he registered the word TEBOWING for use with shirts and hats. The Kardashians own many trademarks but they found themselves defending infringement allegations on their Kardashian Khroma name and Kardashian Kollection logo. Blue Ivy Carter, born to Beyonce and Jay-Z in January, instantly made trademark news as her parents filed to register her name as a trademark with the USPTO just days after the birth. The video for “Gangnam Style” by Psy was viewed more than one billion times, and both the singer and song name are the subjects of pending trademark applications with the USPTO. As even more sports and entertainment stars become marketing powers, these celebrity trademark trends are bound to continue.

Disney acquires Star Wars.In October, Disney announced a $4 billion purchase of Lucasfilm, makers of the Star Wars movies and franchise. Disney already owned more than one thousand registered trademarks, but the Star Wars® marks will become some of its most valuable properties. Dozens of Star Wars trademarks are registered, including DROID®, the sound of a light saber, and the configuration of Darth Vader’s costume.

Scams. Service providers sending dubious solicitations to trademark owners received attention from trademark attorneys, the USPTO, and courts. The USPTO issued several warnings to its users and took the unprecedented step of sending a cease and desist letter to “United States Trademark Registration Office,” whose solicitations particularly mimicked government correspondence. As the USPTO’s trademark data becomes more accessible online, scams and overpriced offers continue to reach unsuspecting trademark owners. Perhaps additional efforts from the USPTO, the FTC or law enforcement agencies in 2013 will help curtail their growth.

Updated logos.Many brands refreshed their logo designs in 2012, including Microsoft, JC Penney, Cisco, State Farm, Kraft, Domino’s, ebay, the Brooklyn Nets, and Best Buy. As brands continue to increase become more online, social, and mobile, and as big brands look to expand into new product and service markets, I predict that many more will reinvent their logos in the next few years.


gTLDs. Last year continued the long slow march toward new ‘dot anything’ top level domains. The first phase – expensive applications to register .nfl, .shop, .google, .bank and the like – has been completed, and it is likely that the next objection phases and pre-registrations available to trademark owners will begin in 2013. Brand owners concerned about use of their trademarks in such top level domain names – or even in second level ones such as – must continue to monitor the ICANN process.                          

Louboutin’s red sole trademark gets restricted.The most watched trademark case of 2012 was an appellate court decision from the Second Circuit Court of Appeals in the matter of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. Louboutin, which makes expensive women’s high heel shoes recognized by their red lacquered sole, had sued YSL for trademark infringement after YSL made a monochrome shoe that was all red, including the sole. The Circuit Court found that Louboutin’s trademark rights, though registered with the USPTO, extend only to shoes where the red sole contrasts with the remainder of the shoe. Thus,  Louboutin’s claims against YSL were struck down, and the Court further directed the USPTO to amend Louboutin’s registration and limit its scope to shoes featuring such a contrast.

President Obama, re-elected in November, has a brand that is among the most well known for any politician in recent memory. The Obama campaign filed to register several of its trademarks in 2012, including the slogan GREATER TOGETHER and the logo below.

What to look for in 2013.As the economy continues to grow slowly, it is likely that the number of new trademark applications will grow as well. Expect even more trademark issues involving celebrity brands in the news and continuing concerns – and delays – with the launch of new top level domains.

About Erik M. Pelton: Erik Pelton has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 1,700 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2012, Erik presented on trademark and social media issues to a variety of audiences, including Howard University, the Association of Intellectual Property Firms, the New York State Bar Association, and the National Veteran Small Business Conference.



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A Pragmatic Way of Asking for Referrals

Getting your sales team to ask for referrals can be a challenging process in and of itself. As we have discussed in a previous article sales reps often avoid asking for referrals due to fear and ego. By incentivizing your sales reps to ask for referrals, you can shift their thinking from that of a “lone wolf” who doesn’t ask for help to a sales rep who understands how powerful referrals can be to increase sales without any additional effort.

But even if your team is willing to put energy into referral sales, they may be uncomfortable asking for the referral itself, and worried about the best language to use to avoid looking desperate for new business. The vast majority of salespeople ask for referrals the wrong way. Many of them look their client in the eye and ask,

  • Colleen, do you know anyone that would be a good fit for our business?” Or,
  • Colleen, who can you introduce us to that would make a good client for us?”

