Trademarks Containing Generic Words Can Be Registered

By Lum Law Group 0

On Tuesday June 30, 2020, the Supreme Court approved the trademark registration of “Booking.com” (Opinion of the Court), a generic term which was ineligible for trademark protection in the past. Booking.com had filed to register its domain name at the US Patent and Trademark Office. The office initially denied the registration, arguing that generic names are not eligible for trademark protection. Booking.com’s victory on Tuesday means the trademarks containing generic words can be registered in the future.

Considering trademarking a generic term for your business?

Contact us at 626-795-8886. Our attorney A. Justin Lum, Esq will help you.

when small business owners need to lawyer up

By Jessica Suotmaa 0

If you’re thinking about starting a small business, or perhaps you’re already the owner of one, hiring an attorney may not have crossed your mind. Perhaps you’re worried about the stereotype of how expensive attorneys can be, or maybe you’re a capable do-it-yourself person who doesn’t need help. Either way, this article will give a brief introduction on when and why small business owners may want to hire a lawyer.

1. Forming a Company

When thinking about forming a company, the best time to consult an attorney is before you register it. You don’t necessarily need a lawyer to fill out and file the paperwork for you, but for the tax and legal purposes, you would want to consult an attorney about which type of company structure will fit your business best.  An experienced attorney can tell you whether that non-profit organization designation is possible. A lawyer can help you review your business plan to determine whether you should form a limited liability company or corporation.  If you’re not sure what the differences and legal consequences for the different types of entities are, you may want to ask a lawyer.

We can tell you if that partnership should be a limited liability partnership. We can also tell you if you should continue with your sole proprietorship, or if you should file for s-corporation status.  Having an experienced attorney assess your business plan before you start your business can save you many headaches later down the road.

2. Drafting Contracts

Written contracts clarify what you’re agreeing on and with whom. Since contracts are legally binding, they offer guarantees to small business owners that will prevent future losses. As such, every small business owner should either hire an attorney to draft clear and concise contracts for their business partners, vendors, employees etc.

At the very least, every small business owner should hire an attorney to review a contract that has been offered to you.  There are many benefits to hiring an attorney to review your contract.  Firstly, it is usually less costly than hiring an attorney to draft a contract on your behalf as it often takes less time.  Secondly, the attorney may come up with questions that you will need to ask the other party, thus improving your contract.  Finally, the attorney can make additions or point out weaknesses that you may or may not want to address with the other party.

3. Handling Employee Issues

Assuming you heeded our contract advice and properly executed contracts for any and all business partners and employees, you shouldn’t have too many issues regarding termination. However, there could still be issues regarding payments, unlawful termination, discrimination, or harassment.  Consulting with an attorney can prevent further losses, and ensure that you are aware of the current employee rights.

4. Licensing

No matter the size of your business, you must follow government licensing regulations.  Depending on your location and industry, you may have to adhere to city, county, state, or federal regulations. By consulting an attorney experienced in your industry and located in your area, you can be prepare in advance for the paperwork and fee requirements for your business license.

5. Registering Intellectual Property

If your business has a special name or logo, you may want to register a trademark to protect your brand. If you don’t, you may find that similar business open with similar names or familiar colors and logos as yours, stealing your customers. Or perhaps you are creative and have creations that need to copyright protection. A good intellectual property attorney will assess your business plan, goods, and branding to determine what is the best strategy for protecting your intellectual property, brand, and business.

 

The issues listed above are just the top five issues on which small business owners should consult an attorney. You may have an issue that has not been listed, or a question you’re not sure needs an attorney. Feel free to comment below, or contact one of our experienced business attorneys for further assistance.

mompreneur asks

By Jessica Suotmaa 0

A “Mompreneur”, a mom who is also an entrepreneur, recently asked how she can lock in her business name so that no one else can use it. She is in the early stages of starting her business and isn’t ready to have a sign on the door or even a website.  She had many, many questions regarding her logo, her business name, other business names and logos, which basically came down to how she can create the brand she’s visualized without legal ramifications.

While answering her questions, we realized these may be common questions that start up entrepreneurs and new small business owners ask.  We decided to share both her questions and our answers in this blog for your reference.

Note: Our Mompreneur’s anonymity is fully protected.

