Monday, May 13, 2019

Should I trademark my upcoming business name?

No.
Your business name is the legal name of your business. This is not your brand.
While your brand might be the same or similar to your business name, it doesn’t have to be.
I’ve seen people trademark business names with the “inc.” and all, and this is just so wrong.
Your trademarks protect a brand that you attach to goods (or a service mark used in providing services), and the trademark identifies your business as the source of those goods.
A registered trademark protects your brand by preventing others from using confusingly similar trademarks.
I caution entrepreneurs to establish their company and to register it with their secretary of state before filing for a trademark registration.
Then, the company, a separate legal entity, can file for and own its trademark (not the individual entrepreneur).
If you have a bona fide intent to use a trademark or service mark, you may file an application to register the trademark or service mark after you have formed your company or corporation that will own the trademark or service mark.
Also, I caution entrepreneurs to conduct due diligence on their marks. Check to see what your competitors are doing. Make sure that your marks are distinctive (i.e. different than anybody else’s marks) before using or registering the marks.
If you’re interested in this topic. Check out my blog at iPscaling

Saturday, May 4, 2019

The Artist


A creative young artist had a new process for creating stunningly beautiful artwork. (I'll call her Victoria.)
Victoria was so passionate while telling the amazing story about how she discovered her new process for creating her pieces.
I could tell she was still surprised that a gallery agreed to show her first few pieces and ALL of them sold! "It's like a dream come true!" she bubbled.
Victoria wants to quit her day job and do what she loves full time, but her dad told her she should patent her idea if she's going to start a business around it.
"It's too late to patent your invention, but maybe there is another way to protect it,"  I said, as gently as I could.
"What do you mean?" Victoria asked, a troubled look descending on her face.
"You see, Victoria, you sold your first piece, using your new technique, more than one year ago."
I explain the decision by the Supreme Court of the United States, which was published January 2019. Any doubt about what the "on sale" provision in the America Invents Act (AIA) means was erased by this decision. 
"So, U.S. patent law bars patenting of an invention 'on sale' more than a year prior to the patent's earliest filing date, even if an inventor and a buyer agree to keep the process secret," I conclude.
"There's still a chance to protect your invention under trade secret law...," I add, hesitating at the quizzical look from Victoria.
"What do you mean?" she asks.
"If you take reasonable measures to keep your process secret, then state and federal law prevents others from misappropriating your 'trade secrets'," I said (using two fingers on each hand to provide air quotes around the words "trade secrets"). 
Victoria timidly shakes her head "no" while stating, "my studio was just featured in a lifestyle magazine ... it describes my technique."
She hands over a copy of the article, which she brought with her to show me how the process works.
Victoria was so certain she would get a patent. She didn't think she needed to keep anything secret.
Any artist could follow the "recipe" described in the article.
If only...    I meet far too many "Victorias" and "Victors" 
Please! Don't You Be One.
Own Your "Secret Sauce" BEFORE Sharing Your Recipe.
If your business provides value to your customers by being innovative and creative, then probably you have a Secret Sauce that needs to be protected.
Let me help you. It's what I do. It's MY secret sauce. I call it "iPscaling".

iPscaling

"iPscaling" helps entrepreneurs discover and protect their "secret sauce" before scaling up . 
iPscaling builds a hedge of protection around a company's "secret sauce" using intellectual property (IP).
What's your secret sauce?
Sometimes it's not what you think.






I've opened up some time to speak with innovative and creative entrepreneurs in the next week.
Why not jump on a FREE strategy call with me. You can book your strategy session today, using my convenient scheduler.

Wednesday, April 24, 2019

The Entrepreneur

The Entrepreneur
















I met an entrepreneur this past Friday. He started out in IT.

We got talking about his first startup.

Turns out he got a C&D letter from Facebook, because his new platform for creatives ended in the word "BOOK".

He called the attorney on the letter CERTAIN that it must be some simple mistake.

No consumer would be confused. After all, his startup's brand didn't sound or look anything like Facebook!

They couldn't possible exclude everyone from using the word "book" as part of a brand.

When the attorney for Facebook answered the phone, he got right to the point.

He said he had a $50 million budget for litigation, without having to go back and ask Facebook for approval,
and he asked what this entrepreneur's budget was...

My new friend was LUCKY!

Lucky?

Usually a C&D letter comes AFTER the startup is getting good traction in the marketplace.

Sometime, real, tangible success is just within an entrepreneur's grasp!

Then, BOOM!

The loss of momentum is the biggest COST!

He changed the startup's brand…
… and made it better and more distinctive.

So, yes, he was Lucky!

Have you ever had a similar experience?

Why not jump on a FREE strategy call with me. You can book your strategy session today, using my convenient scheduler.

Monday, March 4, 2019

Why Register Your Copyright

Oracle was awarded $36 million in copyright-related damages, $29 million in attorney’s fees, and $3.4 million in taxable costs in a case heard by the Supreme Court of the United States.

Why was it awarded fees and costs?

Oracle prevailed in a copyright infringement lawsuit for its registered copyrights.

Under copyright law, a copyright owner of a registered copyright may recover fees and certain costs (taxable costs) associated with enforcing its copyright against an infringer, if the registration was filed properly, within the time allotted.

This is super important reason for registering your copyrights.

Consider the escalating costs of attorneys' fees in IP litigation. 

It could cost you $200,000 in fees, easily, for even a simple copyright litigation.

Wouldn't it be great to have the infringer pay your lawyer's fees?

You'll want to make sure that your copyright in your "works of authorship" are properly registered within the time limits provided under the statute.

Want to know how?

