Make Money With Your Mark

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Can having a federally registered trademark make you money? Yes. Here are three ways.

(1) Sell It! 

Our firm has been apart of mark transaction with businesses that are generating very little income, and those marks can still sell for tens of thousands of dollars. That's right "tens" with an "s." If your mark has been in the marketplace and gained any traction it may be worth something to either your competition or an up and comer in the industry. Check out this site which sells brands for sale.

(2) License It! 

The phrase, “Let’s get Ready to Rumble” has made well over $400 million in licensing revenue according to ABC. And there are many other companies, brands, and small businesses that make money from trademarks. Now with the advent of the internet, it has made it easier than ever to market your trademarks in order to make money from them. You may not earn you millions, but with the right information and effort, you too can legally protect and market your trademarks in order to make money.

(3) Legal Damages

Yes, one way to see a return on your investment is by filing suit against an infringing party. If you are successful on your claims the damages can be enormous. See this win by a small company against Uhaul to the tune of 40 million dollars. 

Finally 

The foundation for the above is two-fold: first, that you have a mark in commerce that you are using and creating an association between your mark and the great products or services you offer, and second, that you have a federally registered mark. If you don't have your mark registered with the United States Patent and Trademark Office, we will give you a free consultation on whether or not you have a protectable mark. Simply, click here. 

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Confusion: 1

Let's talk trademarks and likelihood of confusion

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Trademark registration will be denied if the USPTO attorney believes there is a liklihood of confusion. The primary determiner is based on a test called the Poloraid test from a 1961 federal case, which asks these 9 questions to determine whether confusion can be found. 

  • Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion.
  • Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
  • Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
  • Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.
  • The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
  • Evidence of actual confusion. Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
  • Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
  • Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
  • related products and services.

If you have created a brand and you see another mark out in the marketplace that hits one of these factos reach out to us, and we can help you determine, how close you are to getting your mark denied. 

I Am Not - Trademark

When a company is deciding on their branding, it is essential to determine if a similar mark is currently in existence, and more importantly, registered with the USPTO. Will I Am, filed a mark for "I AM," as related to his "WILL I AM" mark. The problem was, there were already "I AM" marks in a similar space. The examining attorney rejected the mark registration, and litigation in the Trademark Trial and Appeal Board (TTAB) followed, where the examining attorney was justified. After the deciscion was affirmed by the TTAB, Mr. I Am's attorneys filed suit in federal court where the deciscion was again affimred. Sorry Will. Lesson here - get a search done before you file, and find out if there are similar marks out there. 

More Analysis Here

When is litigation worth it?

When is litigation worth it?

 

Before spending valuable time and resources, both financial and emotional, you should ask yourself the question: "is a lawsuit the best option here?" This is a great question to ask before committing to a course of action. Believe it or not, many people rush into the fires of litigation without doing a basic analysis of whether litigation is right in their particular circumstance. When asking yourself that basic question are two primary issues at hand: (1) do you have a cause of action, and (2) is a remedy available

First, do you have a cause of action. What we want to know here is, do you actually have the legal higher ground? Is there a contract that a vendor breached? Are there remedies inside that contract, such as arbitration that could potentially bar you from a lawsuit? If there is not a contract at issue, you need to find the elements of the cause of action, and find out if you have proof to establish each element. For instance, defamation per se, as applied in the business context, takes place when someone makes a negative public statement about you that tarnishes your reputation in the business community. Although there are some tricks here, basically you would need to be able to establish exactly what disparaging remark was said, by whom, when, and who was listening. If you could establish those things, you likely have a solid cause of action. 

Second, you must know if remedy is available. This is important. Far too many litigants spend their hard earned money to pursue a just cause in the courts, and come out with a judgment in hand, but a judgment debtor that has split, or are out of assets. Remember, great attorneys can help you state your cause of action before a judge, but they're of no use squeezing water from stones, and if the individual or entity you are suing has no assets, it may be prudent to invest elsewhere. Litigation is a serious undertaking so make sure to do your homework before acting. 

MOAB

Mother of all Brands.

So, we've been hearing about the MOAB bomb these days, not the MOAB in the picture but, it gives us an opportunity to talk about the difference between a USPTO 1A and 1B (below) application.

The 1A application is filed when your mark is being used in commerce: you are selling stuff. 

The 1B application is used when you or your business intend to use the mark in the marketplace. 

There are advantages to filing the 1B: first, (1) your initial filing date will become the date of your first use of the mark, if you make sure to take the other necessary steps to fulfill the registration requirements. You may be asking, why does this matter? Please be aware that this first-use date can be very important in the event a conflict develops with another mark—in the USPTO or in the marketplace. BTW the reason you are protecting your mark in the first place is in case conflict arises. 

One of the other major benefits is that it puts parties attempting to use the same or a confusingly similar mark on notice. I would liken it to a flag being waved over you business plan. The flag says: "we are in the process of rolling out  our business in a strategic and legally sound way, if your intention is infringement, please note we are competent entrepreneurs." It's a big flag, I know. Reach out if you have a brand idea you are developing, it's always best to do a preliminary search before registering. That way you wont have to pay again fro rebranding. 

Why should I register my Trademark?

7 Benefits of Conducting a Trademark Search & Registering your Trademark

Get your business name, logo, or other relevant marketing material protected. Don't know why? Here are a few reasons.

1)  Value: Having your mark registered raises the value of your business. Using a trademark helps you brand your business and provides a means for you to create more potent name recognition. Further, a registered mark is an asset that adds tangible value to your business, likely increasing the purchase price if you ever were to sell it.

