TIPS FROM A SEASONED LAWYER

Posted on September 12, 2011 by ERIC WACHSPRESS

As an attorney who advises start-up enterprises certain issues come up regularly in representing them. These include selecting a business name, organizing the business, protecting the business’ intellectual property and dealing with potential litigation.

I’ve therefore prepared a summary guide to handling these issues:

1. SELECTING THE BUSINESS NAME-In Illinois the business name must be distinguishable upon the records of our Secretary of State from the corporate name or assumed corporate name of an existing Illinois corporation or a foreign corporation authorized to transact business in Illinois or the name of a limited liability company in those records, or a name that is otherwise currently registered or reserved. In addition, if a corporation, the name must include the terms, “Corporation,” “Incorporated,” “Company,“ “Limited” or an abbreviation of those terms, and if a limited liability company the words “Limited Liability Company,” or the abbreviation “L.L.C.” or “LLC.”

2. SELECTING THE BUSINESS NAME II-If you buy a Dell laptop computer, the computer will be sold by Dell Inc. and the computer will bear the DELL trademark on it. If you buy a Blackberry smart phone, the phone will be sold by Research In Motion Limited but it will bear the BLACKBERRY trademark on it. If you intend to follow the Dell example and use the name of your business as the name of your product, selecting your business name gets more complicated as you will be selecting a brand name or trademark (or service mark, if you are a service provider) at the same time. In that case, prior to selecting your business name, you should add the step of conducting a search to determine if that name or a confusingly similar name is the subject of either a federally registered trademark or an application to register a trademark with the United States Patent and Trademark Office, whether it is the subject of a state trademark registration or whether it is in use but not registered. One of the benefits of a federal trademark registration is that it is prima facie evidence of the registrant’s exclusive right to use its mark throughout the U.S. Therefore if someone has previously federally registered a confusingly similar mark or previously filed a federal application to register a confusingly similar mark that is ultimately registered, even if they are not currently doing business in your geographic area, they can bar your use of your mark if they come into your area in the future.

3. ORGANIZING THE BUSINESS-Once you have a name, you should formally incorporate the business. The advantage of doing this is that by incorporating your business and maintaining the necessary corporate formalities over time, the corporation becomes a separate entity apart from the individuals who organize it and those individuals cannot be held liable for the corporation’s actions with certain exceptions. A corporate officer can still be held individually liable for criminal activities, negligence or fraud. In incorporating, you can be a C corporation, in which the corporation pays taxes, an S corporation, in which the corporation’s income and losses flow-through to its shareholders who pay taxes on them or a limited liability company (LLC) which may be taxed in the same manner as either an S corporation or a C corporation. How you are taxed is important; e.g., if you have a day job and your start-up is a money-loser at first, you may want to take its losses personally, whether it is an LLC or a corporation. There are other important tax consideration involved which should be considered if you are trying to decide if you wish to become a corporation or an LLC. The most important consideration, in my mind, if you’re a start-up, is if you intend or need to raise capital from third-parties in the future. With a corporation; doing so is easy, you sell them shares of stock in the corporation. Furthermore, the Articles of Incorporation can determine which shareholders control the management of the business and which don’t. An LLC cannot sell shares of stock to outsiders because it does not have any stock. However, there are less corporate formalities involved with an LLC. So if your enterprise is of limited duration, e.g., you’re developing real estate, which, hopefully, will be sold in a short time or it’s a family business that will always be in the family, or it’s akin to a partnership and you don’t intend to keep the business going without your partner, then an LLC may be the way to go.

4. REGISTRATION-In addition to incorporating your business or organizing your LLC with the state Secretary of State, you should register your name, if it is the name of the product or service that you are offering, with the U.S. Patent & Trademark Office as a trademark. Doing so not only gives you the presumption of the exclusive right to use that mark nationally but your mark becomes a matter of record in the Patent Office where potential competitors will see it if they conduct a search and, hopefully, steer clear of using a similar term. [Note that there are may be other regulatory requirements that may have to be met, depending on the nature of the business, whether it has employees or not and the products that it sells, e.g., drugs and financial products.]