While those questions seem obvious, they’re useless because they’re too broad. Almost always, the response you’ll get is, “I don’t know, but let me think about it.”

Most clients will then go back to their desks, get busy with their day, and your request will slip their minds. It’s not because they don’t want to help with  a referral, but because there are other things going on and they can’t think of anyone at the moment. A referral for you isn’t a priority for them. And the way you’ve asked requires them to use extra thought and energy. Quickly, your request goes by the wayside.

In order to successfully acquire referrals , you must fundamentally change yourrequests First, do the work for your client. The best thing to do is go to the client equipped with the names of people, the positions or the companies to which you want to be introduced. Then ask for that specific introduction.

For example, you might say, “Casey, I’d like to meet Chris in your office, because I think he’d be a good fit for our product. Could you help me with an introduction?” Or, if I didn’t know Chris’s name, I might say, “Casey, I’d like to meet your VP of Finance. Can I tell him we do business together?” Maybe it’s a different division you want to be referred to, and you might say, “Casey, I’m really hoping you could introduce me to your West Coast division. Could you help me with an introduction?”

The word “help” is almost magical; it makes it almost impossible for the customer to say no, because people want to help. So do the work for your customer, ask for specific introductions, and ask for help.

I do have a trick for asking for referrals, and it guarantees a 100% success rate. It’s an approach I call “indirect” or “don’t ask, just tell.” I do some research, and discover that Chris is the person that I want to be referred to, and I know that Casey knows him, because they work together. What I will do is say, “Casey, I’m going to be calling Chris next week. Can I tell him about the success that we’ve had?”

Pay careful attention to the language here; I’m not asking Casey’s permission. I’m telling her I already have a call scheduled. What that means is that I’m already an insider; I already have a relationship. It makes her easy for her to say yes.

Avoid using language like, “Can I use you as a referral?” or, “Can I talk about business?” Instead, say, “Can I share your success with him?” Everyone wants to brag about their successes, and that makes it even easier for Casey to say yes.

Asking for referrals is actually quite simple, but you can’t forget that it’s your job to do the work for your clients. By asking a bad question, you get a bad answer, so refine the way you ask for referrals in order to double the success of your closing rate.


Protecting trademarks is like guarding your skin from the hot summer sun

If you spend all day in the sun without proper protection, you risk sunburn, discomfort, or even worse. A few basic preventive measures are fundamental if you wish to greatly reduce these risks.

Protecting a brand name is much the same. To properly and thoroughly protect your brand, you must take steps before launching it. Basic preventive measures greatly reduce the odds of confused customers, unnecessary expenses, litigation, or having to re-brand.

Reduce risk of sun burn and skin damage:

Reduce risk of trademark disputes or other problems:

Wear sunscreen

(higher SPF = more protection)

Choose a good name

(more distinctive = more protection)

Apply sunscreen thoroughly to all exposed areas

Conduct thorough clearance search

For extra protection, stay in the shade under an umbrella

For best protection, register trademark with USPTO

Re-apply sunscreen periodically

Monitor trademark for infringements periodically

Consult a doctor regularly to catch any problems early

Consult an attorney frequently to make sure brand is adequately protected

Just as you should apply sunscreen and take other measures before a hot day at the beach, brand owners should take the fundamental steps to guard their brands from the damage that may result from a lack of care.

Trademarks are among of your business’ most valuable assets,

can you afford a trademark sunburn?


Top Trademark Trends of 2011



Top Ten Trademark Trends of 2011

2011 was a busy year for brand owners and those following the field of trademarks as trademark filings in the US increased and continued growth of the internet, social media platforms, and mobile applications impacts brand owners. Some of the biggest news stories of the year – from the passing of Steve Jobs to the “Occupy Wall Street” movement - also had trademark significance.

Celebrity trademarks continue to grow. Numerous celebrities made news in 2011 with their trademarks: ‘The Situation’ and Abercrombie are contesting the apparel company’s use of “The Fitchuation” and other parodies; Charlie Sheen filed numerous trademark applications after his well publicized blow up with CBS; and the Kardashian trademark empire continues to grow with the filing of more than 40 U.S. Patent and Trademark Office (“USPTO”) trademark applications.

