If you are in the position of potentially needing a patent, you will want to get some information before you file. The first two bullet points are entities for which you will want to become intimately acquainted.

• USPTO = United States Patent and Trademark Office. Applicants who qualify for small entity status can reduce many USPTO fees by 50 percent.
• America Invents Act (AIA)

Qualifying as a Micro Entity or Small Entity before the USPTO

In 2011, the America Invents Act (AIA) created the new category of micro-entities who can reduce certain fees by 75 percent. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees.

A Small Entity is an Entity That:

• is a nonprofit organization;
• does not, together with all affiliates, have 500 or more employees;
• And, has not assigned, licensed or otherwise conveyed an interest in the invention to a non-small entity.

The USPTO has defined four categories of concerns that qualify as “small-entity.”

•  a university,
• a nonprofit organization,
• an individual inventor,
• or a small business concern.

The definitions for a “university,” “nonprofit organization,” and “individual inventor” are defined in the patent regulations.

Notably: a wholly owned subsidiary of a nonprofit organization or of a university is considered a part of the nonprofit organization or university and may claim small-entity status.

The term “small business concern” is not defined in the patent regulations.

The Small Business Administration (SBA) has sole jurisdiction over determinations of “small business concerns” and the USPTO will not accept petitions for size determinations.

The SBA has defined “small business concern” as, generally, a “concern, including its affiliates, that:

• is independently owned and operated;
• is not dominant in the field in which it is bidding on government contracts;
• and meets any applicable criteria for a particular industry concerning the number of employees (usually less than 500) or annual receipts (generally less than $7 million) or annual profits (usually more than $2 million).

The SBA Size Determination Board: has construed the term “affiliate” broadly to encompass almost any situation where an otherwise small company may be interacting with a large business concern.

The SBA considers factors such as: ownership, management, previous relationships with or ties to another concern, and contractual relationships worldwide in its determination whether “affiliation” for the purposes of size determination exists.

The key factor, however, is control. Entities are considered affiliates of each other when one controls or has the power to control the other, or a third party controls or has the power to control both.

The relative control over the entity rather than the actual percentage of investment or ownership in the entity is of significance for entity size determination at the SBA.

• For example, in Size Appeal of Novalar Pharmaceuticals, Inc., SBA No. SIZ-4977 (2008), the SBA Size Determination Board determined that an “affiliation” with an individual minority stockholder (a venture capital firm) transformed the otherwise small medical device startup company into a large business concern because the venture capital firm had the potential to block certain actions of the board constituting negative control of the entity.
• Similarly, in Size Appeal of TPG Consulting, LLC, SBA No. SIZ-5306 (2011), the SBA Size Determination Board found that a small Web design firm was a large business concern because the firm was economically dependent on a large manufacturing company as a customer.

Clients need to be aware that their business may not qualify for small-entity status if its contractual relationships or other ties affiliate it with a large business concern.

• Even when any one factor is not dispositive of “affiliation,” the SBA will still consider all of the evidentiary findings under a “totality of circumstances” rule.
• The consequences of mis-declaring entity status can be severe. In cases where courts have found applicants paid the small entity fee without a good faith basis for considering themselves to be small entities, the courts have determined the affected patent to be invalid.

Luckily, entity status can be easily corrected by paying the increased fee amounts and making appropriate certifications about lack of deceptive intent.

Micro entity: There are two ways to qualify as a micro-entity.

The first way to qualify as a micro-entity is under paragraph (a) of the new rule, requiring the following conditions that must be satisfied individually for each applicant, inventor, and joint inventor who:

• has not been named as an inventor on more than four prior patent applications (provisional applications, patent applications filed in a foreign country, e.g., the international applications system (PCT) for which the basic U.S. national fee was not paid;
• and applications that a party has assigned or is under an obligation to assign as a result of previous employment do not count);
• has a gross income less than three times the median household income in the U.S. for the preceding calendar year (for 2013 fees = $150,162, or 3X$50,054, the 2012 median household income.