5. WHEN BAD THINGS HAPPEN TO GOOD PEOPLE-Sometimes you’ll make a mistake; use a trademark that belongs to someone else, use music or a photo of a model that someone else has the rights to or pick a business name that may be distinguishable from someone else’s but still similar to that other party’s. Hopefully, these things won’t happen, but if they do and you get a stern letter from someone else’s lawyer, remember the following; (a) don’t ignore the letter, (b) retain an attorney and have him or her respond to it as soon as possible, even if your attorney’s initial response is merely, “he just got hired and needs to find out what’s going on” [Note, handling it yourself suggests you can’t afford an attorney and if money is potentially at issue, the effect of this will be analogous to swimming with an open wound in a shark pen.], and (c) don’t let emotion get in the way; remember business is business and litigation is part of business. In order to run a business successfully, there must be a significant amount of certainty and predictability in its operation. Litigation is unpredictable and often uncontrollable, both in terms of expense and outcome. That is why the outcome of most lawsuits is a settlement and not a judgment. Determine what your goal is and how you can most quickly and inexpensively reach that goal. If the other side sets conditions that makes meeting your goal impossible; what are the odds and costs of winning at litigation. If the odds are in your favor, and a good lawyer should give you an honest appraisal of those odds, you may be able to convince the other side of this, presumably it doesn’t want to lose its case, and you may be able to reach your goal despite the other side’s opening combativeness. If, on the other hand, your odds are closer to 50-50, then litigation becomes an expensive gamble. and, unless, you can afford to roll those dice, then preservation of your business’ existence and its assets, particularly its goodwill, should be your primary concern.

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PROTECTING YOUR TRADEMARK FOR YOUR NEW OLD PRODUCT FOR THE NEW ECONOMY

Posted on March 30, 2011 by ERIC WACHSPRESS

Reuters reported today that consumer spending rose in February for the eighth straight month, by .3%. However, prices rose .4% that same month. Probably not coincidentally, the New York Times wrote on February 25th under the title “Consumers Hold On to Products Longer” that “For a number of products-cars, phones, computers, even shampoo and toothpaste-the data shows a slowing of product life cycles and consumption.” One analyst quoted in the article wrote, “People are squeezing the last bit out of the shampoo. They seem to be adding more water to really squeeze out the last bit.” Since Reuters also reported that “Consumer spending accounts for about 70% of U.S. economic activity,” if these trends are true, future economic growth may be stunted for some time.

If there is little perceived demand for new products, there will be little incentive for businesses to invest money in researching and developing new products; which in the intellectual property business means there will be less patents to prosecute and fewer new brand names that will require trademark protection.

But maybe not. There is a plethora of potential products and services that could find markets or larger markets in this new economy and generate economic activity. Here are some examples; Tablet computers (as a substitute for a laptop or a second computer at home), sewing machines, hand-powered lawn mowers, home improvement stores, DIY products such as toilet repair kits, ceiling fans, window air conditioning units, floor tiles, paint and laminate flooring found in those stores, portable ramps for driveway use so one can change one’s own oil, home exchanges (providing free lodging), TV antennas (for individuals who want to cut their connection with the cable company), on-line video-on-demand (Cable or satellite subscriptions or movie tickets not required.), and turboprop airplanes (a 50-seat regional jet breaks even with 45 seats filled; a turboprop breaks even with 35 seats filled.)

So, both on the ground, economically, and, in the air, things are likely to be bumpy for a while. Registering your new product or service name can make things smoother by allowing you to sue for infringement of your brand name in federal court, providing notice to third-parties of your claim of exclusive right to that name, having that registration serve as prima facie evidence of the validity of your name or design as a trademark or service mark, of your ownership of that mark and of your exclusive right to use that mark and that mark, once registered, by its existence on the Patent Office Principal Register, will provide notice to third-parties of your claim of exclusive right to it.

hanks,

Eric Wachspress
Attorney-at-Law
417 S. Jefferson St., #304
Chicago, Illinois 60607 USA
Telephone: 1.773.934.5855
Facsimile: 1.312.583.1083
www.markscounsel.com

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LEGAL LIABILITY FOR FAMILY SNAPSHOTS?

