Category Archives: e-Tip

Protecting Your Brand in an Expanding Market

What’s in a name? For many businesses, everything.

Time, money, and ingenuity combine to establish critical words, phrases, and images that not only identify a product, but attract and retain consumers. Although use of a distinctive mark in the marketplace can provide the user protection against infringement by competitors, disputes over who used a mark first are common in expanding industries where even novel branding can duplicate or mimic the branding of a competitor.

A prime example is the brewing industry. With a plethora of new breweries launching each year, not to mention the myriad of beers kegged, bottled, canned, and distributed all over the country each day, branding and protecting your brand is a challenge. Take, for example, the name “Hoptimus.” Although seemingly novel, the word “hoptimus”  identifies multiple beers from different breweries. Despite the clever use of pun, it may be difficult for any brewery who shares a common name with competitors to exclude another from the use of their creative (but shared) word without engaging in a battle of evidence over who used the word first.

The lesson to be learned from the brewing industry is to invest in researching and protecting your mark, and do it now. {See previous post: Ten Ways To Protect Your Trademark.} A comprehensive third-party search of trademark databases and more, followed by a careful legal review of your options and a federal registration filing makes sense for many new businesses and may cost less than you think. (The Karnopp Petersen eTip team can do that for a fixed fee – think “no billable hours.”) That “due diligence” can pay off in many ways, not the least of which can be avoiding a dispute down the road that forces you to rename or rebrand. And while some companies are able to charge ahead to success despite a change in name after spending time and resources developing their brand (click here for an example), such a change is disruptive and costly and worth working to avoid. Remember that, clever though your name may be, witty minds can be wired alike, and your creative name could quickly become an industry-wide term if you do not take steps to protect it.

Legal Recognition that Money Isn’t Everything – The Benefit Company

Last year, Oregon became one of the now 26 states to give legal status to a new classification of business entity: the benefit company.  Commonly referred to as “B Corps” (as distinguished from “C Corps” and “S Corps”), status as a benefit company under Oregon law is not limited to corporations—limited liability companies (“LLCs”) can get in on the act too.  In fact, even those “C-Corps” and “S-Corps” that take their monikers from the subchapters of the Internal Revenue Code under which their tax liability is determined can also organize themselves as benefit companies under Oregon law.  This begs the question:  what is a benefit company?

Some Background

Corporate law imposes a duty on management to look out for the best interests of the company’s shareholders.  In other words, management owes a fiduciary duty to shareholders.  In the realm of for-profit businesses, courts have generally equated shareholder “interests” with “profits.” This means that management upholds its obligations by ensuring that all actions are taken have company profits as a primary motive.  For example, in the oldie but goodie Dodge v. Ford Motor Company, Henry Ford was held to have violated this duty by employing more workers, paying them better wages and selling cars for less with the express purpose of doing good, at the expense of maximizing company profits and paying shareholder dividends.

In contrast, charitable corporations and enterprises have long been recognized as a vehicle for accomplishing social good.  These non-profit entities are by definition, however, generally prohibited from distributing profits to their members, officers, or directors.

The benefit company strikes a balance between those traditional entity structures that are either primarily concerned or fundamentally unconcerned with making money.  A benefit company must have publicly disclosed principles and goals of benefiting the community, but also may turn a profit for its owners while doing so.

Organization vs. Certification

First, some terms need to be defined.  Prior to Maryland in 2010, no state officially recognized benefit companies.  To fill this vacuum, the 501(c)(3) non-profit B Lab Company began providing certification as a “B Corporation” for an annual fee.   Akin to the more familiar LEED or Fair Trade labels, the Certified B Corporation label can offer certain marketing and branding benefits but does not have any legal force.  In fact, a company does not need to be officially organized as a benefit company to qualify for certification.  B Lab does, however, also offer certification in connection with providing the statutorily required Third-Party Standard, discussed below.