For parties not paid in U.S. dollars, the average currency exchange rate during the previous calendar year applies;

• has not assigned, licensed or otherwise granted an interest in the invention to an entity who has gross income more than the amount listed above (unless the entity relates to an institution of higher education);
• and also meets the requirement for small entity status.

The second way, under paragraph (d) of the new rule:

• is by having a relationship with a U.S. institution of higher education.
• The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, must be an institution of higher education.
• Or, the application must be assigned, granted, conveyed, or is under an obligation of contract or law to assign, grant, or convey, a license ownership interest in the particular application to the institution of higher education.

Pursuant to paragraph (d), applicants employed by the university who derive a majority of their income from the university, or an applicant who has assigned or has an obligation to assign to a university:

• can also claim micro-entity status, regardless of income.

Although perceived as a major loophole in the statute because an otherwise ineligible entity can become a “micro entity” if it nominally licenses or assigns its patents to a university:

• the USPTO has taken the position that no loophole exists because small-entity status needs to be established first in order to claim micro-entity status.

To obtain micro-entity status under paragraph (d), the actual inventors, rather than the institution of higher education, must be named as the applicant.

Also, since the definition of “institution of higher education” refers to the Higher Education Act of 1965, the institution of higher education referenced in paragraph (d) must be in the United States.

• For the purpose of micro-entity status, this is the only distinction between U.S. and non-U.S. entities.

The procedure for claiming micro-entity status includes the following requirements:

• A certification of micro-entity status, which may be signed by a patent attorney, the assignee, or all applicants, must be filed with or before any payment of fees at the micro-entity rate. That is, if a micro-entity status is mistakenly not sought, the difference in fees will not be refunded.
• Whenever micro-entity status is no longer appropriate, a notification of loss of entitlement must be filed; simply paying the fee at a different rate does not suffice.
• The certification needs to be filed only once in each application.

Other procedural requirements are as follows:

1. Each related application, including each continuing, divisional, continuation-in-part, or reissue application, must have its own certification.
2. If micro-entity status is established in good faith, but in error, the error will be excused upon payment of the fee deficiency and certain other formalities.
3. Since the applicable rule specifies “will” rather than “may,” the remedy is by right rather than at the discretion of the USPTO once the requirements are met.
4. The remedy does not apply to fraudulent attempts to establish micro-entity status.

Large entity: any entity that is neither a small entity nor a micro entity.

The post How to Save Money Filing Patents appeared first on ReadWrite.

Congratulations on eyeing the international market for your business growth. We are living in an age of globalization and more and more companies are recognizing the profitability of taking their products and service offerings globally at a relatively small incremental cost. It is an easy calculus to recognize that international consumers are able to be reached with the power and affordability of internet advertising and complete more online purchases globally.

While your global business reach is expanding, it’s critical to understand the importance of trademark protection for your company and products brand in these international markets. Trademarks, including your company name, the name of your product or service offerings, logo, & tagline, can be among your company’s most valuable assets.

“more companies are recognizing the profitability of taking their products and service offerings globally at a relatively small incremental cost”

A trademark is a national right that requires registration in each country that you seek protection for your brand. Even if you have a registered US trademark, no international trademark protection exists for your registration. That means that even if you are using your brand name for business, if you did not file for foreign trademark registrations early enough, someone else can lawfully own the trademark in a particular country. We’ll discuss how to avoid that scenario as you look to grow your businesses and brands internationally.

1. Time is of the essence.

When dealing with trademark registrations, time is of the essence. Typically, many civil law jurisdictions rely on a first to file system to give priority to a trademark holder. This can happen because unlike the common law trademark system in the USA, where trademark rights accrue through use in trade and commerce, most foreign jurisdictions are governed by civil law systems. Given these circumstances, it is best not to delay filing trademark applications abroad, particularly if you intend to launch a product or service in the near future.

Oftentimes,  one of the biggest issues business owners face when trying to register their trademarks outside of the USA is “brand squatting,” which describes the situation when an unaffiliated third party registers a brand owner’s trademark first in a jurisdiction only seeking to eventually sell the hostage trademark registration for a ransom to the true brand owner. As in the famous Starbucks case in Russia, where a Russian businessman made a living by registering trademarks and selling them to American companies, there are unscrupulous characters who will engage in “brand squatting” by identifying up and coming brands in the USA and then file applications first in civil law countries.