Posted on March 29, 2011 by ERIC WACHSPRESS

A PDA may be a definition for a “Personal Digital Assistant,” an electronic device which may include calendar functions, note taking functions, a simple word-processor, a calculator, etc. Stand-alone PDA’s have now largely been supplanted by smartphones. PDA may also, however, refer to a “Public Display of Affection,” including, but not limited to, hugging, kissing or even “grinding.” Those types of PDA’s are illegal in such countries as India, Pakistan, South Africa & North Korea. In Utah, a Walgreen’s photo technician discovered photos of a man kissing a naked baby on his face and buttocks. That man was subsequently arrested and deported, his wife was  also arrested, and the child removed from the home. Those charges were later dropped after police determined that there had been no sexual abuse; rather the prosecutors, upon consideration of all of the photographs taken at the time, determined the accused was merely a proud father kissing his baby after a bath.

Lesson learned; those cute pictures of your baby having her diaper changed and Dad puking, or pulling off her swimsuit in the backyard blow-up pool may best be kept in one’s personal archives and not posted on Facebook or Flickr. Posting such shots on the web may attract pedophiles, put the parents at risk of prosecution or, even more significantly, may find their way into some undesirable’s  photo collection.

Thanks to digital photography such images can be stored and viewed within the confines of one’s own computer and on one’s own video screen. It’s probably best that such “endearing” images be kept within those confines….and don’t forget to archive them, at home only, so they can reappear on the eve of the photographed individual’s betrothal and displayed to his or her intended.

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HOW TO CHEAPLY PROTECT YOUR IDEA

Posted on March 9, 2011 by ERIC WACHSPRESS

In the New York Times’ “You’re the Boss” column dated February 21, 2011 subtitled “The Art of Running a Small Business” the author, David H. Freedman, wrote “Got a Great Idea? Tell Everyone!” In that column, he cites the example of an individual who started a company that got off to a great start only to be eclipsed by Facebook’s decision to allow outsiders to develop applications for its site. In my opinion, that individual’s mistake was not in not telling others of his idea but rather in not investigating whether his idea was already being used by others.

There is this amazing app called the Internet and there exists a variety of search engines on it; Google, Bing & Safari, to name the most popular, that will allow you to see if your idea may, in fact, already have been developed by someone else. You can also go to the main Google page, click on “more” then click on “Scholar” and search patents that may have incorporated your idea.

IMPORTANT NOTE & DISCLAIMER-I do not recommend doing this in lieu of having a patent attorney conduct a search for you nor will the disclosure of a similar invention to your idea in this database mean that your idea either infringes a patent or is unavailable for your use; this can only be determined by the opinion of a licensed patent attorney.

As shown in the movie, “The Social Network,” telling someone your idea may have unforeseen consequences. Just ask the Winklevoss twins who suggested to Mark Zuckerberg the idea of creating an on-line social network for Harvard students named HarvardConnection which was to be expanded to other schools around the country.

Therefore, before you show your idea to anyone other than your lawyer with whom you should have a privileged relationship; such as a potential investor, customer, etc. (even a girlfriend or boyfriend), have them sign a nondisclosure agreement. They’re short, and inexpensive insurance that a lawyer can prepare for you that obligates the person or entity to whom you describe your idea not to disclose or use it without your permission.

If your idea is fixed in written form, such as a script or computer code, you may wish to consider obtaining a copyright registration for it. Consider before you do so, however, that once you do this, that work will become a matter of public record in the U.S. Copyright Office. On the other hand, once registered, you can obtain statutory damages for its later infringement.

If your idea is that of a distinctive brand name for a product or service that you are likely to market in the future, you can file an intent-to-use application to register that brand name as a trademark or service mark with the U.S. Patent and Trademark Office.

If your idea is a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, you may wish to file a provisional patent application for it. It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application and allows the term “Patent Pending” to be applied in connection with the description of your invention. Note, however, that a provisional application for patent (provisional application) has a pendency lasting only 12 months from the date the provisional application is filed and cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. The provisional application filing fee for a small entity is currently $110.00.