On the other hand, organizing your company as a benefit company does have legal effect.  Organizing as a benefit company can only be accomplished via registration with a state that recognizes the benefit company form.  In Oregon, identifying your company as a benefit company is accomplished by including the necessary language in filings with the Secretary of State when the corporation or LLC is formed.  Legal registration as a benefit company offers management some protection from claims that they are failing to act in the best (profit) interests of other shareholders / members.  It also entails, however, a higher level of transparency and additional specific annual reporting requirements.

What do I need to do to run my business as a benefit company?

If you’re just staring out, the decision to become a benefit can be made when you first form the business.  Among other things, in order to register as a benefit company certain language must be included in an entity’s formation documents filed with the Oregon Secretary of State.  If you’ve already formed a company but are interested in operating as a benefit company, don’t worry—it’s not too late.  It is possible to convert your traditional corporation or LLC into a benefit company under Oregon law.

Beyond filing the necessary documents with the Secretary of State, in order to register as a benefit company, the business will need to lock down some guiding principles on how it intends to benefit the community and environment, and select a Third-Party Standard against which to measure its actual performance.  In addition to B Lab, there are a number of Third-Party Standard options to choose from.

While there are certainly many reasons to choose to organize a business as a benefit company, it is not right for everyone.  Karnopp Petersen LLP has a number of experienced business advisors that can assist in evaluating the pros and cons, including Ellen Grover who was a member of the Secretary of State’s Benefit Entity Legal Working Group responsible for developing the benefit company legislative concept.   If this is something that you are interested in for your company we would love to have the chance to discuss it with you in more detail to see if it is right for you.

Crowdfunding Is Soon to Become a Regulated Means for Businesses to Raise Capital

Crowdfunding has hit the mainstream and is soon to become a sanctioned—and regulated—means for new ventures to identify and obtain funding.  In the next few months, the Securities and Exchange Commission (“SEC”) is expected to issue final regulations that will implement the exemption from securities registration that was created by the Jumpstart Our Businesses Act (the “JOBS Act”). This exemption will provide start-up ventures with the opportunity to obtain investments through crowdfunding websites with less risk that the venture is violating securities laws by doing so.

As a general matter, a business that solicits investments from the general public is required to register its securities—which include stocks, notes, and other evidence of an interest in a profit-sharing venture—with the SEC and state regulatory agencies.  Complying with the securities registration process is time and cost prohibitive for most companies.  As a result, most companies are not able to solicit investment from the general public, which severely constrains the capital that is available for start-up ventures.

However, the JOBS Act will allow ventures to solicit investment from the general public without requiring registration of the securities issued to investors, provided a number of conditions are met.  Most importantly, a venture issuing securities is not permitted to raise more than $1 million in a consecutive twelve month period through the use of the JOBS Act exemption and, without obtaining substantial personal information from investors, will be limited to accepting no more than $2,000 from each investor.  Additionally, entities issuing securities under the JOBS exemption are required to sell the securities over a registered securities broker or through a registered portal, which will likely operate a website in order to facilitate transactions.  Additional requirements, including disclosing specific information to both potential investors and the intermediary over which the securities are sold, will be required of the venture.

Once the SEC issues its final rules, the JOBS Act exemption from securities regulation will become available for use, and ventures will experience a greatly expanded opportunity to access capital.  However, any business that is considering taking advantage of the JOBS Act exemption should proceed carefully to ensure that they are complying with each of the requirements that the SEC ultimately decides a business must satisfy.

Product Design Protection Milestones – and Scouts Earning the “Intellectual Property Patch”

The United States Patent and Trademark Office (or USPTO) just commemorated the issuance of its 700,000th design patent.  That’s a type of patent that protects the ornamental design of a product – its unique look/design, as opposed to its function (which can be protected by a utility patent).

Design patents are a growing area.  The number of applications is growing rapidly, and we see lots of interesting enforcement in this area of intellectual property (“IP”) protection.  (Apple vs. Samsung comes to mind.)   But we also see lots of grief over the cost of obtaining patents, and over how difficult that application process can be.  Those who have a product design to protect, take heart:  you have other options for protecting your IP besides just a design patent.  And the alternatives can sometimes mean better protection or a better option for your company, too.  Here are two other options, besides a design patent, to consider.