While cost can be a concern, and some jurisdictions charge high fees to register, the costs to negotiate the buy back of a registration for your own trademark can be even higher. There is the registration and filing fees and then the time of the attorney’s involved.

2. Do your homework.

Before thinking about filing internationally, you need to do your homework and recognize in which countries your product or services will have the greatest market. We recommend that clients often begin with grouping countries into A, B, and C tiers in order to prioritize the filings by market size and value. This helps save time and money in focusing on the most important filings first.

In choosing where to file, consider:

• What countries have sizeable revenue streams or consumer bases for your company?
• Do you have business operations (e.g. offices, distributors, partnerships or manufacturers) overseas?
• Is your company’s relevant market or targeted need growing or significant in a particular country or region?
• Do you have anticipated expansion plans abroad?
• Consider “defensive” filings in countries with high rates of counterfeits like China, Brazil and India.

Furthermore, to protect your product or service trademark in another country, it is important to know how the system in that particular country relates to the laws in the USA.

If you’re going at it alone, take the time to familiarize yourself with the trademark rules and regulations of other countries where you are seeking registration. Some great research resources include The International Trade Administration as well as the WIPO. If you, understandably, feel overwhelmed look at step 3 next.

3. Hire a trademark attorney.

Whether you are registering your trademark only in the USA or planning on filing internationally as well, the guidance of an intellectual property attorney will help attend to all the details and smooth your trademark application process. Without an attorney, you can find yourself paying a lot of money, only to have your trademark application rejected, sometimes in manners that are not correctable.

There are several different kinds of errors that can occur during the course of a trademark application– errors in the mark, errors in the recitation of goods and services, errors in the specimens or descriptions of the mark, and errors in ownership of the mark. The first four errors are fairly common and are typically able to be corrected. The test is if the change to correct the error does not materially change the trademark or expand the goods and services outside of the original scope of the application.

There are fatal errors to a trademark application when filing on your own without an attorney that are incapable of being corrected. The most typical of these fatal errors in the application are errors in ownership that can create problems well down the line of the trademark registration and may not be correctable.

Additionally, there are several countries not protected under the Madrid Agreement, such as Saudi Arabia, Canada, and South Africa that it would be wise to hire an attorney in the country you are looking to register your trademark.

When hiring an attorney, you want to ensure they are registered to practice before the USPTO. You can search USPTO registered attorneys here. You can also search for an attorney via the International Trademark Association that will list attorneys specializing in trademark law.

4. Register in the USA.

We’re often asked which country a global brand should be registered in first. We always advise that before seeking international trademark protection, your first step should be to register your trademark in the USA through the U.S. Patent and Trademark Office (USPTO).

Not only is the USA the biggest market in the world, but it also has a fast and electronic application system that can be completed online through the USPTO website. Additionally, registering in the USA first will give your application stronger credibility and priority when you seek to register in other countries and jurisdictions that we will discuss further under point 6 below.

“Priority” refers to how early your trademark rights start in a particular country. Having early priority is important because if multiple parties dispute over who has the right to use a particular brand name (e.g. you discover a competitor using a similar name), whoever has the earlier trademark priority would have the right to use the trademark.

That’s why registering in the USA first provides the best basis for foreign registrations, facilitating protection of your marks worldwide as business expands.

5. Know what your trademark means when translated.

As with every product naming decision, you should carefully consider what the foreign translations of your product names and services mean when they are being advertised in foreign markets.

The classic example of such an issue blowing up in the brand owner’s face is when Chevrolet tried to market their Nova sedans in the Spanish speaking world, where Nova was translated as “no va” or “no go” in Spanish. This was not only a public relations embarrassment, but it also cost millions in dollars in lost marketing and rebranding to the company.

