Opening a restaurant? A Federal Registration is a Must!

Over the years, I have been involved in a number of expensive, dragged-out restaurant name disputes. It’s a shame, because in almost every case, all the trouble could have been avoided if a federal registration of the restaurant name had been acquired when the restaurant opened.

Some restaurateurs believe that if they only have a single restaurant, they either don’t need or don’t qualify for a federal registration because they believe that their local establishment isn’t in interstate commerce. This is a mistake! Every restaurant is automatically in interstate commerce by virtue of the Civil Rights Acts.

Let me give you one scenario. A opens a restaurant in New York City. He registers his corporation with the state, but he doesn’t bother to apply for a federal trademark registration. About a year later, B opens a restaurant with the same name in Los Angeles. They co-exist peacefully for a few years. During this time, A becomes rather successful in New York and opens a second location.

B decides to franchise his restaurant concept and realizes he needs a federal registration to do that.  He applies, and several months later, his registration issues. He begins to slowly spread across the country.

A few years later, B opens a franchise location in New Jersey. This annoys A, who begins to get misdirected telephone calls meant for B.

This is when we hear from A.  He wants to know what he can do to stop B from using “his” restaurant name. After all, A started using the name first, and he wants to expand as well.

The fact is, it’s going to be very tough to stop B. B’s federal registration has cut off A’s ability to expand.  The best A will likely be able to do is maintain his current use of the name in New York.   Even if A can do this, the name is no longer much of an asset  because it’s not uniquely his.  However, if A had obtained a federal registration when he opened his restaurant, he would have secured presumptive exclusive rights to use his trademark throughout the United States. The chances are pretty good that B would never have adopted the name in the first place, since the registration would have given public notice that A had the rights to the name. Further, a federal registration on the Principal Register can become incontestable, which means you can no longer be challenged by any entity anywhere in the United States based on prior use.

Janice Bader
Member, Symbus Law Group, LLC
Tel. 540-825-3500
jbader@symbus.com
www.symbus.com

A Day in the Life of a “Virtual” Trademark Lawyer

The first thing I do is look out my window at the undulating landscape of the Virginia countryside and think to myself, “I’m not climbing into a lawyer suit.  I’m not fighting traffic to the corner of Pennsylvania and L Street.”  I did that for about 18 years, so I think I put in my time.  Then, wearing what I would rarely admit to, I check my docket. I have two of these, one offline and one integrated into our online trademark management system at Symbus.  I designed the online system with some talented IT people about ten years ago.  I might file for a new trademark, and when I’m done I upload the data to Symbus, so the client can view the details.

Speaking of clients, I will admit that I have served a few clients for over a decade that I have never met. I came to the realization early on that nobody really wants to see their IP lawyer if they can avoid it.  (Okay, I’m being a bit facetious here.) If I manage their trademarks well and I’m accessible to give advice, they’re happy.

When I’m finished with my work (I thank the U.S. Patent and Trademark Office here, for making it easy to get the jobs done over the Internet), there’s administrative duties to attend to. I drive six miles into town (Culpeper), pick up the mail, and do the banking.  I pass a herd of Angus cattle (the largest in the county) and the familiar pair of donkeys that always manage to be grazing together. When I pass a car, the other driver usually waves.  I wave back.  That typically didn’t happen on L Street.  The downside to this virtual firm?  On the occasions that I have to drive into D.C., I morph into a very nervous woman, about eighty-six, with a stranglehold on the steering wheel. Apart from this, I would say there are few disadvantages to the virtual law life.

Janice Bader
Member, Symbus Law Group, LLC
Tel. 540-825-3500
jbader@symbus.com
www.symbus.com

Conduct An Annual Trademark Portfolio Review

Do your New Year’s Resolutions include a thorough review of your business’ trademark portfolio? If your business is like many others sometimes important but not urgent matters get put off for far too long. Matters that if caught early would have been simple to correct can be much more costly to resolve if they are left on the back burner for too long. You should consider if your business might benefit from an annual review of the trademark portfolio by a Trademark Attorney.

Here are some steps you might want your Trademark Attorney to undertake towards proactively managing your portfolio in 2011:

1. Review, on a global basis, all advertising and packaging for key products to confirm all trademarks and service marks are registered or on file and that the marks are used properly. If this is not possible an attorney should undertake at least a spot check of key marks.

2. Compile a “trademark use file” for each brand in each country where a product is sold or a service is rendered. In the event of litigation this data will be of immeasurable importance. When infringers are sued for trademark infringement they often counterclaim that a trademark or service mark has been abandoned due to lack of use. The mark’s owner must then establish that the trademark or service mark has been in continuous use. This is easily done if a company has kept an annual use file with examples of packaging, catalogs, and advertising displaying the trademark or service mark at issue.