One option can be trade dress protection.  A non-functional design that helps consumers identify the goods with a particular source (your company!) may qualify as a protectable “trade dress,” so long as it’s not part of the functional design and other requirements are met.  Of course, trade dress can be difficult to establish—but if successful, it offers the longest-lasting protection.  A design patent lasts no more than 14 years, while trade dress protection can continue indefinitely.

Copyright protection can protect a creative design from being copied by others, too.  Unlike trade dress protection, it does not require a showing of “acquired distinctiveness” or of a likelihood of consumer confusion.  But it too cannot extend protection to “useful articles” or design elements that are functional.

Each IP protection (design patent vs. trade dress vs. copyright protection) has its own strengths and weaknesses.  A smart entrepreneur gets counsel early in their product’s lifecycle, about which approach to use for their particular product and goals—and to help ensure their IP portfolio remains or becomes a valuable company asset.

In case you were wondering, the 700,000th design patent was issued for the ornamental design of the LeapsterGS™ by LeapFrog Enterprises.  And the USPTO’s milestone ceremony included the launch of a new “Intellectual Property Patch,” a joint project between the USPTO and the Girl Scout Council of the Nation’s Capital.  Go Girl Scouts!  (Don’t worry, the Boy Scouts cover some IP basics in their Game Design merit badge, too.)

Does Using Your DVR Violate Copyright Law or is it a “Fair Use”?

You know how digital video recorders (“DVRs”) help users fast-forward through the onslaught of ads that come with today’s “small screen” entertainment.  A newer device at the center of a copyright battle—the DISH Network’s THE HOPPER—is a bit different than your typical DVR.  It lets subscribers essentially block out or “hop through” the commercial breaks in the major TV networks’ prime time shows, as opposed to requiring the subscriber to fast forward through them.  We understand some DISH Network employee in Wyoming monitors the network primetime broadcasts and marks the starting and stopping points for the commercial breaks, which allows almost completely uninterrupted viewing of primetime network shows.  (If you’ve been too busy skipping commercials to see DISH’s ads, you can check out the THE HOPPER ad campaign featuring a “charming,” Boston-accented family that always seems to be bickering about their TV viewing priorities.)

While studies have shown that typical DVRs with user initiated, manual fast-forward technology actually increase commercial viewing, the HOPPER technology completely forecloses the possibility of incidental commercial viewing, which the major TV networks, of course, do not like one bit.  Fox, CBS, and NBC each filed separate copyright infringement lawsuits in federal court against DISH to attempt to prohibit DISH from offering its THE HOPPER service to subscribers.  Fox, who did not prevail at the trial level, pursued an appeal to the Ninth Circuit. On appeal, Fox asserted that DISH was violating Fox’s copyrights as well as breaching its rebroadcast contract for Fox’s most popular TV shows (such as The Simpsons, Bones, and Family Guy, to name a few), by recording and rebroadcasting the episodes without permission.  Alternatively, Fox claimed that DISH’s subscribers were violating its copyrights by using THE HOPPER service to record shows and replay them later.  Of course, Fox didn’t sue each and every DISH subscriber but instead asked the Court to hold DISH accountable for its subscriber’s actions.

Thankfully for DISH Network subscribers and DVR users everywhere, in its original July 2013 opinion, the Ninth Circuit found that neither DISH nor its subscribers were violating Fox’s copyrights.  Fox’s attempt to have the matter reheard by the Court were recently rebuffed by the Court.  (You could imagine the implications if the Court found otherwise, think Napster a la 2001!)  In upholding the trial court’s decision, the Ninth Circuit found that DISH was not infringing because it’s subscribers, and not DISH, were copying the shows by initiating the recording (by pressing the “*” button).  As for DISH’s subscribers, the Court determined that they were likely infringing on Fox’s copyrights by making unauthorized copies of Fox’s TV shows, but that such infringement was a “fair use” that neither the subscribers nor DISH could be held liable for.  In making the ruling, the Court relied on its prior opinion in Sony Corp. of Am. v. Universal City Studios, Inc., which focused on whether Sony’s now long-defunct Betamax technology infringed on Universal’s copyrights.  The Court’s Fox/DISH ruling reaffirmed that old case law and reassured delayed TV viewers everywhere:  whether you are recording an episode of Glee with THE HOPPER—or an episode of the A-Team on your Betamax VCR—you can do so with a clear conscious.  (Well, at least when it comes to your copyright infringement conscious, anyway.)  As our courts struggle to interpret and apply copyright law to ever-evolving technologies, we’ll be watching for the latest news.

