MAINTAINING YOUR TRADEMARK

Preventing Expiration
After you have successfully gone through the procedure of attaining a federal trademark or servicemark, you will receive a Certificate of Registration from the U.S. Patent and Trademark office. To guarantee that the respective mark or marks are valid for your lifetime and the lifetimes of your beneficiaries, you must go through a number of very specific maintenance steps.

 It’s crucial to note that unlike a copyright or a patent, your mark will not expire unless you fail to complete the required maintenance filings with the U.S. Patent and Trademark Office. If you neglect to fulfill these filing requirements, your valuable registration will be canceled and your trademark or servicemark protection will then be lost.

So once you get your Certificate of Registration, remember the exact date of your registration. You will need to make sure you send in your first maintenance filing between the fifth and sixth anniversaries of this registration date.

Two declarations are needed to confirm the mark is currently in use:

1. “Declaration of Continuing Use”            Section 8 (Cost $100)

2. “Declaration of Incontestability”           Section 15 (Cost $200)

For the Section 8 declaration, you need to verify that the mark is being utilized with respect to the goods and/or services for which this protection is registered. If, however, the mark is not in use, you must provide a reason for why this inactivity should be excused.

In terms of the Section 15 declaration, you will be asked to attest to the fact that the mark has been in continuous use for at least five consecutive years from the registration date. Like the Section 8 declaration, you’ll need to confirm that your mark still reflects the goods and/or services for which it is registered.

If you miss this deadline, you will still have a six-month grace period to file the necessary information. But after that timeframe, your registration will be canceled and all benefits will be lost.

Similar to the first set of maintenance filings, you will be expected to send documentation on the tenth anniversary of your registration. Additionally, you are required to renew your registration every ten years thereafter.

Two declarations need to be filed at this time:

1. “Declaration of Continuing Use”  - Section 8 (Cost $100)

2. “Application for Renewal” declaration - Section 9 (Cost $400)

Again, these declarations require you to confirm that the mark is still being used. For the Section 8 declaration, you need to be prepared to corroborate that the mark is in use with respect to the goods/services for which the coverage is registered. If the mark is not currently in use, then you must demonstrate why this inaction is warranted.

Keep in mind that as a trademark owner, you aren’t permitted to maintain rights in a trademark that you’re no longer using. Furthermore, you must update your registrations at the time of any maintenance filings so that the U.S. Patent and Trademark Office has the latest information on your marks.

Using Your Certificate of Registration

Receiving the Certificate of Registration allows you to start using the ® designation in conjunction with your trademark. To clarify for some, the ™ designation is for trademarks that are in use, but not officially registered with the U.S. Patent and Trademark office.

Please be aware that in instances where your mark appears multiple times on the same object, you do not need to post the ® or ™ next to each trademark or servicemark. Although such repetitive posting is allowed, it’s generally expected that the correct designation is attached to only the most prominent display of the trademark on any item or page. As such, you are not required to make further postings, if you’ve already visually established your mark.

In Conclusion

There are certain ongoing procedures that need to be fulfilled in order to protect and maintain your trademarks and/or servicemarks, so you have the assurance that your company’s image will be continuously protected. In this way, if you ever discover that your brand has been stolen, you have the legal backing to make sure this infringer faces the appropriate consequences.

Enforcing Your Trademarks and Servicemarks

What do chapstick, a thermos and aspirin have in common? These iconic brands used to be protected by trademarks, but lost their legal rights over time. Unfortunately, the rightful owners of these brands were not aggressive enough in protecting their images. Now, the brand names that they created are used as generic terms in popular culture. So the original owners of these brands can no longer stop anyone from using their names. It’s too late.

Although I’ve provided some famous examples, the same type of trademark loss can occur with your brand if you’re not careful.  While it is extremely important to shield your image by obtaining trademarks and/or servicemarks, you can’t just stop there. The fact is, you always need to be on the lookout for any infringements. Quite honestly, the welfare of your business is at stake.