In another example, Parker Pens reportedly made a mistake in the translation of the advertising slogan “It won’t leak in your product and embarrass you.” Someone on the translation team apparently thought the Spanish word embarazar meant “embarrass.” The slogan ended up saying “It won’t leak in your pocket and make you pregnant.” Obviously, the poorly translated slogan would not be something Parker would seek to trademark.

Ensure your marketing and business team takes into consideration the foreign translation of whatever brand name, logo, term or slogan you are seeking to use in that particular market. It often makes sense to hire a local in the region that you are targeting for their market expertise.

6. International trademark treaties.

For international trademark applications, the Madrid System is an international treaty that provides a single solution for registering and managing trademarks worldwide.

Under the Madrid Agreement, trademark applicants can submit one application to protect their work within a coalition of countries that have signed the treaty to harmonize applications. The Madrid Union is made up of countries that recognize these international trademarks.

There are a total of over one hundred countries (118) that currently offer protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union. This makes it an ideal solution for optimizing a global launch of a product or service.

The Madrid Agreement allows you to select specific countries, or you can choose to protect your trademark in all 118 countries that are available. While there is a processing fee for registering a trademark with the WIPO, it is much less costly than filing individual applications within each country that makes it a very effective option to consider.

According to the WIPO, their Madrid Yearly Review 2018 noted over 56,ooo international registrations for trademarks under the Madrid Agreement alone- a 26% increase in the previous year. This statistic clearly shows how popular and attractive an option pursuing the international trademark treaty is for businesses looking to expand globally.

Final Thoughts

For many businesses, their brand is their most valuable asset. Through a few judicious steps in seeking trademark protection you can ensure that your company brand is secured and flourishes with the international growth of your business in global markets. You can learn more about trademarks and intellectual property protection by visiting this Intellectual Property Introduction.

Feel free to contact Feras Mousilli at Lloyd Mousilli, LLC if you would like to discuss your trademark strategy.

The post How to File an International Trademark When You’re Ready to Take Your Business Global appeared first on ReadWrite.

There are many benefits to having a bank account under the name of the corporation- checks printed under the company name, corporate credit cards with a host of perks, accounts on PayPal and other online processors, and receiving payments from your clients under your company name.

Present Employer Identification Number (EIN)

Articles of Incorporation

Often, you will be required to present the copy of your articles of incorporation that are file-stamped by the Secretary of State’s office in the state in which the corporation was registered.

Entity Type Checklist

The specific documentation that the bank may require will often vary depending on the type of entity that you are opening an account for. Below you will find the documentation often requested based on the type of entity for your business.

Corporation

• Business Tax Identification Number
• Articles of Incorporation or Certificate of Incorporation
• Corporate Resolution identifying authorized signers if officer names are not listed on Articles of Incorporation or Certificate of Incorporation

Limited Liability Company

• Business Tax Identification Number
• Articles of Organization or Certificate of Formation
• Corporate Resolution identifying authorized signers if officer names are not listed on Articles of Organization or Certificate of Formation

Professional Corporation

• Business Tax Identification Number
• Articles of Incorporation or Certificate of Incorporation
• Corporate Resolution identifying authorized signers if officer names are not listed on Articles of Incorporation or Certificate of Incorporation

General Partnership

• Business Tax Identification Number
• Partnership Agreement showing business name and name of partners, and
• Business name filing document, such as Fictitious Name Certificate or Certificate of Trade Name, showing business name and name of partners

Limited Partnership

• Business Tax Identification Number
• Limited Partnership Agreement showing business name and name of partners, and
• Business organizing document filed with and certified by state official, such as Certificate of Limited Partnership, showing business name and name of partners

Limited Liability Partnership

• Business Tax Identification Number
• Limited Liability Partnership Agreement showing business name and name of partners, and
• Business organizing document filed with and certified by state official, such as Certificate of Limited Liability Partnership, showing business name and name of partners

Links to Bank Requirements

Further details are available from the banks themselves. We have provided the following links to help you decide which best suits your particular needs and objectives:

• Bank of America
• Chase
• Wells Fargo

If you encounter any issues, please feel free to reach out to us at www.lloydmousilli.com and we can provide the templates for corporate resolutions that you might require. Happy banking!

