Category Archives: Trademark Law Updates

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Strong Brands or Trademarks and Product Quality Often Lead to Mergers and Acquisitions!

  The more well-known a particular brand or trademark, the more likely it will be a good basis for a merger or acquisition.  A well-known brand or trademark along with good product quality leads to customer loyalty.  Generally, this well-known … Continue reading

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Scandalous and Disparaging or First Amendment Protected Free Speech? To Trademark or Not to Trademark?

There was a new Ruling by the Federal Circuit Court of Appeals that stated that the First Amendment Protects the use of the trademark “Slant” by a music band and it is entitled to register the mark.  This in stark … Continue reading

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Change Management Protocols and Drafting Good Master Technology Service Agreements!

How do you draft a good Master Technology Service Agreement?  What do you consider?  What is reasonable? What is foreseeable?  What is too remote? How do you respond to an Evidence Preservation Letter? What is your clients’ doom and gloom fears?  These are all things that all technology and information technology consultants and teams have to consider and make good decisions on.  Without having a good team of professionals that can identify the areas of risk for the clients, the method and means of exploiting known or identified vulnerabilities, and creating a prompt data security protection protocol you may end up losing out from a change in ISPs or IT vendors.

Having good change management procedures is vital to the success of your clients and to protect them from many would be competitors looking to acquire your clients’ knowledge, trade secrets and intellectual property.  A good first step for protecting your clients is using good provisions in your Master Technology Service Agreements that all vendors have to comply with to ensure that the proper procedures are followed to ensure that key personnel, key clients, key vulnerabilities, key consultants and key terms and caveats are negotiated and drafted to protect against reasonably anticipated problems.

The Master TSA allows for a method of interjecting vital controls that can be adapted to the needs of the clients–sometimes all that is needed is a wise and seasoned Chief Technology Officer (“CTO”).  Other times–key schedules and predefined procedures to follow for implement changes in information technology services or hardware.  Sometimes good limitations on damages, warranties and representations and third party indemnification provisions are required to ensure that your clients are protected from potential errors in the change management procedures.

Finally, having good enforcement and corrective actions predefined and provided for in the Master TSA will save you a lot of headaches down the line–including delays based on the need for board or shareholder’s approval, manager or member’s approval, or similar delays that may be required in following corporate formalities.  Sometimes a rigid adherence to corporate formalities can allow a problem to become bigger over time and based on delays–it is generally advisable to deal with these types of data security problems sooner rather than later.

For more go to: http://www.bipeblawg.com, http://www.vrplawgroup.com, http://www.eebrunchclub.com

EEBC-It’s Just Brunch Club! Fall 2014 Start Up Competition–Special Thank You to the Panelists!

Third Installment of the Fall 2014 Competition Thank You to the Panelists! Paul Durbin of Miller and Canfield, Lt. Governor Sheila Simon running for Comptroller of Illinois, Ron Kirschner founder of Heartland Angels, Tom Kastner Woodbridge International and GP Ventures, William Bennett of Level Office and Vihar R. Patel  Founder of EEBC-It’s Just Brunch Club! and Managing Attorney for VRP Law Group.

This was a special privilege and honor to have the collective experience, guidance and wisdom of all the panelists to be a great opportunity for the sharing and exchanging of ideas and knowledge for the benefit of Chicago Entrepreneurs and the StartUp Community!

For more go to: http://www.eebrunchclub.com or http://www.vrplawgroup.com Fall2014EEBC_Thank You_Announced_Press Release_102314

EEBC-Its’ Just Brunch Club Fall 2014 Start Up Competition’s Winners Announced!

EEBC-It’s Just Brunch Club! Fall 2014 Start Up Competition’s Winners Announced: on October 18, 2014 the EEBC-It’s Just Brunch Club! held its Third Installment of the Quarterly Competition entrepreneurs, executives, professionals, angels, venture capitalists, Chicagoans were able to compete for money and opportunities to be funded by local angels, venture capitalists and investors.