To give you a better understanding of what could happen if you don’t watch over your trademarks or servicemarks, there are three practical reasons for being vigilant:

·        Confusion in the marketplace – If another business, knowingly or unknowingly, starts using your image, consumers could become confused about your name. You may wind up missing out on potential revenue because clients accidentally turn to your competition, thinking they’re coming to you. So it’s critical that you always protect your name, your distinction in the marketplace, to eliminate the possibility of your brand getting blurred and the valuable distinction of your business product or service being lost. Furthermore, if you don’t take action in this scenario, you will eventually be seen from a legal standpoint as having abandoned your marks.

·        Dilution of your brand – If you become lax and don’t object to other businesses using your name or some aspect of your brand, you also run the risk of your image being diluted. The result is that your unique and distinct name won’t mean anything anymore because so many other businesses share it. This can and should be stopped before the potency of your name becomes meaningless in the marketplace.

·        Financial losses – If you don’t stand up for your marks, it’s very possible that other businesses could be financially benefiting from your advertising by poaching your potential customers. That’s because they’re openly using your name to make money.

The logical conclusion is that you need to be ready to enforce your trademarks and servicemarks at a moment’s notice. When you discover another business is ignoring your rights as the holder of these marks, then it’s time to take action.

Steps to Take

Once you discover that someone has used your name, the response is very simple: Immediately contact an intellectual property attorney in order to issue a cease and desist letter to the infringing party. The purpose of this letter is to give this individual or company notice that what they’re doing violates your intellectual property rights and constitutes an illegal use of your brand.

Included with this letter, your attorney will provide a copy of your pending or existing marks to supply undeniable proof of your brand ownership. Furthermore, the letter will make clear that the offender needs to stop using your mark without delay.

If this violation persists after a five-day period, then it’s time to go to the next level. Your attorney will promptly seek legal action to enforce your rights in either state or federal court under a trademark or servicemark infringement claim. This process involves getting a restraining order, which stops the entity from stealing your mark.

Secondly, your attorney will seek a court order that will compel the infringing business to divulge all of the financial gains that it received from illegally using your brand. Once this information is disclosed, you will then seek a court order that awards to your business, all of the profits made by the infringing party, because these profits rightfully belong to your business. And as a final kicker, you are entitled to seek reimbursement from the infringing party for all of the attorney fees that were caused by this unlawful infringement.

In Conclusion

By taking the time and investing the money to obtain trademarks and/or servicemarks, the image of your business is protected. But, the reality is that a clever company can find ways to benefit from your brand, even if you’re the legal owner. For this reason, I recommend that you periodically perform a search online to determine if anyone is illegally using your intellectual property. If you discover an infringement, contact your intellectual property attorney.

 

 

 

Protecting Your Company's Image: An Overview

You’ve developed a successful business with an expanding client base. Everything seems to be going in the right direction. This is a wonderful position to be in and I congratulate you for creating such a prosperous enterprise. Building and maintaining a business is tough.

But, up to this point, you’ve probably only focused on paying your bills and marketing your services. And while these day-to-day tasks are key to the company’s well-being, you must not overlook the importance of safeguarding your image, especially as your business starts to grow.

Now, when I refer to “safeguarding your image,” I am focusing on protecting your brand. And since you’ve established yourself in the marketplace, securing your company’s brand is not a luxury. It’s a necessity. Indeed, without the proper protections in place to protect your brand, it’s quite possible that everything you’ve generated could be taken away from you without any notice. That’s why I am dedicating this blog to the best way you can preserve the brand of your business.

In Practical Terms

To help my clients understand the importance of protecting  their brand, I often ask a question that may come across as shocking to some:  if an individual were to come along and steal your entire business from you, how much ransom would you pay to get it back? Now, that might sound like a hypothetical situation. However, it happens all the time.

So, for this reason, I always advise business owners to obtain trademarks and servicemarks to protect the intellectual property associated with their companies. Generally, you will recall from my earlier blogs that a trademark is used to protect a product and a servicemark is used to protect for a business’ name.

The protection you receive from either trademarks or servicemarks should be used in the following three situations:

·        If you have something that can be seen such as a logo or a design, it should be protected by a trademark or a servicemark.

·        If you have an item that can be heard or said such as a slogan or a tagline, it should be protected by a trademark or a servicemark.

·        If you own something that someone else might try to hijack like a domain name, it should be protected by a trademark or a servicemark.