Question: I know what my business will be about. I have a name picked out and two design ideas but I wonder:

  1. Does it make a difference that the name I want is used in a different industry? Can I still use it?

  2. One of the designs looks similar to a design used by a foreign company overseas. Can I still use it?

  3. How can I lock in my business name so that no one else can use it?

  4. I’m not ready to have a website yet, but I want to set up my Facebook Business Page. How can I reserve the website name so that others can’t use it?

Answer: It sounds like you are well on your way to starting your business!  Startups require much thought and it’s great that you’ve started on the online branding already.  However, the order in which branding occurs is important for legal purposes.

To properly answer your question on the business name, we would need more details, such as the name you have in mind and the businesses and industries of said businesses that already use your chosen name.  There are many ways to answer this question and to give you an idea of what the different ways might be, here’s what we would typically ask:

  • Have you registered a business entity for your business idea? Do you plan to? Do you plan on using your brand name as the business entity name?

    • You can go on California’s Secretary of State website to look up your chosen business name and see what businesses (if any) have already registered your chosen business name in the State.
    • The State will not allow you to register the same business name as an existing active business entity, even if in different industries.

  • If not, do you plan on registering a trade name or “doing business as” (DBA) fictitious business name?

  • Would you like to trademark your business name?

    • If you really want to protect your brand, then we would recommend trademarking your business name and logo.  Start by searching the trademark database to see if your chosen business name is already in use.
    • You can trademark your desired business name even if another business is already using that name, provided they are in a different industry with dissimilar products/services.
    • You should have begun using your desired trademarks in commerce prior to registering.
    • A trademark will prevent others from using your registered business name, or names and logos that are similar to your registered trademarks. If it does not, then at least you will have legal “weapons” to protect your intellectual property.

Once you have the strategy down for your business, then start searching website domain names and finishing up that Facebook Business Page!

If you need assistance with any of the steps above, a good business attorney specializing in small businesses and startups can help analyze your specific needs and provide insight and help. Contact one of our experienced business attorneys!

 

creative people need to care about their intellectual property

By Jessica Suotmaa 1

Risk of loss

There is always the risk you will lose the rights to your creations.

With patents, your invention can become a public invention with no exclusive usage rights.

With trademarks, your mark can become generic. In fact, “Google” might lose its trademark because they argue that the verb, “to google something”, is now part of the English language and culture. Other examples of trademarks that have become generic include: Aspirin, Dry Ice, Laundromat, Kerosene, Zipper, Heroin.  Once a trademark becomes generic is possible to lose your right to sue upon perceived infringement.

With copyrights, it is also possible to lose the right to sue.

 

 

Contact Lum Law Group and find out how to protect your intellectual property!

Protect your innovation!

By Jessica Suotmaa 2

Intellectual property refers to creations of the intellect for which a monopoly is assigned to designated owners by law. Intellectual property rights are the rights granted to the creators of Intellectual property and include:

  • trademarks,
  • copyright,
  • patents,
  • industrial design rights, and
  • in some jurisdictions trade secrets.
  • Artistic works including music and literature,
  • as well as discoveries,
  • inventions,
  • words,
  • phrases,
  • symbols, and
  • designs, can all be protected as intellectual property.

Intellectual property has a very broad scope and thus it can be said that Intellectual property rights include patents, copyright, industrial design rights, trademarks, plant variety rights, trade dress, geographical indications, and in some jurisdictions trade secrets. There are also more specialized or derived varieties of sui generis exclusive rights, such as circuit design rights (called mask work rights in the US) and supplementary protection certificates for pharmaceutical products (after the expiry of a patent protecting them) and database rights (in European law).

All businesses have intellectual property, regardless of their size or sector.

Thus, it goes without saying that all businesses have intellectual property, regardless of their size or sector. This could be the name of your business, copyright, designs, patents, and trademarks. Your Intellectual property is likely to be a valuable asset. Securing and protecting it could be essential to your business’ future success. In the other words, Intellectual property often translates directly to monetary gain. If you don’t know how to adequately protect your intellectual property, your business is at risk.

Intellectual property often translates directly to monetary gain.