Candy Crush (Trademark) Saga: App Company will “Sugar Crush” You for Using its Pending CANDY and SAGA Trademarks

King.com Ltd., the evil geniuses behind the highly addictive (to some) mobile, candy matching game Candy Crush Saga, has made headlines recently over its enforcement efforts for the company’s claimed trademarks, CANDY and SAGA.  King already has a registered trademark and logo for CANDY CRUSH SAGA and a slew of other marks for similarly named games.  Some observers have expressed shock and outrage over the implications of King’s pending registrations because they seem to claim ownership over relatively common words in a wide array of products beyond mobile apps or video games, including blank video cassettes, paper hats for use as clothing, amusement parks, and scriptwriting services, to name a few.  Other observers have noted that King’s enforcement efforts have put a strain on seemingly unrelated video games that use the words CANDY or SAGA in their titles.  Most notably, King has filed an opposition to Kickstarter darling Stoic Studios’ trademark application for its THE BANNER SAGA mark for Stoic’s Viking-themed, strategy role-playing game.

A review of the United States Patent and Trademark Office (“USPTO”) records shows that both King’s CANDY and SAGA trademark applications are currently pending and have not been approved.  Both applications were initially denied or partially denied by the USPTO examining attorneys that were assigned to review each mark.  The examiner found CANDY to be “confusingly similar” to another registered mark KANDY in one of King’s claimed trademark categories.  The examiner reviewing the SAGA application found it to be confusingly similar to identical already registered marks and denied the application completely.  King was able to overcome these initial denials by submitting carefully crafted responses.  The scope of the CANDY application was trimmed to satisfy the examiner’s comments.  Interestingly enough, King argued that the SAGA mark was a weak mark because so many other video games use “saga” in their titles and that its application should therefore be approved despite the similarity of its marks with other registered marks.  King’s CANDY trademark application has now been approved by the examiner, but it has not yet been registered.  The mark will be published in the Official Gazette for 30 days where it may face opposition from parties that believe registration of the mark would damage them.  SAGA on the other hand is currently suspended while awaiting proof of a foreign registration of that mark.  As mentioned above, King has already started its enforcement efforts for both marks.

Despite all of the excitement over King’s CANDY and SAGA marks, King’s trademark applications and enforcement efforts are relatively common.  King makes this point in its posted explanation of its approach to IP on its corporate site today.  Whether you see King as a “trademark bully” or a smart protector of its valuable intellectual property, we on the e-TIP team thought the story was a great way to remind our blog readers about the importance of considering infringement risk and potential barriers to registration that could arise when selecting a mark.  In our experience, getting an IP attorney on board at the early planning stages to help vet names and assess risk could avoid unnecessary expense in the future and hopefully keep you from embarking on your own Trademark Infringement Saga.

Ninth Circuit Harshes Hookah Company’s Copyright Buzz

What’s protected by copyright law?  Most of us tend to think of literature/books, music, movies, photographs, graphic art, and other more common “works of authorship” under the Copyright Act.  But it isn’t just the obvious things that come within copyright protection.  For instance, if you are an architect or builder, your original building plans or the unique design elements of the buildings themselves are likely subject to copyright protection.  The Copyright Act even specifically lists your next great pantomime or “mime” as a type of “original work of authorship” (although, I think “man in box” might already be taken) that can be protected by copyright law.