The post How to Open a Company Bank Account for Your Startup & Avoid the Pitfalls appeared first on ReadWrite.

Every time you’ve installed a piece of commercial software, you’ve invariably been presented with what must have appeared to be legal gibberish- a seeming difficult to read, needlessly long, solid block of text that was almost impossible to understand. Most people never bother to read the information presented- quickly scrolling to the bottom of the page, checking a box, clicking on “I Agree” or doing whatever it takes to get past this legal hurdle to access the software.

Despite the relative ease with which these legal terms are bypassed, or the wide range of names they are called (e.g., Terms of Use, Terms and Conditions, T&Cs, Terms of Service, End User License Agreement, EULA, etc.) these terms contain critical contractual language limiting your rights as a user of the software or service and granting rights to the use of your information and data to the software publisher, among a host of other conditions and limitations.

Terms of Use are your Playground Rules, placing users on notice upon entering your playground.

While this may seem like a nefarious or underhanded practice to take advantage of unwitting users, it is actually business critical for the software publisher to be able to prevent abuse of the software or service by malicious users, hackers, or even competitors. These terms also limit the liability for the business for claims that may be filed by the user of the software in ways that the business could never have anticipated.

Just as every business has different requirements that vary by size, industry, and region, software terms are not one size fits all, and should be customized to meet the specific service offering, secure the rights required, and mitigate the associated risks unique to the business model.

In this article, we will examine the various types of terms that should be included in a business’ terms of use to help setup the conversation you should have with your lawyer.

Playground Rules

As the business providing the software or services being offered, you are setting the “Playground Rules.” Your Terms of Use are your Playground Rules, placing users on notice upon entering your playground

Within the Terms of Use, you can spell out exactly what activities are prohibited on your website or platform. You can create a laundry list of prohibited practices, anything from use of profanity, multiple accounts, harassment of other users, etc. There are way too many terms that could be potentially included here to be discussed in detail, but it is sufficient to know that a social media platform would have very different terms from a personal finance management application.

At a minimum, it should allow your business to stop abusive users, terminate access or accounts at your sole discretion, and enforce restrictions and guidelines that you spell out in the Terms of Use. Users must follow your terms to access, use, and interact with your software or service.

Limiting Your Exposure

No matter how long you’ve been in business, users invariably find a way of surprising you with a confounding use of your software that you may never have anticipated. It’s baffling how these corner use cases often become the most litigious in their demands or claims when your software fails to continue meeting their needs.

A potential scenario follows. Your small business lead platform quietly becomes the default CRM for a statewide real estate agency that can no longer access closing contracts when your servers are offline for unscheduled maintenance. All of their real estate closings have to be rescheduled, loan rates are no longer valid, and the buyers are looking for blood.

While this may seem unreasonable in reliance, your terms of use can also limit the liability for your business for claims that may be filed by the user of the software in ways that the business could never have anticipated. A limitation of liability clause can easily set the maximum exposure for your business to the license fees paid by the user.

Your State, Your Laws

While electronic distribution over the internet or app stores lets you distribute your software offering far and wide, the last thing that you want for your business is to be dragged into court in some unfamiliar jurisdiction, with unanticipated state or country laws you are now subject to.  You may strategically use your Terms of Use to contractually set out venue requirement in your home state and country and designate the governing law to be used in the event of a legal issue arising.

It may also be preferable for your business to require arbitration proceedings for any legal issue that arises with your users, rather than allow for litigation, as a cost saving measure.

Rights, Rights, Baby

For many software and service offerings, the information received from users (i.e., photos, written content, reviews, purchase transactions, behavioral tracking, and other data) serves as an essential element of your value proposition. But have you properly secured the right to the use of this information? For creative material, the copyright vests in the author and you will need to ensure you have been granted the right to the use of this material. Your Terms of Use is the vehicle to obtain a license to the use of any intellectual property that a user provides on your platform.

Terms of Use can allow a license to any IP a user provides on your platform.