Why not jump on a FREE strategy call with me. You can book your strategy session today, using my convenient scheduler.

Tuesday, December 11, 2018

Counterfeit Goods

What happens to a person that sells knock-offs of branded goods in the U.S.?
It's not good. It could mean felony jail time or steep fines for criminal counterfeiting of goods.
Knock-offs that copy trademarks or trade dress are called counterfeit goods under the Lanham Act, the federal law that governs trade dress, trademarks and service marks.
Counterfeiting is an act of making, distributing or selling lookalike goods or services bearing fake trademarks or service marks.
In a civil suit a brand owner can recover actual damages or statutory damages of not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.
Worse still, the "willful" counterfeiter may be liable for up to $2,000,000. That will put you out of business. 
Now, Canada and Mexico are going to join the U.S. in providing statutory damages for counterfeit goods as part of the USMCA trade agreement. 
To find out more, schedule a Strategy Call with me, Chris Paradies, using my automatic scheduler.

Wednesday, November 7, 2018

Online Hosts Do This Now!!

Do you allow anyone to post anything to your website?
Then, you need to take action now! Why?
The law has changed.
Under the Digital Millennium Copyright Act (DMCA), hosts of third party content are able to take advantage of a safe harbor only if the host registers and provides a take down policy for alleged infringing works posted to its website.
Specifically, you must comply with certain prerequisites to qualify for the safe harbor under section 512 of the DMCA.
You must register, designate and maintain a DMCA agent to receive and act on notices from copyright owners and their agents.
To register your agent, you must comply with the new electronic registration requirements no later than December 31, 2017.
Why wait?
Take action now before you forget.
Missed the deadline?  Do it NOW!

You Can Register Here: Register Now.

In addition, in order to take advantage of the safe harbor, you need to add a take down policy to the terms of use on your website, which includes:
  • Identify your designated DMCA Agent for receipt of notifications from third parties claiming copyright infringement;
  • Include a physical address, phone and email where notifications may be sent;
  • Establish a system for taking down or removing alleged infringing content; and
  • Respond within a reasonable time by taking down or removing alleged infringing content.
Make sure that you keep this contact information up to date.
Here is an example of a take down policy that you might include in your terms of use (“You” is a term defining anyone accessing the online content of your website or websites (“Website”) listed or otherwise referenced in your terms of use):

Take Down Policy

If You believe that any Website contains anything that infringed upon a copyright owned by You, then You, or your agent, may submit a notice pursuant to the Digital Millennium Copyright Act by providing our below identified agent all the following information in writing (“Notification Requirements”):
  • identification of the copyrighted work or works claimed to have been infringed; identification of the material claimed to be infringing that copyrighted work;
  • identification of the location of that material using URLs or similar information sufficient to permit us to locate that material on our Website or services;
  • a statement that you have a good faith belief that use of that material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
  • information permitting us to contact you, such as your address, telephone number and email address;
  • a statement that the information in the notification is accurate, and under penalty of perjury, that you are the owner, or are authorized to act on behalf of the owner of the copyright that is allegedly infringed; and
  • your physical or electronic signature.
You acknowledge that failing to comply with all of the Notification Requirements invalidates your notice and releases us from taking any action until we receive all of the Notification Requirements in a single notification.
Our Designated DMCA Agent
Agent Name:  _________________
Company Name: _______________________
Address: ___________________, ___________, _____-____
Email: __________________
Phone: _________________

Tuesday, October 9, 2018

Trademark Registrations Are Worthless?

I often tell clients of Paradies® law that a trademark starts out its life with no value and only becomes valuable as good will accrues with use the mark in commerce.

This usually starts a conversation about what I mean by this, and a good discussion of just what a trademark is and does follows.

Good will is a foreign concept to most clients, and many don't know that good will is an important intangible that can add value to a balance sheet.

Learning that the value associated with a trademark can increase (or decrease) as customers identify your company as the source of a certain quality of goods or services is an important step in understanding trademarks as IP.

How valuable?

The google brand has been valued at more than $150 billion.

In comparison, a newly registered trademark, which hasn't yet accrued any meaningful good will, has no value.
Why was this rule against freely assigning intent-to-use applications added to U.S. trademark law?

According to the court, the rule was added to “prohibit ‘trafficking’ in marks: the buying and selling of ‘inchoate’ marks which as yet have no real existence,” citing a treatise on trademark law, 3 McCarthy on Trademarks and Unfair Competition § 18:13 (4th ed.). 

Trademark law doesn’t let a person file an application for the purpose of selling it to someone else, in order to make a profit off of reserving a right in a trademark. 

Why? 

Trademark policy wants only people or companies with a real intent to use a mark in interstate commerce in the very near future to file intent-to-use applications. Many countries and most U.S. states do not allow a person or company to file a trademark application until the mark has been actually used in commerce. 

So, U.S. trademark law adopted an anti-trafficking rule, and violating the anti-trafficking rule "...voids the assignment as well as the underlying application and resulting registration,” as cited in an earlier case in California, Oculu, LLC v. Oculus VR, Inc., No. SACV-14-0196-DOC, 2015 WL 3619204, at *7 (C.D. Cal. June 8, 2015). 

This anti-trafficking policy and the reasoning of these courts fits with the statement that applications for trademark registration have no value, and a trademark develops value only as good will accrues with use of the mark. 

Accordingly, U.S. trademark law discourages someone from filing an intent-to-use application for a trademark just to resell it, because that would be unjust enrichment. 

Why not jump on a FREE strategy to discuss how trademarks can add value to your business. You can book your strategy session today, using my convenient scheduler.