3. Confirm that all registrations have been renewed properly, and that they cover the current products and/or services on which the trademarks or service marks are used .

4. Check on the status of any pending applications. In some countries it can take years to obtain registration and it is important to conduct frequent status checks to confirm that applications are proceeding on track to registration.

5. Check on the status of pending  litigation and oppositions. Be sure your foreign associates or outside U.S. counsel are not waiting on key information to progress a matter and that they are zealously representing your case.

6. If your business is an industry frequented by counterfeiters you should confirm that your trademark registrations are duly recorded with Customs where appropriate.

7. Check on any licenses. Are the license agreements up to date? Are  the Licensees adhering to all requirements? Is the Licensor, i.e., the trademark owner, properly controlling the nature and quality of the usage of the trademarks on the products or services at issue?

8. If your business employs marketing and sales staff you may want your Trademark Attorney to conduct short educational sessions on topics such as the proper development and use of trademarks and the need for employees to be vigilant for infringers and counterfeiters and what steps to take if they should encounter such problems.

9. Ask the Trademark Attorney to perform searches of key trademarks to ascertain if there are any potential infringements of the trademarks or service marks that should be brought to your attention. Generally it is easier to resolve matters the earlier you catch them since once a competitor has launched a product and is entrenched in his marketing campaign he is less likely to be willing to forgo use of a similar trademark or service mark without litigation. Towards this end be sure the company has a global trademark watch service in place so that you are notified if potentially infringing trademarks publish for opposition.

10. Check all websites to confirm proper use of trademarks,  service marks, domain names and copyrighted materials.

11. If your business uses domain names your Trademark Attorney can review the status of the domain names to confirm that they have been renewed, and can search the domain names against domain name registries and trademark registries to determine if competitors are improperly using your business’ domains names and trademarks, such as by registering your business’ trademarks as their domain names.

While all of this may seem like a lot of work remember that your business depends upon the strength of its intellectual property. Your trademark portfolio must be constantly maintained and proactively managed in order for it to support your business’ objectives.

Please note that this post is for information purposes only and does not constitute legal advice and does not create an attorney/client relationship.

Best of luck with your business in 2011!

Teresa H. Anzalone, Attorney, MBA

Symbus Law Group, LLC

610-420-7731

tanzalone@symbus.com

(Office: Gulph Mills, Montgomery County, Pennsylvania)


managing the “symbols of business”

Protect Your Business Name!

A “Trade Name” Is Not A “Trademark”

Did you know that your business name, i.e., your “trade name,” is not a trademark?  Many people use the terms trademark and trade name interchangeably and this causes confusion in the business community. Trade names are how we identify our businesses. Trademarks are how we identify our products, and while we’re at it service marks are how we identify our services.

It’s more than just semantics. Trade names cannot be federally registered unless they also serve to function as a trademark or service mark. This is significant since “trade names” can be highly valuable and businesses generally want to protect their trade names from infringement. No business wants a competitor to adopt a similar trade name or even a similar trademark or service mark for a product or service, as that could create confusion in the marketplace and result in lost sales. Worse yet, no business owner wants to launch his or her business and later need to change the name due to a claim of infringement from a competitor. So how does a business be sure that its trade name is available for use and then protect the trade name from infringement?

Fictitious Name Registries v. U.S. Patent & Trademark Office

First it’s important to understand that there are different registries involved in protecting trade names and trademarks. If you are setting up a new business the state where you are doing business may require you to register your trade name as a “fictitious” or “doing business as” name. The U.S. government maintains a website at Business.Gov that specifies requirements and includes links to each state’s registries. See: http://www.business.gov/register/business-name/dba.html

While achieving registration as a “fictitious name” or as a “doing business as” name in your state is significant it does not mean that the trade name is available for use, i.e., will not infringe upon another’s rights, or that it is available for federal registration at the United States Patent and Trademark Office. So what should you do?

Determining Availability of Your Trade Name

Given the importance of your business name you should consider having a Trademark Attorney obtain and analyze a thorough availability search for you before you name your business. The search should include the U.S. Patent and Trademark Office records, the State Trademark records, fictitious name registries, and databases that may unveil common law uses of trade names, trademarks and service marks. Common law uses are uses of trade names, trademarks and service marks that are used but not registered. In the United States simply using a trademark or service mark can give the user rights. So this is a complex task.

Could you do this search yourself? Yes. Should you? Probably not. Searching is an art and a science. Trade names, trademarks and service marks do not need to be identical or nearly identical for there to be infringement. Even if you conduct a thorough search analyzing the results is better left to someone specializing in trademark law. The field is far more complicated and fraught with pitfalls than it might first appear. This is your business name, you want to own it and use it for a long time. You should consider obtaining appropriate legal assistance to help you do this. Be aware that a general practice lawyer that helps you incorporate and file your “fictitious” name application may not be a Trademark Attorney, and so you may want to obtain a specialist for this purpose.

