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When Disasters Plague Your Contract

Posted by on Jan 6, 2014 in Draft Your Contract, Limiting Liability

Part of the contract drafting process entails a bit of forward thinking: trying to identify and minimize ahead of time those things that could go wrong. If you’re new to the business world, or you’ve just entered into a new sector or started a new business, it can often be difficult to predict the downfalls your business may face– or the downfalls the other contracting party may face. There are some risks that every business must face which are more predictable than others. For example, every business at some point can expect to have an invoice dispute with a supplier, customer or independent contractor. On the other hand, there are those risks which are completely unpredictable and therefore less controllable. In the world of contracts, these risks are often called “force majeure events,” and well-drafted contracts usually contain a Force Majeure provision dealing with how such events will affect the parties’ respective obligations during the course of the contract. Force Majeure refers to acts of God and other events which are wholly outside of the control or influence of the party. Typical force majeure events include things like floods, fires, tornadoes, hurricanes, tsunamis, earthquakes, riots, etc. While these events are pretty intuitive and it is hard to contest their occurrence being completely outside the control of the contracting party, there are some events, such as supplier bankruptcy and currency and market fluctuations which are less clear and which are often heavily negotiated. Force majeure provisions list the events which will constitute force majeure and set forth the parties’ respective obligations or release from obligations if the force majeure event occurs. For example, a force majeure provision may excuse a supplier from complying with a deadline or delivery date. As a startup company or entrepreneur, be cautious when you see a provision dealing with force majeure and, if you’re drafting an agreement, ask yourself how your contractual relationship may benefit from including a provision to help manage uncertainties. If you are interested in learning how to protect against risk, including force majeure risk, please contact an attorney or have an attorney review your agreement before you sign...

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App Development: Privacy Issues to Consider

Posted by on Dec 13, 2013 in Intellectual Property, Limiting Liability

If your company is developing an app, or having an app developed for it, there are key issues concerning privacy that your company should keep in mind. Apps can often require or facilitate access to personal information about end users which is typically regarded as private and subject to protective laws or regulations. Some apps gradually collect personal information about the end user as the end user navigates the app. Such information can include: financial account information health information location data personally identifiable information (e.g. name and address) There has been greater focus of the Federal Trade Commission (FTC) on privacy issues in mobile devices and apps. Therefore, to help avoid liability or harm to your company’s reputation as a result of privacy breaches, at the initial stages of the app development process and throughout your operations, your company should understand the types of personal information would be shared or accessed as a result of an end user navigating your company’s app. It’s never too early to consider privacy issues–especially if your app facilitates or requires access to information which is highly regulated, (e.g. financial, health or children information). If your company is developing and app or having an app developed, please contact an attorney who can help you minimize risk with respect to privacy...

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Developing an App? Protect your Intellectual Property!

Posted by on Dec 4, 2013 in Uncategorized

If your startup company is working on developing an app, remember that the app, or the development process, raises intellectual property issues that you should consider. For example: if there is a process or method embodied in the app, it may be something worth patenting the app may have a name that should be protected by a trademark the app may have terms used in connection with it that should be protected by a trademark the app developer may treat the app’s source code or other aspects of the app’s development as a “trade secret“ the content of the app itself should maybe be protected by copyright–if original (e.g. the app’s graphic, textual, images and artwork, database elements and software code) If you’re working on an app, or having an app developed for your company, please see an attorney for further discussion on how best to protect your IP in the...

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Social Media, Marketing and Privacy Issues: Tips to Remember

Posted by on Nov 20, 2013 in Uncategorized

Before launching a social media marketing campaign, consider the following: Be sure you disclose what information you collect from your audience, why you collect it, and how you use that information. Does your marketing campaign or website use “cookies”? If so, disclose it. If you do not know, ask your web developer (or someone else who could explain this practice to you), then disclose accurately what your site uses. Does your marketing campaign target children? If not, be sure to address this honestly- for example by prohibiting use of your site by children under the age of 13. If so, be sure you comply with the Children’s Online Privacy Protection Act. It would be a good idea to have a lawyer review your policies or advise how to comply with this law. Always remember to contact an attorney if you have any specific questions or...

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Trademarks 101 PART 5 — Avoiding Mistakes in the Trademark Process by Assessing the Likelihood of Confusion

Posted by on Nov 7, 2013 in Intellectual Property

So, startups and entrepreneurs, you think your trademark situation is totally cool because you conducted a full trademark search, right? Wrong. Well, at least not necessarily… Sometimes even a full trademark search isn’t enough because it often doesn’t reveal important details about the actual use of a trademark in the marketplace. In order to assess the likelihood of confusion and the level of risk associated with a third party’s trademark that may potentially conflict with yours, you should determine the nature and extent of any potentially conflicting trademark’s use. “Likelihood of confusion” is the crucial test in trademark infringement and unfair competition claims. Although there is some variation among our circuit courts of appeal, there are similar factors that are generally considered when assessing the likelihood of confusion with a potentially conflicting third-party trademark. Some important factors to assess with regard to a potentially conflicting mark’s use are: The length of time the third party mark has been in use The goods or services for which the mark is used The representative consumer of the good or service The price point of the good or service Finally, one other important factor to assess is the third party’s history of trademark enforcement—If the third party has a history of active litigation regarding trademark infringement or unfair competition, you may really want to think twice before pursuing a mark that could potentially conflict or be confused with that mark. Because basic internet searches may not be sufficient to determine the information needed to fully assess the use of a third party’s mark, it may be advisable to engage a trademark investigator to do the job—those do exist. And, as always, please consult a trademark attorney if you’re interested in protecting your image or brand or you find this discussion murky and...

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Trademarks 101 PART 4: Avoiding Mistakes–Don’t Ignore Abandoned Applications or Cancelled Registrations

Posted by on Nov 1, 2013 in Intellectual Property

Here’s another mistake startups and entrepreneurs make when it comes to protecting their brand or image: Even if they’re trying to go through the trademark process and conduct searches, many startups and entrepreneurs mistakenly assume that they shouldn’t worry about applications that have been abandoned or trademarks that are the subject of cancelled registrations. The thing to remember is: Although a trademark registration is cancelled or an application is abandoned, there is still the possibility that the underlying trademark may be in use and/or that the owner of the underlying trademark may have common law rights in the mark. Ignoring those applications and registrations can be a huge mistake if the mark is in use or if the trademark has not been officially and legally abandoned (e.g. the use has stopped temporarily). There are many reasons why a trademark registration may be cancelled or an application abandoned which have nothing to do with whether the trademark is in use. For example, docket failures and failures to overcome USPTO office actions are reasons a trademark registration may be cancelled or an application abandoned. Therefore, if you’ve conducted a trademark search and you come across an abandoned application or cancelled registration for a mark that is similar to the mark you want to use and the mark is for a related good or service, you will probably want to conduct further investigations to determine whether the mark is still in use and, if the mark is no longer in use, to determine when the use stopped and whether the owner has plans to pick the use back up again. If you have questions concerning your brand, image or trademark search, please contact a trademark...

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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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