Whether you wish to protect these elements on the state or the federal level, trademarks and servicemarks do the trick. And the little “TM” or “SM” next to your brand name or design will give notice to the world that you have the absolute and exclusive right to this valuable intellectual property. This will serve as a serious warning to anyone who might otherwise be considering  stealing the brand that represents your business. For a reasonable fee (approximately $10), you can ensure your image is sheltered in Illinois. If you wish to secure the same protection in another state in which you currently do business or expect to do business in the future, you can easily do so by registering for this trademark or servicemark with the Secretary of State of that other state. If you wish to have protection of your brand on a national level and be protected in all fifty states, you will need to apply for a federal trademark or servicemark with the U.S. Patent and Trademark Office. While the process is a bit more lengthy (6-8 months) and more expensive (approximately $2,500), it is worth the extra time and expense if your business brand is being exposed to the public on a national level.

Additionally, by going through the registration process, you may find out if your brand is already in use by another business. If so, you can consider your options for modifying your brand so as to avoid an infringement claim or for contacting the owner of the trademark/servicemark to discuss how you may license or purchase the trademark/servicemark and thereby preserve your brand without having to alter it. In this way, you’ll not only retain the investment in all of your company’s marketing materials, you’ll have the power to stop someone else from pirating your brand in the future.

Coming Soon

Next time, I will go into more depth about the differences between a trademark and a servicemark. I’ll also briefly discuss the protection of a copyright and I will provide you with essential information about the process of obtaining these protections. Plus, whether you’re looking for state or federal coverage of your brand, I’ll discuss the steps involved in making sure another business owner is unable to seize your image.

Worker Classification: Part Two

In my last post, I explained the critical importance of properly classifying your workers as either employees or independent contractors. Indeed, I warned you that if you do not classify your workers in accordance with state and federal guidelines, your staff incorrectly, your business could be subject to hefty penalties and retroactive interest.
Since it is so important to understand how the State of Illinois and the federal government evaluate the status of a worker, I’d like to discuss this subject in greater detail. That way, you’ll become more familiar with the evaluation factors, so you can better protect your business.

Illinois’ Factors

As I’ve previously mentioned, the Illinois courts rely on a ten factor “right to control” test. This tool enables the state to conclude whether or not your workers are employees or independent contractors. The difference between the two types of workers matters from a governmental perspective for purposes of employment benefits and taxation.
These ten factors cover a wide range of circumstances. Most importantly, Illinois wants to know how closely you manage your worker. For instance, does this individual receive training, materials and direction from you? If so, it is likely that the state will conclude that you “control” the worker and therefore, this worker is properly classified as a “controlled” employee rather than an “uncontrolled” independent contractor.

Other aspects include:

·        Worker engagement – Illinois will look at whether or not the worker performs duties for other employers. If he is exclusively employed by your business and is not available for hire, then the state will see him as an employee.

·        Worker skill – The state evaluates the amount of skill needed to do the work in a particular company. In general, if more expertise is necessary, the state tends to classify the worker as an independent contractor.

·        Employment length – The period of time a worker has offered you services can make all the difference to the Illinois courts. If this individual has worked in your company for a short time, she’ll usually be viewed as an independent contractor. Conversely, a worker who has a longer history with your business will probably be recognized as an employee.

·        Payment method - If you pay your workers on a project-by-project basis, chances are that the state will see these individuals as independent contractors. On the other hand, salaried or hourly workers are more likely to be categorized as employees by Illinois.

·        Integral or ancillary – An integral worker is considered part of the company’s regular business. The fact that he performs a key function in the business, it’s probable the courts will look at him as an employee. At the other end of the spectrum is the ancillary worker, who is an occasional contributor to the company and not involved in its operations on a consistent basis. The ancillary worker will likely be viewed as an independent contractor.

In general, the underlying theme to remember is how much control the business exerts over its staff members.

Similar to the state’s court system, the Illinois Unemployment Insurance Act examines the amount of power you have over your workers in order to determine the correct categorization. But instead of ten factors, there are only three. Furthermore, all three of these circumstances must be met for a worker to be recognized as an independent contractor. Otherwise, the worker is deemed to be an employee.

Below are the factors this statute systematically applies:

·        The business does not control the worker’s performance.