Political trademarks. Sarah and Bristol Palin made headlines for receiving registered trademarks in 2011 covering their names in connection with motivational speaking services. President Obama’s re-election campaign filed to protect its logos and also recently sued a merchandise maker for infringement. The death of Osama Bin Laden was followed by Disney trademark applications for SEAL TEAM 6; they were abandoned days later after the ensuing public relations backlash. In the last part of 2011, more than 20 “Occupy Wall Street” related applications were filed.

Steve Jobs.The October death of Apple Inc. founder and CEO Steve Jobs inspired many retrospectives about how he changed our culture over the 30 years by teaching us to THINK DIFFERENT®. Along the way, Jobs helped make several Apple brand names and logos among the most recognized and most valuable in the world: iPhone®, iPad®, Mac®, and many others. Many Apple product designs are also registered trademarks.

.XXX domain names. In September, the ‘sunrise’ or pre-registration period began for the new .xxx top level domain name extension. Owners of registered trademarks and operators of adult websites were given the opportunity to secure .xxx domains before the full public release on December 6th.

New gTLDs.ICANN announced the long discussed launch ofnew generic top-level domain names (gTLDs) in 2011 with an application process commencing in 2012. Reaction ranged from excitement from some brand owners to serious concerns by many others as the procedures for protecting and blocking “.brand” domain names are convoluted, expensive, and not guaranteed to provide quick and affordable resolutions. As 2012 begins, look for last minute challenges to the ICANN plans.

Trademark filings increase.Through the end of November 2011, USPTO trademark application filings increased 6.5% over the same period last year. The increase may be a positive indicator for the economy’s growth as filing levels are approaching a return to the record high of 2008. At the close of FY2011, the USPTO register of trademarks contained 1,719,247 trademarks, an increase of 24.6 percent in just four years!

Trademark bullies study released.In April, the Department of Commerce released the “Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting” study, which was mandated by Congress to assess the extent of trademark “bullying.” The study fell short of making sweeping recommendations or identifying any significant perceived problems and suggested (1) private sector pro bono efforts, (2) additional legal education programs for attorneys, and (3) enhancing outreach from government agencies. The study largely fell on deaf ears as Congress held no hearings and issued no reaction.

USPTO outreach.The USPTO continued growing dialogue and collaboration with its trademark users and applicants as it hosted several roundtables and the National Trademark Expo, and requested comments from the public on several proposed changes to its practices. USPTO online trademark systems continued to move into the future in 2011 with enhancements to the online trademark filing system and the availability of trademark records via the cloud.

Popular trademark words in 2011.Here are some of the most popular terms appearing in USPTO trademark applications filed in 2011 (through December 1st):

SOCIAL              753     

NETWORK         1,000

CLOUD               827

GREEN          1,607

MOBILE        708

BOOK            606

Louboutin’s red soles put to the test.In 2008, designer Christian Louboutin registered a mark consisting of red sole in connection with “women's high fashion designer footwear.” Earlier this year the designer sued Yves Saint Laurent for infringement based on YSL’s all red shoes which included a red sole. The court not only failed to side with Louboutin, it indicated that the registration could not be enforced and might be cancelled. The case has since been appealed to the Second Circuit and will be watched by many fashion brands.

What to look for in 2012.Expect even more trademark disputes between brand owners related to social media and mobile applications as their use continues to grow. Louboutin’s appeal will be closely watched as the lines between fashion, aesthetics, and brands continue to blur. The biggest trademark story of 2012 will likely be the launch of the new top level domains and the challenges and opportunities they will present to brand owners.

About Erik M. Pelton: Erik Pelton is the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. Established in 1999, the firm has registered more than 1,500 U.S. trademarks for clients and represented dozens of parties in trademark disputes. In 2011, Erik presented on trademark and social media issues to a variety of audiences, including the Harrisburg University Social Media Summit, Business of Software, and American Bar Association.

© 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved.


Content: to be free or not to be free?


There is a growing debate in professional (including legal) communities as to whether and how much free content professionals should provide? Does providing free content make you a thought leader? Does it make your advice more valuable? Or does it dilute the value since so much information can be had at no cost?