2) Notice: registering your mark (i.e. word, logo, sound, shape, color, scent, or taste) places your mark in a national database that is easily searchable and puts others on notice that your mark is protected.  This strongly discourages other individuals from attempting to use any mark that may be confusingly similar to your own.

3)  Nationwide Protection: as of the date of application your mark will be treated as if it is used nationwide.  This is important because priority is otherwise given to the first person to use the mark and limits your rights to a geographic area or reputation of the mark, potentially preventing you from expanding your business to other regions.  

4) Who Else: A trademark search provides you with a comprehensive understanding of any similar marks being used in both national and international venues.  This allows you to make an informed choice about branding or naming direction for your business and prevents you from the huge costs of rebranding.

5) Incontestability: after your mark has been registered for five years you are provided with a heightened protection possibly leading to your mark becoming “incontestable,” which can help not only in court proceedings but also provides the ability to more forcefully convince others to cease using your mark.   

6) That Little R: registration allows the right to use the ® symbol on goods and services listed in the registration (unregistered marks may be designated by a superscript “TM”), providing an additional boost to your branding and warning possible infringers that you take protecting your brand seriously.

7) Cash Money: Gives you the right to impose statutory damages in the instant where the services or goods listed under your mark are counterfeited, and that can mean significant money in your pocket. 

If you're interested in registering your mark, please reach out. 

 

 

 

 

Partnership Check-List

Are you thinking about forming a partnership?

It could be a great idea, but first check through this list to make sure you have the big and little items figured out first. Print out this list, read the questions, and write your answers. Having outlined your partnership agreement will really help when a partner is ready to exit, especially if there is conflict. 

1. What will you name your partnership? Make sure you get appropriate Trademark protection. 

2. What is your business purpose? Define it for strategic, and taxation purposes.

3. What kind of equipment do you need? Make sure you have a comparable business to look at. 

4. Think about capital questions like: (i) how much cash are you putting in; (ii) how much operation capital is needed; (iii) will additional contributions in future be needed?

5. What are the skills and experience of each partner, and what value does it bring?

6. Transfer of property - are you doing this by contract: (i) Existing business? Are these properties to be transferred; (ii) Bulk Sales Law--Notice necessary?

7. Assignment of Licenses: (i) Licenses; (ii) Insurance policies; (iii) Any new licenses required

8. Will partnership take title to real property (buildings or land)?

9. Will there be assumption of liabilities by new partnership?

10. Do you have any inventions or trade secrets: If so, you need appropriate assignment, or a licensing agreement.

11. Think about potential taxes and insurance costs: (a) Sales Tax Permit; (b) Unemployment Insurance; (c) Withholding tax?

12. If a leases or franchise is being transferred, have you reviewed the contract to determine if consent is needed to transfer be obtained?

13. Is there a Fictitious Name Statute [called an "assumed name" in NY]?

14. Where will your place of business be?

15. What is the term of the partnership, and will the partnership terminate at will?

16. Are any of the Partners involved in legal proceedings or domestic difficulties which would prejudice the Partnership relations?

17. What is each partners right to specific partnership properties. E.g. what is not community property: Will a spouse's consent to a specific transfer be necessary?

18. Think about Salaries--Expense; previous interest on advances or undrawn profits; minimum return; will profits and losses be according to capital contributions? Also, drawing accounts or salaries: How much; Payable when; Salaries allowed if a loss?

19. Management: (a) Who are managing partners and what are their duties; (b) How are changes in salaries or drawing accounts to be made; (c) How are checks to be signed?

20. What are the risks that should be covered by insurance:  Fire & theft; Life?

21. Will all the partners devote full time?

22. Settlement of disputes: By majority of partners? Each one vote?

23. What acts are prohibited without consent? (e.g., acting as accommodation parties, sureties, going into debt, lending firm money, selling, mortgaging or pledging firm property? Discharging employees, closing a firm transaction over a certain sum of money). Partners prohibited from encumbering or disposing of any of their interest in partnership property?

24. What if you need to expel of a partner:  Disability--How long;  Disabled partners have right to continue salary or drawing account; Insurance by firm on the financial drain covered by illness of a partner?

25. What happens upon withdrawal. Does a partner give notice? If partnership is at will, what advance notice required: Covenant against competing; or using firm secrets?

26. Definitely include: Valuation of interest. Partners jointly or as individuals have option to purchase interest of a deceased or retiring partner: (b) How will you determine value? (i) Book value; (ii) Formula--Capital account + or - his share of individual profits or losses at date of death or retirement; (iii) By appraisers; (iv) By C.P.A.; (v) Is goodwill to be considered? If so, on what basis; (vi) How paid? (Cash, installment payments, security, promissory note, life insurance on other partner?

27. How will the Retention of funds work: is interest of deceased partner to be purchased or retired; Is estate of deceased partner to continue to participate in profits? How long; Estate to bear equitable share of losses; In what proportion do remaining partners get to divide interest of a deceased or retiring partner;

28. What will happen if you engage new partners? Add Provision for admission of new partners?  If so, with consent of all partners, or upon what conditions?

29. How does Dissolution Happen:  (i) Death of partner; (ii) Bankruptcy of partner; (iii) Adjudication of incompetence; (iv) Incapacity or disability; (v) Withdrawal or expulsion of a partner?

30. Liquidation. Which partner acts as liquidator? Salary? Does any partner with the return of any specific partnership profits?