Some things, however, are just not protectable in copyright.  An opinion of the Ninth Circuit Court of Appeals that was released last week shines a light on the concept of copyright protection for so-called “useful articles.”  The case focused on the similarly shaped hookah water containers of two cleverly named companies; Inhale, Inc. and Starbuzz “Tobacco,” Inc. (quote marks are mine).

Before we get into the legal news, it’s worth explaining for the uninitiated, just what exactly is a hookah water container.  After all, “tobacco” smoking devices (there are those quotes again!) are not a frequent topic on the KP blog.  A hookah is a waterpipe, which can be used to smoke flavored tobacco products or other less legal (in Oregon anyway) plant material.  Before the smoke from the tobacco is inhaled, it passes through a water container in the base of the hookah, which cools and adds moisture to the smoke before reaching the smoker.  This vase-like container is the subject of the copyright infringement case mentioned above.

So why did the Ninth Circuit determine that Inhale’s water container was a “useful article” and not protectable in copyright?  In 2008, Inhale registered a copyright for a “Hookah Water Container” claiming that the type of work protected was “visual material” and a “sculpture/3-D artwork.”  The Copyright Office determined that, based on the application, the hookah water container was copyrightable and approved the registration.  In 2011, Inhale filed a copyright infringement suit against Starbuzz after Starbuzz began producing and selling a product that was almost identical in shape, but not in its decorative design.  Inhale’s container sported a stylized skull and crossbones design, while Starbuzz’s container came in various design options such as Ed Hardy artwork or mosaic tile designs.

The Ninth Circuit accepted the party’s concessions on appeal that the water container was properly considered a “useful article.”  A “useful article” is a work that has “an intrinsic utilitarian function.”  To be protected by copyright law, a useful article must have separately identifiable, artistic aspects that exist independently of the article’s utilitarian function.  Inhale argued that its hookah water container had a unique shape and that the shape was separately identifiable from the usefulness of the water container.  Therefore, Inhale posited, its registered copyright included the shape of the water container, and Starbuzz’s use of that shape was grounds for copyright infringement.

In reviewing Inhale’s infringement claims, the Ninth Circuit held that the unique shape of Inhale’s hookah water container was not sufficient to separate the container from its utilitarian function—so the container was not protectable in copyright.  In a previous ruling related to the copyrightability of the shape of a vodka bottle, the Court had appeared to leave open the possibility that a distinctly shaped useful article, such as a vodka bottle or hookah water container, may be sufficient to transform a useful article into a copyrightable work.  The Court’s opinion in Inhale, Inc. v. Starbuzz Tobacco, Inc. has “buzzkilled” that idea.

Bottom line: even though you haven’t completed your great American novel/mime, you may have intellectual property rights in some strange places.  It is definitely worth checking with an intellectual property attorney to conduct an I.P. audit or assist you in evaluating ways to protect your copyrights . . . before your dreams go up in smoke.

A Word to the Wise – Avoid the “Accidental Franchise”

Caution with licensing, distributorship agreements and the like can help you avoid the pitfalls of franchise law!

We like to think we know a franchise when we see one.  Among some of our favorites:  Krispy Kreme, Cold Stone Creamery, and Snap Fitness (after we’ve visited the first two).  What many fail to realize, however, is that your business relationships can create “franchises” under the law – with all the accompanying legal requirements – even though that wasn’t necessarily your plan.  Read on to avoid the “accidental franchise.”

The FTC (Federal Trade Commission) defines a “franchise” as any continuing business arrangement with the following elements:

  1. The right to use a common trademark in the operation of the business;
  2. The imposition of significant control, assistance, and/or support over the method of operating the business;
  3. The payment of a fee, including but not limited to initial fees, royalties, advertising fees, training fees, and fees for equipment.

If a business relationship has these three elements, it is a franchise – period.  That’s right, the intent of the contracting parties is irrelevant.