So don’t tell everyone about your Great Idea before contacting an attorney who concentrates in trademark, copyright or patent law and spending less than a couple of thousand dollars to obtain initial protection for that idea. In most cases you wouldn’t be pursuing that idea if you didn’t think that ultimately you would be making a living off of it; you’re not pursuing it as a hobby.

Don’t blow that opportunity!

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IS STEVE JOBS THE NEW WALT DISNEY?

Posted on October 21, 2010 by ERIC WACHSPRESS

Has Steve Jobs become the post-boomer generation’s Walt Disney? It is beginning to look that way. Walt Disney coined the phrase “Imagineering,” which comes from the blending of the words imagination and engineering, to describe the design and development arm of The Walt Disney Company. According to the Wikipedia entry on Imagineering, “Imagineers” are renowned for their ability to blend creativity, expertise, and technological advancements.” That description may be applicable to Apple’s designers of the iPhone, the iPod, the iPad and other Apple products, which, by the way, this blog is NOT being written on.

Indeed, Apple’s “Imagineers” are attracting more visitors to Apple’s “theme parks,” namely its Apple stores, than Disney’s “Imagineers” are attracting to its theme parks. According to a chart published on theAtlantic.com on October 19, 2010, Apple’s retail stores attracted more than 74.5 million visitors last quarter alone. In all of 2009 both Disneyland and Disney World combined attracted less than 40 million visitors. As the baby boomers looked forward to watch “The Wonderful World of Disney,” post baby-boomers watch Steve Jobs’ presentations of what the “Imagineers” at Apple have come up with and then flock to see the real thing at an Apple Store theme park.

This has led Microsoft to open up brick and mortar stores in California, Arizona, Colorado, Minnesota, Seattle and Chicago. The battle between the PC and the MAC appears headed to the streets.

In the meantime, advertisers beware…Apple has filed trademark applications for THERE’S AN APP FOR THAT for, among other services, “Retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics.” So unless one wants to suffer the same fate as Sir Issac Newton, stay away from using that phrase in your advertising.

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IHOP VS. INTERNATIONAL HOUSE OF PRAYER

Posted on October 21, 2010 by ERIC WACHSPRESS

The New York times reported on September 15th that the International House of Pancakes, owner of, among other registered trademarks, U.S. Service Mark Registration 3,429,405 for the mark, IHOP, for “Restaurant Services,” was suing a Kansas City church known as the International House of Prayer for trademark infringement. According to the report, a restaurant spokesman “said the church has expanded and some branches are serving food.” According to the church’s web site, “Our new ministries and outreaches include increasing our current inner city work with a mobile food truck and on-site food distribution, discipleship programs, a health clinic, provision of food and clothing for our children’s outreaches, big brother and big sister programs, and an adopt-a-block program. Other new outreaches include Hannah’s Dream adoption agency and Exodus Cry, helping victims of human trafficking. In the future we plan to establish a Women’s Life Center, which will provide homes and restoration programs for victims of human trafficking, domestic violence, prostitutes who respond to the gospel, and a crisis pregnancy center and birth mother homes to help women who refuse abortion and choose life. We believe ministry is done best when our lives are rooted in prayer and worship that focuses on intimacy with God, as we intercede for a breakthrough of the fullness of God’s power.” See http://www.ihop.org/

Under these circumstances, prayer and worship may not be enough, trademark counsel may be needed. One of the issues that may be raised in this case is whether the services of providing food for the needy is likely to be confused with the services of providing “New York Cheesecake Pancakes” to the hungry.

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CREATING PROTOTYPES QUICKLY & INEXPENSIVELY

Posted on October 20, 2010 by ERIC WACHSPRESS

In the classic sci-fi film Metropolis the workers who man the machines that are essential to making that city work revolt against their masters flooding and destroying their own quarters beneath that city. With each passing day we see French workers blocking essential fuel supplies and rioting in the street to protest a rise in the retirement age. America increasingly is becoming more dependent on Chinese workers for all sorts of manufactured goods.

Now, imagine if you could produce goods without workers. A New York Times article published on September 13th raises this tantalizing possibility. See http://www.nytimes.com/2010/09/14/technology/14print.html?scp=1&sq=3-d%20printing%20spurs%20a%20manufacturing%20revolution&st=Search A technology known as 3-D printing can be used to create an object by stacking layers of plastic or metal material on top of one another. This technology can enable inventors and developers of new products to build prototypes themselves while sitting at their keyboards quickly and relatively inexpensively.