Oftentimes, platforms with user-generated content tend to allow users to retain ownership to their content, but take a very broad license for the use of the material. This heavy-handed approach can cause customer satisfaction issues, as evidenced by the backlash Facebook and other content sharing sites have experienced when they expanded their rights to the user content. This license needs to be crafted for your specific business requirements to secure the rights you legitimately need to fulfill your platform objectives.

This information collection also raises the issue of privacy rights that is a topic in its own right and addressed in a separate article covering the usage of Privacy Policies.

User Generated Headaches

Many platforms allow for users to create content that is visible to other users on the platform or publicly. Often times this user generated content includes the ability for users to upload photos, audio, or video to make the content more engaging and attractive. The viral user video that got all the press for your platform? Turns out it included clips from Game of Thrones and HBO isn’t happy about the copyright infringement.

DMCA can provide a defense against user copyright infringement liability

Fortunately, you can provide a defense for your business from copyright violations your users may create by virtue of complying with the Digital Millennium Copyright Act (“DMCA”). The DMCA helps protect businesses and apps from having legal liability for any copyright infringement that takes place due to the actions of its users, if they follow the procedures required. While the DMCA is a United States law, other countries around the world have laws regarding copyright infringement.

In order to comply with the requirements of the DMCA defense to infringement, your Terms of Use need to include (a) clause that states you will take down/remove any material that turns out to be copyrighted if the violation is brought to your attention, (b) provide a method by which the third-party copyright owner can report a copyright violation, and (c) have a policy in place for responding to take down notices for violating material reported.

Unlawful Content

In addition to the copyright issues from user generated content, your business can still run afoul of content considered unlawful in any number of jurisdictions around the world. Many jurisdictions worldwide have laws restricting material that is considered hate speech, inflammatory, child pornography, graphic violence, depictions of abuse, and other material considered unlawful content. These interpretations vary widely in their scope and breadth.

Your Terms of Use can address this issue through a relatively straightforward clause restricting any unlawful content and stating your policy of removal of any such offending content upon review.

Summary

Hopefully, you have developed an appreciation for the benefits and risk mitigation measures springing from having a comprehensive Terms of Use tailored to your specific business requirements.

While not required by law, one of the greatest benefits to having an effective Terms of Use for your business is the intangible one from having clarity of your users on their expectations and responsibilities in using your software and services and will pay dividends in customer satisfaction.

You can learn more about terms of use and intellectual property protection by visiting this Intellectual Property Introduction page.

Feel free to contact Feras Mousilli at Lloyd Mousilli, LLC if you would like to discuss your terms of use strategy.

The post Coming to Terms – Why Terms of Use are Critical for Your Company appeared first on ReadWrite.

Notice to the World

Additionally, registration provides notice to everyone in the world that you own the copyright, making it more difficult for infringers to argue that they infringed “innocently” or “unknowingly.” This makes a huge difference in the amount of money that you may recover in an action against a bad actor.

Statutory Damages

When someone infringes your copyright you are entitled to “actual damages” and “profits of the infringer that are attributable to the infringement” per the law. Proof of these forms of damages are highly subjective and often makes pursuing a legal remedy difficult if there is not a registration.

However, a copyright registrant has the option to elect statutory damages in lieu of actual damages, which makes the calculations very simple and straight-forward. Statutory damages ranges from between $750 to $30,000 per work and can even go up to $150,000 per work if the infringement can be proven to have been willful.  Additionally, as a holder of a registered copyright, you may also be awarded attorney’s fees and court costs.

Ability to License or Assign

Registration of a copyright makes it easier to transfer or assign rights in your copyrighted materials. This is critical in some industries if you intend to sell or license your work for royalties or other fees. Think of authors who write a book and wish to publish it or musicians who record music and wish to distribute their works on Spotify, YouTube, etc.

Copyright Registration Process

While anyone can technically find the forms on theU.S. Copyright Office website and submit the application themselves, the process for registration of a copyright is usually handled by experienced IP attorneys, given the complexities of the registration process with the U.S. Copyright Office, part of the Library of Congress, as the official registrar of U.S. Copyrights.