Why does it matter?  If a franchise relationship exists, a host of legal requirements kick in.  For example:  federal law requires that the franchisor provide a detailed franchise disclosure document to the prospective franchisee at least 14 days before signing any agreement or accepting any payment.  Some states have additional franchise laws, may require registration with a specific state agency… and more.  And failure to comply can be very costly.  For some scary examples of that cost – including a company that started out not charging a fee, but later triggered state franchise law (and ultimately a $1.5 million verdict!) by charging for some manuals – you can read more here.

As one expert puts it, the “accidental franchisor” has essentially given the franchisee a winning lottery ticket they never knew about.  The franchisee may be able to terminate the agreement, recoup amounts paid to the franchisor and additional damages, and recover any attorney fees paid along the way.  Even worse, some state laws also impose fines and categorize the sale of an unregistered franchise as a crime.  No thanks.

What types of business relationships can create “accidental franchises?”  The most common examples are trademark licensing agreements and distributorship agreements.

Trademark Licensing Agreements:  Here, you simply grant someone a license to use your trademark in the operation of their business.  You’re in business to make money, and were likely paid a fee.  Already, two franchise elements are met.  (Example:  a sports team that licenses the right to use its logo on t-shirts, and gets paid in return.)  If you go on to provide training or promotional assistance that constitutes a sufficient amount of control (e.g., you provide support in the operation of the business that sells the t-shirts), you’ve now become a franchisor!

Distributorship Agreements:  In this circumstance, you enter into an agreement with someone who will offer and sell your products for a profit, presumably using your trademark (Mary Kay cosmetics, for example).  Generally, distributorship arrangements do not constitute franchises because the definition of a “fee” is not met.  (A “fee” does not include payment for the purchase of a reasonable amount of initial and ongoing inventory at bona fide wholesale prices.  What a mouthful.)  However, once the distributor begins to sell displays, sales kits, advertising, etc. (items not intended for resale), the exception may not longer apply and the fee element may be triggered.  Finally, just as described above, some friendly marketing and training assistance could trigger the control element.  Poof . . . a franchise is born!

Maybe you want to create a franchise—even make the “Franchise 500” someday.  Good for you!  But if that’s not your plan, watch out:  franchise laws and all their requirements can apply to many business relationships that we may not think of as franchises.  In order to avoid creating an “accidental franchise,” create the business relationship so that at least one franchise element (common trademark, fee, control) is missing.   Better yet, let your lawyer watch for it!  (And always share your Krispy Kremes.  Please.)

Top 10 Ways To Protect Your Trademark

A trademark or service mark can mean everything to a business:  your brand, your image, and what customers think of first with respect to your goods/services.  It’s what distinguishes your product from Brand X.  But how do you protect it from the competition?  To help you avoid the fate of the many who neglect their mark’s protection—and live to regret it—here are ten favorite tips from the Karnopp Petersen e-TIP team:

1. Choose a unique mark:  Trademarks should distinguish the source of a good or product. Common names of a product or service generally don’t qualify for protection… be creative!  Invent a word (KODAK), or choose an arbitrary mark that has nothing to do with the product, such as Apple for computers (which don’t grow on trees, sorry).  Strong, distinctive marks not only strengthen your legal protection but also attract client attention.  This concept applies to even brick and mortar business, but you can learn more about the power of quirky names (especially in the digital era) here.

2. Register your mark: Registration with the US Patent and Trademark Office (USPTO) may be your best bet.  State registrations are available, but just about every business—even local—should at least consider the goldmine of benefits that come from national registration.  Here are just a few that could save your mark (or even your business?) in the not-so-distant future:

    • National registration creates a legal presumption that you own the mark.  This can be both a defensive shield and offensive sword against a copy-cat competitor!
    • The USPTO bars the registration of confusingly similar marks.  This can help stop troubles before they start, and maintain the uniqueness of your mark.
    • Registration provides notice of your claim to the mark to those outside your trading region.  And you get the legal right to use that cool little ® symbol, too.