But now that technology has been extended further, to the manufacture of iPhone cases, lamps, doorknobs, jewelry and, potentially, entire houses, by squirting out layers of a special concrete that can be used to build entire walls. See http://www.freedomofcreation.com/collection for examples.

What this could mean for our future; a world with millions unemployed, restless and idle, could make for another classic not so sci-fi film.

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LEGO PRODUCT SHAPE NOT PROTECTED UNDER EURO T.M. LAW

Posted on September 14, 2010 by ERIC WACHSPRESS

As a footnote to my blog entry on “Protecting Your Product Design,” the Associated Press reported today that Lego lost a final trademark ruling in the European Court of Justice in Luxembourg to the effect that “Lego’s [toy] bricks can’t be legally protected by trademark law because their two rows of interlocking studs are a functional, technical shape that cannot become the property of any one company.” Lego’s patents for its toy design had already expired. The European court’s decision, which has no precedential value in the U.S., stated that “companies can’t use trademark law to indefinitely perpetuate exclusive rights relating to technical solutions.” See U.S. Registration #2,922,658, the subject of which is depicted below, for a different result.

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Doing Business in China

Posted on June 13, 2010 by ERIC WACHSPRESS

I often counsel clients who want to have their goods manufactured in China that they use caution, know who their manufacturer is, and make sure that their manufacturer is made aware that any branded product that it makes for them is distributed only through trade channels that the client has previously authorized. If a trademark owner loses control over the nature and quality of the goods sold under a particular trademark, a court may find that it has abandoned its mark. A trademark owner should take care to register its mark in China prior to doing business there and have a written agreement with its Chinese manufacturer ensuring that that manufacturer makes its product in accordance with its instructions and acknowledging that that product is the subject of trademark and/or patent protection as the case may be. That agreement should identify those trademarks and patents by number and country of issue and list specific measures that the trademark owner must take to ensure that the manufactured goods meet its quality standards. These standards should not only apply to the product itself but should apply to its labeling and packaging if that labeling and packaging is being sourced abroad as well. That agreement should also ensure that the product meets applicable U.S. regulatory standards if it is intended to be imported into the United States, e.g., FDA standards, if a cosmetic, or FCC standards, if it emits electromagnetic radiation. Finally, the agreement should leave no room for ambiguity and if necessary, therefore, both an English and Chinese version should be provided, carefully translated to ensure that the language in both versions has the same meaning.

Two examples of what can go wrong with Chinese suppliers follow. The BBC reported that Jaffa oranges, named after the city of Jaffa in Israel and famous for their sweetness, began showing up in Iranian warehouses. The problem with this is that Iran has no commercial relations with Israel and its President, Mahmoud Ahmadinejad, is alleged to have, on October 26, 2005, called for wiping Israel off of the map. (Ahmadinejad later said that that comment had been exaggerated and misinterpreted.) In any case, how did Israeli oranges end up in Iran? Because they weren’t Israeli oranges. They were Chinese oranges infringing the Israeli’s source’s trademark. And going from oranges to apples, the New York Times has reported that hundreds of small Chinese companies are counterfeiting Apple, Nokia and Samsung cell phones, evading taxes, fees and safety regulations. New technology has made this easier, making it possible to have a single chip perform a multitude of cell phone functions. The result is Sumsung and Nokia cell phones sold for dollars less than their Samsung and Nokia originals. As quoted in the New York Times article, “It’s really common for factories to do a night shift for other companies.”