Registration Costs

The cost to register a copyright for a work varies on the filing timing- if the registration is needed within a few days, there is an expedited fee for several hundred dollars.  Given the complexities of the law and the ability of defense lawyers in copyright actions to invalidate registrations that contain even the slightest of errors, it is recommended that you seek assistance from an experienced attorney to register your copyrights.

Deadlines for Registration

You can learn more about copyrights and intellectual property protection by visiting this Intellectual Property Introduction page.

Feel free to contact Feras Mousilli at Lloyd Mousilli, LLC if you would like to discuss your copyright strategy.

The post Why Your Business Needs Copyrights appeared first on ReadWrite.

As a startup one of your most important assets is your brand and that brand is usually embodied in your company name and logo. The valuable time that you invested in coming up with just the right creative name and developing the branding and marketing around that company name is impossible to measure. After creating signage, letterhead, and advertising materials the last thing that you want to learn is that another company has sent you a cease and desist letter to stop using your company name.

This costly mistake can be avoided by taking proactive steps on the front end to ensure that you have all the rights to use the name you choose through trademark searches and registration.

With this in mind we offer the following guidelines for trademark protection for your startup. This is a brief but critical overview of what trademark rights startups should protect and, most importantly, how.

What Should You Trademark?

Often startups have no idea what should be protected by trademark registration, since it extends far beyond just your company name. Here are a few of the items that you should consider seeking trademark protection for your startup.

Company Name

First, a small business should always protect its company name. Your company’s name is how consumers, your customers, find you and your goods or services (e.g., Nike, Amazon, Apple, McDonald’s, etc.). Without protection a competitor can open shop under a highly similar corporate name and siphon away business from you by confusing your customers as to the business they are patronizing.

Product Names

Like your company name, consumers also locate your goods and services through your product names. As such, if you provide a product or a service under a particular name you must also protect the same to avoid competitors from using like names on their goods and services (e.g., iPhone, Wii, Explorer).

Logos

In addition, it is not only the names of products that should be protected but logos as well. The Nike Swoosh, the Adidas three stripes, and, of course, Apple’s now iconic apple with a bite are all examples of logos that serve as trademarks.

Advertising & Marketing Slogans

If you use a particular advertising slogan in connection with the promotion of your goods and services these should also be protected as a trademark. Think of

• McDonalds – “I’m Lovin’ It”
• KFC – “Finger Lickin’ Good”
• Nike – “Just Do It”
• Kit Kat – “Have a Break, Have a Kit Kat”
• Heinz – “Beanz Meanz Heinz”
• Skittles – “Taste the Rainbow”
• Rice Krispies – “Snap! Crackle! Pop!”

Benefits of Trademark Registration

Often startups wonder if trademarking is worth the cost and efforts at the early stages. In addition to the potential savings of avoiding a costly rebranding after learning that the name you have been using is trademarked by another company that has sent you a cease and desist letter, here are a few of the benefits of having a trademark registration for your startup.

Deterrence

Having your trademark registered with the U.S. Patent and Trademark Office makes them easier to uncover by those doing trademark searches to see if their own trademark is available to be registered. This, in turn, helps to prevent the adoption of confusingly similar marks by third parties who may not choose a specific trademark similar to yours if they see your trademark is already registered with the U.S. Patent and Trademark Office.

Registration Symbol ®

Only trademarks that have been registered with the U.S. Patent and Trademark Office have the authorization to use the® symbol in their advertising and marketing. The right to use the ® symbol in connection with your trademark which, in turn, also deters potential infringers from adopting or using a similar trademark to yours. It is also a great way to communicate that your brand is legitimate and valuable in a crowded field of imposters and cheap knock off brands.

Damages

Unfortunately it is a reality that we often have to resort to filing lawsuits to enforce trademarks against infringers that don’t respond to cease and desist letters. When your trademark is registered it increases the type of monetary damages you can demand in a lawsuit if it is later infringed upon such as the ability to recover lost profits associated with the infringement including the possibility of receiving treble damages in certain circumstances as well as recovering attorneys fees. Essentially, having a trademark registration really pays for itself multiple times over.