·        The service cannot take place during the normal course of business or at the physical location of the company.

·        The worker has to offer an occupation or profession that’s separate from your business.

Again, control is the key. This means that the less supervision you have over a worker, the better the argument for classifying this individual as an independent contractor.

The Internal Revenue Service’s Factors

Like the state of Illinois, the Internal Revenue Service (IRS) also evaluates employment status based on the right to control. Therefore, if you direct, train and integrate workers’ services into your business operation, for example, it’s reasonable to expect the IRS to define your staff as employees rather than independent contractors. This means that you’ll be required to pay certain taxes and possible penalties, if you have misclassified your workers.

While the amount of regulation over your workers is a critical element of the federal government’s final judgment, other components are also involved to generate this decision. In total, the IRS relies on twenty different factors. These essential circumstances include:

·        Reports – If a business requires written or oral reports as part of the job, then the IRS could assume the worker is an employee. This consistent expectation suggests the worker is regularly supervised, which supports the government’s theory of permanent employment.

·        Payment of expenses – If a company covers workers’ travel or business expenses, the government may conclude they are employees. That’s because the payment is interpreted as control over the workers.

·        Realization of profit or loss – If workers can experience a profit or loss as a result of providing services to a business, they will be probably be viewed as independent contractors.

·        Working for numerous companies – If a worker provides products or services to several unrelated businesses, it’s likely the IRS will see him as an independent contractor.

·        Right to discharge – If a business has the right to discharge its workers, then the IRS might regard these individuals as employees. An independent contractor is protected from being fired unless he does not live up to contract specifications.

·        Right to terminate – If a worker can terminate her employment without any liability, then the federal government will generally look at this individual as an employee.

Need More Help?

Worker classification encompasses many detailed factors. So it’s understandable to feel overwhelmed by the numerous elements. But as a small business owner, you need to be aware that if you group your workers incorrectly, you could face harsh tax consequences.

However, my team and I at DregerLaw are well-versed in all of the factors the state and federal governments use to determine worker status. Let us make sure you’ve designated your staff correctly.

THE WAVEHOOKS STORY

To illustrate the extreme importance of NDAs and restrictive covenants, a client of mine has consented for me to share in this blog, his company’s amazing growth experience, due in great part to his ability to confidently bring his product to market without risk that his success would be stolen from him.

 

Michael Aylesworth is the owner of ImagiGadget, Inc. and the inventor of a very marketable product called WaveHooks. The concept is simple. WaveHooks are small, portable shelves with suction cups that you can stick to the side of your tub or shower. So if you want to take a bath and relax with some wine, you have a sturdy area on which to put your glass.

 

Now originally, Mr. Aylesworth was able to make each WaveHook in his own home. But everything changed once he used social media to market his gadget. Then the popularity of Wavehooks exploded and his website video went viral. Almost overnight, he was hired to make hundreds of WaveHooks and fill massive orders within a very short period of time.

 

Major vendors, including Nordstrom and Amazon.com, were contacting him for bulk purchases and promotion, while national media programs like “The Today Show” and “Shark Tank” started inviting him to talk about his invention. Needless to say, he called me in a panic because he wasn’t equipped to keep up with the volume of business he’d generated.

 

At this point, he knew he had to find a manufacturing company to produce the WaveHooks for him. But how could he be sure the company he hired wouldn’t steal his idea? And how could he know the people he chose to market WaveHooks wouldn’t take advantage of his trade secrets?

 

This is where NDAs and restrictive covenants came into the picture and made a huge difference. I quickly helped him put these agreements in place so he wouldn’t have to worry about his concept getting stolen by those he trusted. As a result, ImagiGadget was able to successfully secure an international company to mass-produce Wavehooks and he was able to engage a Seattle-based marketing firm to successfully launch a national promotional campaign. Today, his company is continuing to enjoy its growth but with the confidence that its intellectual property is well-protected.

 

If you’re interested in learning more about WaveHooks, I highly recommend that you visitwww.wavehooks.com . His idea is ingenious and he’s getting a lot of well-deserved attention for creating such a great product.

 

Next time, I will delve more deeply into the various kinds of NDAs and restrictive covenants. You’ll understand in even greater detail how they’re applied and why they’re so valuable to your small business.