For an engaging read about how Chinese companies counterfeit tennis shoes with depictions of both real and fake items, see http://www.nytimes.com/2010/08/22/magazine/22fake-t.html?pagewanted=1&hp

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PROTECTING YOUR TRADE SECRETS-A LESSON

Posted on June 2, 2010 by ERIC WACHSPRESS

In an earlier posting entitled “Minding Your Own Business Or Keeping Your Trade Secrets Secret” I discussed various measures that an entity can take to maintain the confidentiality and the value of its trade secrets. The Illinois Trade Secrets Act defines a “Trade Secret” as information, including but not limited to, technical or non-technical data, a formula, pattern, compilation, program, device, method, technique, drawing, process, financial data, or list of actual or potential customers or suppliers, that (1) is sufficiently secret to derive economic value, actual or potential, from not being generally known to other persons who can obtain economic value from its disclosure or use; and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy or confidentiality. The latter is important; in order to claim trade secret protection for your proprietary information, you have to take reasonable steps to maintain its secrecy or confidentiality.

In the case of the Thomas’ English muffin, with its array of nooks and crannies, the company, Bimbo Bakeries USA, that owns the formula for it, according to the New York Times on August 6th, took numerous steps to maintain that formula. These included provide access to that formula to only seven people, placing recipes in confidential documents called “code books,” compartmentalizing information so that only particular individuals know particular pieces of information, and sharing that information among others only on a need-to-know basis. For example, while certain individuals knew the basic recipe and others the special equipment used to bake the muffins and others how the muffins were baked, only seven individuals knew the details of the whole process.

A problem arose when one of those individuals, a Vice President,
left Bimbo on two weeks notice to take a job with Hostess, a major competitor of Bimbo in the bakery business. He signed a confidentiality agreement but no non-compete agreement so he was free to leave, and before he left he copied numerous confidential company files onto a flash
drive. Last February, a federal judge enjoined the VP from going to Hostess and Hostess said he no longer had a job with it.
The lessons here; (1) you should limit the number of individuals who know the entire process
involved in making your key products, (2) make key employees, at least, sign not only
agreements barring them from leaving your employ and competing with you afterwards [These must be for reasonable period of time and cover a reasonable geographic area.], but also barring them from disclosing your trade secrets and using those trade secrets in their next job, (3) require
that they return or destroy any company information that they have in their possession upon their leaving your company and make them certify that they have done so, (4) put the employee on notice of these requirements when they start their job, during the period of their employment and upon their leaving in an “exit interview” and (5) include language in those agreements that if they violate them, you sue them and they lose, that they have to pay everyone’s legal fees involved.

The moral here, the best offense is a good defense and trust, but verify

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USING THIRD-PARTY WEB DEVELOPERS

Posted on June 1, 2010 by ERIC WACHSPRESS

The following entry should not be taken as a plug for the movie of the above name that is set for release this October 1st and is described by Columbia Pictures in a press release as the story of how Mark Zuckerberg, the founder of Facebook, became the youngest billionaire in history.

However, when the movie does come out, I will be wondering whether it will include the story of a certain Paul Ceglia who is claiming he owns 84% of Facebook based on a “work for hire” website development contract. Or whether it will include the story of how a New York state court judge granted a temporary restraining order prohibiting the transfer of Facebook’s nearly $25,000,000,000 in assets until this dispute is resolved. Zuckerberg reportedly worked for Ceglia as a computer coder according to Zuckerberg’s lawyer, Lisa Simpson. (That’s right, that’s her name…we all wondered what Lisa would do when she grew up!) According to a Bloomberg news  report, for a variety of reasons, Facebook is postponing its IPO until next year.

The lesson to be learned here is that, with a few limited exceptions, the general rule is that the person who creates a work is the author and owns the copyright in it unless you’re his or her employer. If you retain a creative type to do some creative work for you and you’re not his or her employer, e.g., pay that individual a salary or benefits, unless you have him or her execute an agreement granting you ownership in the work prior to the time he or she starts creating that work for you, he or she owns it, not you, and you will need a copyright assignment back from the creator/author to obtain ownership rights in it later on. And if he sees money coming out of his creation at that point, he or she may own you as well as the work.

This is particularly an issue when you hire an outsider to create your web site or do any software development for you. You may think you’re the owner of a video game business, on-line auction business, or on-line medical records business, for example, but if you hired an outside consultant who created the game, auction site, or medical records technology, you may find yourself in court trying to prevent that consultant from taking your business away. So consider, in those circumstances, getting a non-compete and confidentiality agreement from that developer as well. If you seek to save money by hiring an off-shore developer, these agreements becomes even more critical. You may not want to have to defend your intellectual property rights in a Macedonian court.