Tie for First Place goes to: Len Bland of Nano Gas Technologies and Karl Schmidt and Paul Niedmann of Prescient Audio; Third Place goes to Joshua Millman and Passion House Coffee and Harsh Mulik-Hum Life 360.  For more go to: http://www.eebrunchclub.com or http://www.vrplawgroup.com

Thanks and all the best. Fall2014EEBCWINNERS_Announced_Press Release

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Trademark Regulations and the Likelihood of Confusion test for trademarks of Similar Sounding Characters!

The analysis of trademark infringement and likelihood of confusion is really a question of the nature and character of the mark and the commercial impression it creates in the minds of the consumer.  First, and foremost, a trademark has to be a known word in the English language to be pronounced as a word in the English language.  Also, in order to ensure that a trademark is pronounced properly in a foreign language or under the doctrine of foreign equivalence–the mark must actually be a known word in some language before there is anything to do with pronouncing a word properly.

For example, the word STON and the word STONE although similar in appearance are not pronounced in the exact same way.  In fact, it is important for you to first, recognize what the word is as either, a slang term or an actual English or foreign dictionary with slang translations.  If there are any other similarities in appearance, the appearance must be consistent with the official English or Foreign language translations before the words can be considered similar with respect to their actual appearance.  Although there may be some chance that someone mistakenly assumes that the STON mark is the same in appearance as the STONE mark, the reality is the commercial appearance and impression of the marks in the marketplace is what controls.

Otherwise, the consumers will recognize that STON as used in the marketplace is not even a recognized word and not pronounce it in the same way as the actual English word of STONE.  Thus, you cannot utilize definitions that are consistent with the English language for something that is not an actual known word.  Moreover, to apply the doctrine of foreign equivalence the word must be an actual foreign word to be considered to be the equivalent of the English equivalent.  It will not be considered a foreign word if, it does not have the same characters as a known foreign word.  Moreover, the mark STON has no foreign equivalents, thus, there is no way for any of the definitions or translations STONE to be used to provide an equivalent meaning for STON.

For more go to:   13-1448.Opinion.7-14-2014.1

The Use of Disclaimers in the Context of Trademark Infringement Online!

The value of trademarks and trademark portfolios is in the ability to develop an online brand, increase your SEO ranking, and developing a good key word optimization site that allows you to acquire more online visitors than your competitors.  This is not the easiest thing to do, in light of, how often Google changes the webmaster policies or rules.  Moreover, the nature of organic search results is such that it does not stay constant, but is fluid–these organic searches that are performed by consumers are not going to be the same each month, quarter or year.

In addition, the use of disclaimers for trademark infringement you must be careful to ensure that your competitor is not able to diminish the effectiveness of the disclaimer by placing it in less visible area of the website.  If you are not careful the fees and expenses incurred or spent on a preliminary injunction will be wasted.  It is difficult to judge the effectiveness of a disclaimer, but the more prominent the disclaimer and the less likely it will be easily avoided by a consumer by clicking through a link or special portal the better off you will be as an online business operator.

If you take the time to develop a content rich website and develop a good SEO optimization strategy, then you want to ensure that it is adequately protected.   More importantly, if you expend the funds in acquiring a disclaimer to remedy consumer confusion, then you must make sure that at least the following is done:

1) the disclaimer is prominent in relation to the remaining content on the website;

2) the disclaimer is bolded, italicized, font and color are actually large and vibrant enough to ensure that it is easy for a consumer to find;

3) moreover, the disclaimer must be from a click through portal that requires the consumer to acknowledge that each has read and viewed the disclaimer;

4) also, the disclaimer must be such that it is only, avoidable after the issue of initial interest confusion has be resolved; and

5) the disclaimer is not subject to alteration or modification by online search robots.

This is a common concern in most trademark infringement matters or opinions in recent cases.  Often times, lawyers do their clients a disservice by winning the preliminary judgment hearing and failing to take the time to craft an appropriate disclaimer or include the appropriate language in the Judge’s Order.  See the following:  International Kennel Club, Inc. v. Mighty Star, Inc and Std. Process, Inc. v. Banks, 554 F. Supp Std. Process, Inc. v. Banks

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Managing International Transactions for Corporate Clients!

There are variety of challenges and obstacles to assisting clients in making sure that they are able to transfer distribution channels, facilities, and operations overseas.  Clients need to understand the layout of the land, the local customs and regulations on … Continue reading

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