I am a firm believer that providing a wealth of content is good for several reasons, including:

- Establishes expertise/credibility

- Answers questions and helps people

- Improves search engine rankings

- Improves name recognition and awareness

People searching for free information are unlikely to become good clients/partners anyways. And those searching for information will find it somewhere – why not find it from me? And those who recognize the experience and thought leadership demonstrated in the content will see the value in having such a person “in their corner” advising about the specifics of their situation.  

While much of law and the world may be more and more about efficiencies and reducing barriers, there is no substitute for individual, specific advice that pertains to a real world situation. Yes, anyone can fill out a form; but that does not mean they should. I could fill out IRS forms myself, but that does not mean that I would know how to taking advantage of the rules and savings and tools that are possible. I could even try to take apart and engine and re-build it, but I might cause more damage or worse yet hurt myself.

In my field of trademarks, it is probably true that a ten year old — or a computer — can fill in the fields in a trademark application. But that application may not properly reflect the mark, the goods/services, and many other things. Can the automatic form generator analyze and determine:

Who owns the trademark? Is the trademark in use by the applicant? Is there a potential conflict? Should a logo or a standard character mark be filed? Is it is certification mark? Which description of goods or services is the most accurate? How many International Classes are required? What constitutes proper evidence of use? Should I seek maximum protection or the path of least resistance to obtaining a valid registration? Who is eligible to sign the application? Should a logo be filed in color or black and white? Do I have a system established for monitoring and tracking the status of the application to ensure it does not get abandoned? If the trademark becomes registered, when will it need to be renewed? What symbol should be used with the trademark?

These are just a handful of the many questions that can factor into representing a client for “simple” trademark application. The list of questions about doesn’t even address any of the much more complicated questions that may arise if a substantive refusal is issued by the USPTO.

I provide clients with real value because my experience allows me to advise them regarding the many issues and questions that can and do arise in the process of protecting and registering a trademark. As a result, I am not afraid to provide general information and advice in the form of free content on FacebookTwitterYouTube, theApptorney® iPhone application and this IPelton® blog.

I was recently quoted on these same concepts in an online article from SHRM Online: Should Consultants Give Away Intellectual Capital? (member only access) published by the Society for Human Resource Management. Here are a few excertps from the piece by Lin Grensing-Pophal:

Pelton, an attorney with Erik M. Pelton & Associates, PLLC in Arlington, Va., said: “Generally, my philosophy is that in today’s day and age providing a wealth of information is a good thing and is generally advisable.”

Pelton, who said he provides free information through blogs, podcasts and videos, said: “You may find something valuable in an article, but that can never replace having one-on-one, specific guidance or consultation for a real situation.” 

Pelton advised HRconsultants to take steps to protect that information through the proper use of copyright and trademark notices, something that he finds few do…. “Every time there’s original content, whether it’s an article or a video or audio piece, or even a graphic, they should use a proper copyright notice,” he said. HR consultants might choose to file a copyright notice with the U.S. Copyright Office or might decide to trademark their business name or aspects of their practices.

SHRM: Society for Human Resource Management

Do you believe that content should be free?




Top Trademark Trends in 2010

Top Trademark Trends in 2010

By Erik M. Pelton

In 2010, many of the biggest news stories touched on the world of trademarks in some manner. Facebook and Apple were active taking steps to register and protect a variety of trademarks. But the most notable trademark story of 2010 was the release – and subsequent retraction – of a new GAP® logo. Here are the 10 most significant trends in trademarks for 2010:

1.     New logos. Many companies unveiled new logos in 2010, including Aol., Hertz, Comedy Central, iTunes, MySpace, MTV, and Kayak. Few of them were enthusiastically embraced and several bombed, such as the GAP. Customer reaction to the new GAP logo was very strong and fueled by Facebook pages, twitter posts, and websites. Within days, GAP cancelled plans to use the new logo and filed to abandon the application it had filed with the USPTO. The GAP incident reflects the strong bond that consumers and brands enjoy and the significance of a good trademark which resonates with customers. Companies looking to re-brand in 2011 should heed this message and evaluate whether a new logo is really the best way to do so.

2.     iPhone Apps.Names and logos for mobile software applications are increasingly a battleground for trademarks and brands. Apple recently registered many of the icons for its programs on the iPhone, including:

In 2010, several companies fought over app names and listings in Apple’s app store; this trend is likely to increase in 2011.