Block Importation of Infringing Goods

If your trademark is used in connection with goods this is a key factor. Once registered your trademark registration can be provided to the U.S. Customs and Border Protection that will block the importation of any goods into the United States bearing a trademark that infringes upon yours.

Takedown Notices

In this digital commerce age where many brands are distributed in online marketplaces like Amazon and eBay, one of the most powerful weapons that you have against counter-fitters and unauthorized distributors is their infringing use of your registered trademarks. With a trademark registration, it is relatively straightforward to provide notice to these online marketplaces to remove the infringing listings in the quickest fashion possible.

How to Protect Your Trademark

1. Check if Your Name is Available.

If you have yet to begin use of your product or service name it is imperative that you research to see if it is available. A properly conducted research report will let you know if the name you seek is available to be registered before you incur the expense of the non-refundable government filing fees required for registration. Also, a research report will ensure you are not adopting and using a name that is infringing upon another’s trademark. If this occurs, you could be forced to give up use of your name and even pay damages to the entity you have infringed upon, even if done innocently. A research report will avoid these issues and make sure your name is available to use with minimal risk.

You should be leery of  any “free” trademark searches. Recall the old adage that you always get what you pay for. The “free” trademark searches are largely marketing ploys that do not provide the quality of search a trademark holder needs to determine whether their trademark is available for registration. As such, they may inform you your name is available to get you to use their trademark registration services when, in fact, their search algorithms fail to discover and advise you of actual trademarks you will be infringing upon if you begin use of your trademark. If this happens, your “free” trademark searches can be very expensive in the long run.

2. Register Your Trademark.

Once you have determined your desired name is available to trademark you should immediately apply to register it with the U.S. Patent and Trademark Office. Since trademark rights can be acquired either when you first use your trademark or first to file for an intent to use the same, it is imperative you get a trademark application on file with the USPTO as soon as possible to secure your rights in the trademark before someone else does.

3. Monitor For Infringement.

Now that you have a trademark you need to make sure that no one else adopts and begins use of a confusingly similar trademark. Trademark infringement costs businesses hundreds of millions of dollars each year in lost revenue. Even if a competitor begins use of a similar, albeit not identical, trademark to yours it can still funnel customers away from your business. In essence, competitors create confusion between your and their goods and services by adopting a similar trademark to yours. They then use the good will you have created in your trademark through your marketing and otherwise to steal your customers through use of their infringing trademark.

To stop this before you notice a decline in business regularly monitor your trademark and others’ use of similar trademarks by watching trademark filings before the U.S. Patent and Trademark Office as well as online and through other traditional means.

There are a number of solutions for monitoring online use of your trademark. Seek the advice of a trademark attorney on options available to automate this monitoring process.

4. Police Your Trademark.

Once infringement of your trademark is discovered you must act quickly to stop the same. There are numerous ways to enforce your trademark depending upon how it is being infringed upon. For instance, if a competitor has registered and is using a domain name that is similar to your trademark, a domain name dispute may be the right avenue for you. If a competitor is simply using a similar trademark on their web site to yours than sending them a cease and desist letter or possibly suing them in court may be the best option. Or if they have applied to register a confusingly similar trademark with the U.S. Patent and Trademark Office you can oppose the registration of the trademark through several different means.

Of note, enforcement can be tricky as there are many pitfalls associated with determining first use of a trademark to ensure you are not enforcing against someone who may actually have acquired rights in their trademark before you. As such, seeking the advice of trademark counsel specializing in enforcement is always advised.

Final Thoughts

For many businesses, their brand is their most valuable asset. Through a few judicious steps in seeking trademark protection, monitoring use by others, and policing infringement, you can ensure that your company brand is secured and flourishes with the growth of your business. You can learn more about trademarks and intellectual property protection by visiting this Intellectual Property Introduction.

Feel free to contact Feras Mousilli at Lloyd Mousilli, LLC if you would like to discuss your trademark strategy.

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