Protecting Your Business Name

Once you have searched the business name and feel confident of its availability you will want to consider whether federal registration is appropriate. Federal registration confers many benefits, including serving as a legal presumption of your ownership in the trademark and your exclusive right to use the trademark nationwide in connection with the goods or services identified in the registration, serving as public notice of your claim of ownership in the trademark, the right to use the registration symbol ®, the ability to record the U.S. registration with U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods, and the ability to bring an action concerning the trademark in federal court.

Generally, if your business name is used in more than one state, either through advertising or the shipment of product, and is distinctive, it may be possible to register the name at the U.S. Patent and Trademark Office if it is used properly as a trademark or service mark.

While trade names cannot be federally registered in and of themselves, they can be used in such a way that they become trademarks or service marks and are capable of registration. Often trade names are used as “secondary trademarks”, i.e., terms and logos that appear on product packaging in addition to primary trademarks. Sometimes a company will take the most distinctive term or terms in its trade name and incorporate it within a logo. For example, Pfizer Inc., a well known pharmaceutical company, has registered PFIZER within a tilted oval shape, see below. This trademark appears on the packaging for their pharmaceutical products in addition to the trademarks for their drugs. Other examples include the famous ice cream producer, Ben & Jerry’s Homemade, Inc., which has registered the logo below for ice cream. While it is not necessary to include the distinctive portion of the trade name in a logo format in order for the trademark to be registered, it must be clear to the U.S. Patent and Trademark Office that you are using the term as a trademark in connection with a product or as a service mark in connection with a service and not just as a “trade name” to identify the name of a manufacturer or distributor.

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This article is for information purposes only. It is not legal advice and it does not create an attorney/client relationship.

Best of luck with your new business.

Teresa H. Anzalone, Attorney, MBA

Symbus Law Group, LLC

610-420-7731

tanzalone@symbus.com

(Office: Gulph Mills, Montgomery County, Pennsylvania)

managing “the symbols of business”

The Virtues of the Virtual Firm

What is a “virtual” law firm, and what are the pros and cons of using one, as opposed to the traditional law firm?

A “virtual” law firm is one which relies primarily on electronic practices and is, in the best of circumstances, an application service provider (ASP) that serves the client in new and innovative ways.  There is usually no emphasis on brink-and-mortar,  so you won’t find the handsome lobby or the stately corner offices, but you won’t be paying for those amenities either.

Intellectual property law would appear to be more ideally suited to the “virtual” law concept than other areas of the law.  This is because it is, in large part, a “process” practice with respect to  acquiring and maintaining trademarks, patents, and other intellectual assets.  There is typically no need for a face-to-face meeting with a client (contrast with a family law or immigration practice, for example).  However, the lack of “face time” does not mean that interaction, accessibility, or detailed attention to the specific needs of the client need be sacrificed.  In a well-run “virtual” practice,  the client is attended to just as well as in a traditional firm. In fact, meeting through “virtual” meeting sites, like Go To Meeting for example, or use of Skype, instant message “chats”, videoconferencing, and regular e-mail can be highly effective.

The application service provider in the intellectual property field can provide valuable, time-saving information to the client.  An online trademark management system, for example, can link the client to his global portfolio anywhere in the world in seconds.  If he is negotiating a license in Singapore, for example, and he needs to know if his mark is registered there, he doesn’t have to call the attorney and wait for a response. He simply logs on and accesses the information itself.  The traditional law firm is less likely to provide this kind of service.

Clearly the legal consumer can secure  excellent talent  in both a traditional and a “virtual” law firm.  But the traditional law firm has a lot of overhead.  Typically they turn photocopying, faxing, mailing, and other ancillary activities into profit centers.  The “virtual” firm typically de-emphasizes the use of paper, and focuses on the careful maintenance of data.   Documents, invoices, and communications are handled electronically. All of these methods and practices improve the bottom line for the client.

Finally, in choosing a “virtual” firm, there are vast differences.  In the intellectual property arena, there are literally scores of organizations claiming to be ready to assist in filing trademarks, for example. Although some have at least nominal association with a lawyer, many simply process an application on the client’s behalf without contending with the complexities. When an official action comes from the Patent and Trademark Office,  the client is left to his own devices.  In many cases, the obstacles raised by the Office action could have been  avoided if the application had been filed correctly in the first place.

The bottom line is that use of a well-chosen  “virtual” law firm can be a very effective way to do business, particularly in the intellectual property arena.

Janice Bader
Member, Symbus Law Group, LLC
Tel. 540-825-3500
jbader@symbus.com
www.symbus.com