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PROTECTING YOUR PRODUCT DESIGN USING TRADEMARK LAW (CONT.)

Posted on May 28, 2010 by ERIC WACHSPRESS

On April 15th I posted an entry on how to protect your product design using trademark law. Last month, it was reported that Hershey had filed a trademark infringement claim against Williams-Sonoma alleging that the latter company had violated its trademark rights by copying the design of its chocolate bar by creating a brownie pan comprising twelve rectangles. Hershey also asserted that Williams-Sonoma had “embodied and mimicked” its registered trademark by packaging its pan in a manner intended to make it look like a Hershey bar. The federally registered Hershey trademark is the subject of U.S. Trademark Registration #3,668,662 and is depicted below. Hershey followed up this registration by filing an application with the U.S. Patent and Trademark Office, #77809223, which is still pending, for the same design with the word Hershey’s omitted from it.

So you can protect your product design by means of a trademark registration.

And you can use that registration as a weapon to go after copycats.

And if you develop a distinctive product design, it may be worth conducting a clearance search of the Patent Office’s trademark records before you market it in order to make sure no one created that design first.

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SELECTING GOOD TRADEMARKS-A GAME

Posted on May 19, 2010 by ERIC WACHSPRESS

In my first blog entry I discussed “Selecting a Trademark and Creating a Brand Identity.” For fun, I thought that I’d pick some products and have you, the readers of my blog, apply what I wrote in that entry to pick names for those products:

Product #1-You are a large multinational oil company. One of your most technologically advanced drilling platforms just exploded and sunk into the sea and the well that you were
drilling is gushing tens of thousands of barrels of oil killing marine wildlife and blackening beaches for hundred of miles. To improve your brand identity, you have decided to rename your gas stations, not your corporation, in the affected county. Select a new brand for those gas stations.

Product #2-You are a large pharmaceutical company. You have developed a drug that, like Viagra, aids in treating sexual dysfunction, however, this time in women. You need to find a brand name that will work with the appropriate television commercials and can also be used to sponsor ladies’ professional golf events as well as other related sports opportunities. Select a name for this drug.
Product #3-You are a Chinese company that has developed a revolutionary battery technology that will allow automobiles to be driven up to 250 miles on the highway without gasoline or a charge. However, you are also the first Chinese company to sell automobiles in the United States so you need to come up with an automobile brand that evokes not only a “green” theme but also carries the message that a Chinese car will last as long and be as well-built as a Japanese car. The name has to be used in other countries as well. [Note that as this car is made in China, it will sell for less than its American or Japanese counterparts.] Select a name for this car.
Product#4-The city of New York wants to install cameras all over the city as London has as an anti-terrorism measure. You are a multinational supplier of electronic equipment and want to sell this system to New York. If it is successful in New York, you want to sell it to other cities that are at risk for terrorist attack either because of their size and location or because they are hosting major international events that may make them a terrorist target. Select a slogan that this company can use to market this system both in presentations to those cities and in television commercials directed to decision makers on cable news channels.

I will check the names that you supply with the records of the United States Patent and Trademark Office and in a future blog entry list all of the names that I get that are already
registered or are the subject of applications for the same or related goods or list those names that are unlikely to get registered because they’re merely descriptive or generic or are otherwise prohibited under the U.S. Trademark Act.

Give it a try!

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SHANGHAI PIRATES

Posted on May 19, 2010 by ERIC WACHSPRESS

On May 1st, China opened its World’s Fair, Expo 2010, in Shanghai. People visiting that city to attend the World’s Fair may have to look a little harder to pick up the latest new releases on DVD. As reported in the New York Times, a few weeks before the Fair opened, government inspectors ordered shops selling bootleg DVD’s and CD’s to remove them from store shelves.

How did those shops respond? They divided their stores into two sections, a front section that sells legal DVD’S and a hidden section that sells illegal titles, often behind a slide-away bookshelf. A representative of the Motion Picture Association of America called the situation troubling.

The business is a competitive one. Across the street from “Movie World” is its competitor “Even Better Than Movie World.”

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