The importance of protecting your Intellectual property can be more easily understood as follows: if you do not protect it, you will have to risk the losing one of the following:

  1. Branding: Establishing a strong brand is pivotal to business success. Protecting that brand is equally important. The name of your company and its logo are part of the branding that sets your business apart. Elements of your brand, from your company name to your logo can be subsumed and eroded. This can damage perceptions in the market of your quality, products, and reputation.
  2. Products: Unique investments that you’ve made developing technologies may be compromised; only through proper patenting, etc. can you ensure that you control and can market the products you develop.
  3. Ideas and thought leadership: Protecting original contributions to the thinking around your industry can be an important step to establishing your company as a market leader. Copyrights ensure proper attribution of your materials.

As such, there is no doubt that, in a business, intellectual property is everywhere. The name that you choose will be your trademark, even the smallest new process created within your firm may be patentable, and much of the creative work of your employees will be protected by copyright. Protecting your intellectual property rights is protecting your business, so you must claim your intellectual property rights before it’s too late.

Have questions? Talk to an experienced intellectual property attorney today! Contact us.

Example of trademark

By Jessica Suotmaa 0

Definition of a Trademark

The term “trademark” includes any word, name, symbol, or device, or any combination of the above that is

  • used by a person, or
  • which a person has a true intention of using in commerce and applies to register on the principal registry established by this chapter

(15 USC, Section 1127)

Legal professionals refer to trademarks, registered trademarks, and service marks as “marks”.

What are Trademark symbols?

Trademark symbols are notices of trademark ownership. When you see a word, symbol, or picture with a trademark symbol next to it, you know it has been registered in the federal database.

The three types of symbols are:

  1. Registered Mark – R – e.g. Nike’s “Just do it®” has been registered with the U.S. government, so Nike can use the ® symbol with its trademarks.
  2. Trademark – TM – e.g. Starbucks used ™ on their logo while waiting for their redesigned trademark to be approved
  3. Service Mark – SM – e.g. United Airlines’ catchphrase “Fly the Friendly Skies℠” is a good example of a company that provides services using a “service mark”

It’s important to note that companies/brands cannot use the ® symbol until their trademark registration application has been approved by the U.S. government. Pending trademarks should use the ™ symbol.

Ownership and Registration

  • Trademark Ownership – Created by use in commerce.  Ownership is maintained wherever the mark is used in commerce so long as it is used in commerce.
  • Federal Registration – Filed with USPTO – Term of a federally registered trademark – Registration is valid for ten years and is renewable before the expiration of the term.
  • State Registration – File with the California Secretary of State.

Why you should register a Trademark

No Registration – Can only prevent competitors from using a similar mark in a state, or part of state where your trademark was used first.  Governed by state unfair competition laws.  Damages limited to actual damages.

Federal Registration – Can prevent competitors from using a similar mark in all 50 states if competitor did not use the mark before you used your trademark, or before you registered your trademark.  Possible treble damages, attorneys fees and other remedies.  Possible injunctive relief.  Case is in federal court where the infringer has greater difficulty delaying case.

State Registration – Additional evidence of use (instate)

Who should register a trademark?

If you are forward thinking and want to protect your trademark before someone else realizes what a great trademark it is, or a creator who wants to protect their original work/art before someone starts copying it, we can help you protect your intellectual property.

If you’ve already registered intellectual property in the past, but you believe a competitor has infringed upon your intellectual property, we can help you litigate your case.

Have more questions about trademarks? Read more on how we can help your business secure your intellectual property!

IP is the sword and shield of your business

By Jessica Suotmaa 0

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols: names, images, and designs used in commerce.

IP is divided into two categories:

  1. Industrial property, which includes…
    1. inventions (patents),
    2. trademarks,
    3. industrial designs, and
    4. geographic indications of source;
  2. Copyright, which includes…
    1. literary and artistic works, such as
      1. novels,
      2. poems,
      3. plays,
      4. films,
      5. musical works,
      6. artistic works, such as
        1. drawings,
        2. paintings,
        3. photographs and
        4. sculptures,
    2. architectural designs.

Think of intellectual property as the “sword and shield” against your business competitors. By registering your intellectual property, you’re ensuring your “enemies” cannot take your weapons from you or copy your weapon technology.

 

More on how we can help your business secure your intellectual property!