3. Use your mark publicly, “in commerce:”  In the US, rights to a trademark generally are triggered by use in commerce.  So here’s calling all ye startups:  just because you’re ready to launch and have your mark all over goods you haven’t shipped yet, doesn’t mean you’ve perfected your rights with “use” in commerce.  (An evil employee could give your mark to a competitor … if they use it/make a sale first, you may have a real problem on your hands.)  Place your mark where it is visible on products and packaging.  And make a sale.  Widely available marketing materials, including your website and social networking websites, can help towards establishing use, too—if done right (think proximity to a picture of the goods, and a means to order them).  But before you get too confident about your protection based on first use, see Tip No. 2, above:  it’s typically best to register first (an “intent to use” application) or shortly after beginning use in commerce.

4. Keep examples of your early “use,” with proof of date:  A dispute over a trademark often boils down to who can establish that they used the mark in commerce first.  The best way to avoid or prepare for such a dispute?  Keep time-stamped examples of your earliest use of the mark.  For example, a photo of a shipment of trademark-labeled goods with a copy of a time-stamped email receipt could be priceless evidence down the road.

5. Use a notice marking:  Placing a notice marking (such as TM or ®) after your trademark gives notice to others:  back off, this intellectual property is mine.  It also helps to distinguish the mark and draw the eye of readers.  Use TM for trademarks or SM for service marks when you have not registered your mark with the USPTO, and ® when you have.

6. Distinguish your mark:  Your mark should be a unique, let it shine!  Make it stand apart from any surrounding text.  Make sure it draws the eye and is distinguishable:  think all caps, color highlighting, bold/italics, different fonts, etc.

    • Yes!  A-Plus example:  “Our new TRADEMARKTM beer is the bomb!”
    • Not so good:  “Please buy our new trademark beer.  Pretty please.”

7. Use your mark correctly, to describe your product:  A trademark should be used as an adjective or descriptive noun.

    • Better:  “Our TRADEMARKTM rockchuck feeder dispenses all the tasty treats a yellow-bellied marmot could want!”
    • So-so:  “TRADEMARKTM keeps rockchucks comin’ back for more.”

For our part, we hope disputes about how the term “Cronut” (croissant/donut) has been used don’t stop them from coming to Central Oregon. And yes, we like rockchucks but don’t necessarily endorse feeding wild animals.

8. Be consistent:  If you change the spelling of your mark or begin to abbreviate, you could be undermining you claim to the mark.  Always use it as a separate adjective or descriptive noun that is spelled out in full.  Avoid modifying it into a possessive or plural form, too.

    • Yes!:   I could go for some OREO cookies, please.
    • No cookies for you:  Give me some OREOS.  (That modifies the mark!)

9. Continuously use your mark:  If you stop using your mark for a period of time, you are no longer placing others on notice of your claim to the mark.  That can cause you to lose your rights!

10. Sleep with one eye open:  It’s a jungle out there.  If you want to keep your mark protected, you need to watch for thieves—and take steps to address any misuse.  Turning a blind eye to a smaller incident of infringement (that doesn’t seem like a real threat to your business) could hurt your chances of stopping a bigger bully who can really do damage!
Periodic searches for infringing use can help.  For a recent example of controversy around the duty to monitor/defend your mark, read about the Black Eyed Peas frontman here.

 

Who We Are: Emerging Business, Technology and Intellectual Property (e-TIP)

We have thrived on working with local startups and technology companies, and have been struck by the increased demand for our intellectual property services. So we asked: how can we better collaborate to meet the needs of those clients and businesses? The answer: Karnopp Petersen’s Emerging Business, Technology and Intellectual Property (e-TIP) practice group, a newly-formed team within our firm that has your business’s success in mind. Our e-TIP team offers legal expertise in establishing and growing your business, including everything from entity formation, funding, equity compensation, intellectual property (trademarks, copyrights, trade secrets, patent licensing, etc.), franchising, managing employees and more.

One of the first things the e-TIP group did was collaborate with community business leaders and clients in creating a customized, flat-fee “start up kit” of legal documents and services for new companies. Check out the Karnopp Petersen LaunchPack™ for the results.

As our region continues to cement its reputation as a hub of entrepreneurial activity, our e-TIP group will continue to focus on finding innovative ways we can support entrepreneurs and help our clients succeed.