Tag Archives: business lawyer chicago

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Gender discrimination in Silicon Valley and the Startup and VC Industry!

Gender discrimination may be more prevalent in Silicon Valley, the Startup and VC culture than most realize.  The reality is that most partners, VCs and Startup CEOs are men.  The Ellen Pao trial has brought these issues to light, but … Continue reading

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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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Attorneys’ Fees and Business, Civil and Commercial Litigation: What can be released and what cannot?

In an interesting Ruling from the IL First District Appellate Court, a panel found that it was not possible for the parties to a divorce proceeding to contractually waive the attorneys’ right to legal fees or file a fee petition. … Continue reading

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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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The Illinois Right of Publicity Act and the Commercial use of Another’s Identity!

There are many forms of intangible rights that protect individuals from those that may be looking to trade of your identity.   In Illinois,  your identity, such as your name, likeness,  image, voice, alias and other features that serve to identify who you are protected from rip-off artists and scammers.  A nice feature for artists, entertainers, actors, musicians, authors, designers, film producers, videographers, photographers, speakers, professors,  doctors, attorneys,  judges and politicians.

The statute provides for 1000 in statutory damages per violation, plus allows for the recovery of legal fees and costs for the prevailing party.  It is a codification of one of the oldest forms of intellectual property rights, your Likeness.   This was recognized at common law long before the existence of copyrights, patents, and trademarks. Other than trade secrets, it may be the oldest form of intangible right or asset a person can own.

The Act requires strict compliance and a written authorization from the person before any aspects of his or her identity can be used by another.   Working with an attorney that understands how your Identity is related to your business and personal affairs is vital to making sure you protect against all rip off artists.   If someone is misusing your photographs, image, voice, alias or other intangible features of your identity, then please contact us at http://www.vrplawgroup.com

TTAB Cancellation Proceedings, Timing of Motions for Summary Judgment, and Motions for Reconsideration!

It is surprising how often clients will not realize that the TTAB Opposition and Cancellation Proceedings are litigation proceedings.  They are administrative in nature, but the Federal Rules of Civil Procedure and Federal Rules of Evidence still apply.  Thus, filing a summary judgment can often be an effective method of resolving cancellation and opposition proceedings with the TTAB.   The TTAB’s rules do have some nuisances, such as the requirement that the parties exchange 26 (a) (1) disclosures before filing a summary judgment motion.

However, even in most Court proceedings the parties will not file a summary judgment motion, until after both sides have had an opportunity to complete discovery.  Unfortunately, the TTAB and its attorneys are not necessarily used to making rulings on evidentiary issues, motions in limine, and a variety of other areas of trial practice.  Thus, often times the TTAB does make mistakes on key evidentiary issues, standards of law and application of trial standards to TTAB cancellation and opposition practice.

Moreover, over often times, many TTAB Attorneys do not realize the need for a summary judgment to be decided based on admissible evidence.  The same standard applies to summary judgment motions in front of TTAB.  Thus, it is not unusual for the TTAB to make an error of law and require a party to file a motion for reconsideration.  In fact, many times this can be good opportunity to create your record for an appeal to a federal court that may be more comfortable with ruling upon evidentiary issues and deciding summary judgment motions based on Federal Rule of Civil Procedure 56.

Parties are allowed to appeal final decisions from the TTAB to their local Federal Courts, D.C. Circuits or the Federal Circuit and the Supreme Court.  Moreover, the parties may even be allowed to offer new or evidence that was excluded from the TTAB proceedings.  However, the TTAB does offer an Accelerated Case Resolution Process that can be used to have summary judgment motions be used for trial purposes. This can often be a cost saving and effective strategy for dispositions of the TTAB proceeding for both parties.

Thus, working with a Trademark Attorney that has Federal Court Litigation and Trial experience is vital to the success of a TTAB cancellation or opposition proceeding.  If you have any concerns or questions, then please feel free to contact us at http://www.vrplawgroup.,com

The art of Negotiating Commercial Agreements and Making Sure You manage Legal Risk without Pissing off your Customer or Partner!

Negotiating commercial agreements requires a certain combination of preparation, skill, art, anticipation, guess work and sometimes just dumb luck to ensure that you are able to come to terms that are satisfactory to both sides.  If you push too hard and you ask for too much, then you are likely to meet stiff resistance and encounter more obstacles to working out a deal or reaching an agreement.   Preparation is key in this respect, know the industry, know what is standard, know what you do not know, know the other side’s hot buttons and concerns, know your bottom line and know your risk tolerance, and lastly be creative–not everything has to be the same as it was before.

There are many ways to negotiate around and draft around concerns that both parties have.  Foster an atmosphere of frank and open discussion about the issues that both sides are trying to manage.  Understand when the other side is making a reasonable request.  Make sure you are not being unreasonable, but do not be afraid to ask for what you want.   A good negotiator and a contract draft can usually find a way to appease both sides.   However, if the parties are not willing to discussing business points and openly air their concerns, then it is hard to identify the business driver for the negotiations.  In this case, it is really hard for both sides to come to terms and agreement, because neither, sides are discussing the real obstacle to the deal.

While it is true that sometimes you may be able to get what you want, because the other party is lacking in sophistication, the reality is that anyone can play hide the ball or withhold information.  It doesn’t take a genius to recognize when the other side is not being forthcoming or is being less than candid with you.   Thus, it inherently leads to a scenario where the other side reacts and conducts him, her or itself in the same manner.  Often times, the sophisticated party doesn’t realize that they have fell for the oldest trick in the book.  No matter what concerns or risks you are trying to manage the more frank and candid you are the more likely that you are to bridge the gap and come to an agreement.

Often times, concerns surround legal ease or boiler plate that is outdated and unenforceable.  In fact, sometimes the more you overreach the less protection the law and contract interpretation principles will award you.  Many times, I have advised clients to just not worry about something that is unenforceable, but being a litigator it makes it easier for me to know what will work and withstand scrutiny by a Court.   It is often better to just leave overreaching language in a contract, because you know it will give you grounds to invalidate the contract.   However, there is a bit of art involved in this, because the language has to be interpreted by a court in the manner that you would like it to render it unenforceable.

I always suggest that if somebody is playing hardball take on hardball posture and allow them to feel like they have the upper hand and are getting some very tough language to protect their interests, but then pick certain issues that truly are risks that need to be managed and you can discuss frankly.   In fact, you may get more than you should in certain areas, because the other party believe it has gotten everything it wants in areas that are truly not a concern for you.   However, this requires careful preparation and a nuanced understanding of the law, the industry, and the clients risk tolerance.

If you have any concerns or questions about negotiating a commercial agreement, acquisition, divestiture, sale of your business or the purchase of your business, then please do not hesitate to contact us at http://www.corporateacquisitionattorney.com