3.     Facebook.As Facebook continues to grow, so does the reach of its trademarks. In 2010, Facebook went after ‘Teachbook’ and ‘Faceporn’ and was preemptively sued by ‘Lamebook’. In addition to trying to stop those it believes are infringing or diluting the Facebook brand, Facebook filed a slew of US trademark applications in 2010 to protect terms including “Like” and “Face.”

4.     Reality TV Stars.Reality TV stars realize that trademark registration helps maximize the value of their brands. Snooki and The Situation each filed for trademark registration in 2010, and Kim Kardashian filed four trademark applications in 2010 for her brands.

5.     Social Media.Proper usage of brands and logos on social media websites is more important now that customers expect every major brand to have a social media presence. Companies that do not set up and use social media websites to promote their brands may find fans or competitors misusing their names. For example, the NFL Players Association, in anticipation of a possible lockout next year, set up a website at But someone already owned the Twitter handle ‘nfllockout’. After a formal complaint to twitter, the NFLPA was able to obtain control of the Twitter account. The ‘gaplogo’ Twitter account is controlled by someone mocking the GAP.

6.     Trademark Scams. Trademark owners are increasingly targets for a variety of scams. Worthless foreign or business ‘registers’ and ‘directories’ continue preying on owners of registered trademarks, as do a variety of domain name scams, particularly for the .cn, .hk, and .asia extensions. Trademark owners should carefully examine all solicitations regarding their trademarks and ignore those for meaningless publications.

7.     BP.The Gulf oil leak was a major news story in 2010. The BP brand has weathered the  storm fairly well due to good advertising and a strong brand. Ironically, the BP logo is very green and natural, evoking thoughts of the sun, flowers, growth, youth, and cleanliness.

8.     Stories in the News: The Tea Party & WikiLeaks. While the ‘tea party’ movement was prevalent in the headlines in 2010, the name was also quite active in the world of trademarks. More than 30 U.S. Patent and Trademark Office (“USPTO”) applications in 2010 contain  ‘TEA’ and ‘PARTY’. While WikiLeaks, another newsmaker in 2010, is not a registered U.S. trademark, in 2010 more than 20 applications were submitted to the USPTO containing “WIKI”, including WIKISOAP, WIKIGAME, WIKISHOE, WIKIPAD and WIKITUBE.

9.     ‘Bullies’ study.As part of a bill passed by Congress in 2010, the USPTO is conducting a study about overreaching trademark enforcement efforts and their effect on small businesses. The USPTO has issued a request for comments and has said that it will hold public discussions on the issue in early 2011. More details at

10.  Trademark filings increase. As the economy rebounds from a recession, trademark filings at the USPTO are increasing, though still not at pre-recession levels. Through November, more than 256,000 U.S. trademark applications were filed, an increase of about 4% compared with the first 11 months of 2009.

What to watch for in 2011:Social media and iPhone® applications will continue to be hot areas for brand development and trademarks. Look for companies to be more cautious about launching new logos on the heels of The GAP’s disaster. As the economy continues to rebound, look for successful businesses to realize the role intellectual property plays in their success, and look for trademark filings in 2011 to increase another 5% to 10%. Celebrity trademark stories will continue in 2011 as reality stars, professional athletes, and entertainers continue protecting their brands. Finally, look for Facebook to continue expanding the reach of its brands and trademarks, but don’t be surprised if a public backlash disapproving of the company’s overreaching efforts to control words such as ‘face’, ‘wall’ and ‘like’ eventually forces Facebook to take a more conservative approach to its trademarks.

About Erik M. Pelton:  Erik Pelton is the founder of Erik M. Pelton & Associates, PLLC, a boutique trademark law firm in Falls Church, Virginia. Established in 1999, the firm has registered more than 1,400 U.S. trademarks for clients, represented dozens of parties in Trademark Trial and Appeal Board disputes, and practiced before the U.S. Court of Appeals for the Federal Circuit. In 2010, Erik presented on trademark and social media issues to a variety of audiences, including Harrisburg University’s Social Media Summit, Corporate University Xchange, and the Software Industry Conference. Erik’s blog about trademark and social media issues, IPelton®, can be found at



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