Posts made in October, 2013

Trademarks 101 PART 3: Avoiding Common Mistakes– Preliminary Searches

Posted by on Oct 21, 2013 in Intellectual Property

We’ve been discussing common mistakes small businesses and entrepreneurs make when dealing with their brand, mark or image. Last week we discussed that one common mistake is that people fail to properly conduct a trademark search. Trademark searches can either be preliminary trademark searches or they can be full trademark searches. Today we’ll discuss preliminary trademark searches. PRELIMINARY TRADEMARK SEARCHES Preliminary trademark searches generally involve searches conducted for free on the internet and the U.S. Patent and Trademark Office (USPTO) database (using the Trademark Electronic Search System (TESS)) to see if there are any direct conflicts. If one of these searches identifies a direct conflict, it either means that the potential mark is either unavailable or will only become available if additional acts are taken to obtain clearance (e.g. purchasing conflicting rights). Depending on time and budget constraints, taking such clearance actions may not be a realistic option–especially for a small company or entrepreneur. A USPTO search will typically pull up existing federal applications or registrations for marks that are identical to or applicable to products or services which are closely related or identical. While USPTO searches are useful as a preliminary search, they are not good enough to completely clear a proposed mark for full registration. Limitations on USPTO searches are: The USPTO database only includes federal trademark applications and registrations. The USPTO database does not include common law marks. A USPTO search may not reveal applications or registrations for marks that may be similar enough to cause consumer confusion although they are not identical, nor do they appear to have a direct conflict. Thus, if you have a brand, mark or image you would like to protect by obtaining a trademark, it is probably not a good idea to rely solely on a USPTO or general internet search unless: You intend to use your mark in a limited manner for a short period of time or Your mark is so descriptive and distinct that it would be extremely unlikely for a third-party to have conflicting rights that would be enforceable. If you are interested in learning more about how you can protect your brand, please consult a trademark...

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Trademarks 101: Avoiding Common Mistakes PART 2

Posted by on Oct 9, 2013 in Intellectual Property

In addition to consulting an attorney who specializes in trademark law, startup companies and entrepreneuers can avoid other common mistakes when it comes to safeguarding their brand or image by conducting a proper trademark search. While this also may seem like common sense, you’d be surprised at the number of entrepreneurs who build an entire business model and brand without so much as conducting a preliminary search, much less a full-fledged trademark search. Many trademark infringement claims could have been completely avoided if the company or entrepreneur had taken the time and made the small expenditure up front to conduct a trademark search not just before launching their business, but before finalizing their business model. If a proper search is conducted, it may help to surface any mark held by a third-party which could potentially be an infringement risk. If a proper search is conducted up front, the company or entrepreneur will have the time to choose a different name, brand or image or obtain permission to use that particular name, brand or image from the third party who owns it. A proper trademark search can also help the company or entrepreneur defend against claims that the alleged infringement was willful (which raises the severity of the infringement claim). In the converse–not conducting a proper trademark search can possibly be used as evidence that the company or entrepreneur acted willfully. Trademark searches can be preliminary or they can be full trademark searches, both of which we will discuss over the next couple of weeks. In the meantime, if you have any questions concerning how to protect your name, brand or image, please contact a trademark...

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Trademarks 101: Avoiding Common Mistakes

Posted by on Oct 4, 2013 in Intellectual Property, Practice Pointers

Many entrepreneurs and small businesses try to handle their intellectual property (in this case, trademarks) independently. While this works in some circumstances, entrepreneurs and small businesses often make the same mistakes when dealing with trademark searching and clearance which could be avoided relatively easily. Trademark searching and clearance involves the collection and analysis of information in order to assess a potential trademark’s viability from an availability and protectability standpoint. The process of trademark searching and clearance is crucial for businesses from a risk management standpoint, particulary those who rely heavily on a specific logo or brand. Consequences of an inadequate search or, God forbid, the failure to search can be drastic and can include being sued for trademark infringement (which can result in significant monetary damages) and/or an injunction that completely stalls a product launch or advertising campaign. While the process of trademark searching and clearance can be complicated, there are common mistakes that an entreprenuer or small business can take steps to avoid. Common Mistakes To Avoid: #1) Failing to Consult a Trademark Attorney: While this may come across as redundant, manipulative or simply not heplful from a common sense standpoint, it is no lie that many entrepreneurs and small businesses get into trouble with their brand, logo or other trademark assets because they made decisions or took actions without consulting a trademark attorney. (NOTE: a “trademark attorney”) Searching a trademark can be complicated and there are many potential pitfalls which can be avoided if an entrepreneur or company consults an experienced trademark attorney first. Most trademark search mistakes occur when the process of searching and clearance is conducted by a business manager or other personnel or, surprise surprise, by an attorney who does not specialize in trademarks. Therefore, make sure the attorney you consult actually has experience in trademarks.   Stay tuned for additional common mistakes that you can avoid in the trademark search and clearance...

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Update! I-9 Forms and Immigration

Posted by on Oct 2, 2013 in Uncategorized

Earlier this year, the U.S. Citizenship and Immigration Services (“USCIS”) issued a newly revised Form I-9 for use by employers. The Form I-9 is used to verify the identity and employment authorization of individuals who are hired for employment in the United States. Thus, all companies who have employees must ensure that a Form I-9 is properly completed for each employee. As of this date, employers should be using the revised form, which is available at: http://www.uscis.gov/files/form/i-9.pdf. The USCIS’s revisions to the I-9 form are subtle, in that USCIS simply: Added data fields for the employee’s: foreign passport information (if applicable) telephone number e-mail address Improved the form’s instructions Revised the layout of the form, expanding it from one to two pages (not including the form instructions and the List of Acceptable Documents) The revised form can be identified by the revision date “3/08/13 N” printed in the lower left-hand corner. Please contact an attorney if you have any questions about using the Form I-9 or your duties in verifying an employee’s identity and work...

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