Tag Archives: trademark attorney

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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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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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New E-Book for Entrepreneurs: A Guide for Entrepreneurs and Business Owners!

We recommend a new book that has been published relating to a Beginner’s Series of Guides for Entrepreneurs relating to acquisition of angel, capital, funds, seed or VC funding for undertaking new efforts to try out and test out the … Continue reading

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Fourth Chicago Based IPO to over a Billion in Valuation! Are Startup and Tech Deals Coming back to Chicago?

Following in the success of LinkedIn, Groupon, Envestment’s IPOs, the Chicago startup, GrubHub went public on April 4, 2014, with shares soaring to over $40 dollars a share well above their $26 dollars per share Initial Public Offering (“IPO”) price.  The New Company was formed through a merger between Chicago based “GrubHub” and New York based “Seamless.”  Will the surge in IPO’s for tech companies continue?  Is there real value there for investors?  Many experts expect the shares to do fairly well, as the initial expected offering rose from the range of $20-$22 per share, all the way up to $26 per share late Thursday night before the Friday morning offering.

The IPO is great for GrubHub, but more importantly, the Chicago Startup community at large.  Chicago is beginning to build a reputation in recent years for its successful tech companies with even better IPOs.  GrubHub is the third recent, Chicago based Tech Company, to have an IPO valuation of over a billion dollars, nearly, $3 billion.  Groupon, the digital coupon and bargains merchant went public in 2011, and is currently, valued at $5.4 billion dollars.  While, a lesser known IPO for Envestnet, a local tech startup that produces software for financial advisors has led to a current valuation of $1.35 billion dollars.

All this success helps aids in Chicago’s current effort to rebrand the City as a Startup and Entrepreneurship HUB.  An effort shared by President Obama, who awarded Chicago, a coveted federally funded high tech hub on February 25th of this year.  Hopefully, this will continue to keep Chicago on the map as not only, a distribution network for products and commodities, but also a thriving City for innovation.  Does this mean more deal and intellectual property work for lawyers? Certainly, seems so as Entrepreneurs are starting to find success and providing a return on investment to Angels, VCs, Private Investors and public shareholders!

The City of Chicago received a total of $70 million for a Pentagon-led institute that focused on high-tech digital manufacturing and design.   The Startup Community in Chicago is flourishing, and there’s no better place or time for individuals with a dream and an idea, to start looking to make them into a real business.  If you or someone you know has an amazing idea for a startup business and is looking for investors, look no further than the Entrepreneurs and Executives Bruch Club’s Startup Competition (EEBC-It’s Just Brunch!).

At the EEBC’s 2014 Spring Competition, Startups were presented with the chance to pitch their businesses to actual equity and angle investors.  During the March 2014 Competition $2,000.00 in actual seed money was awarded to the top three teams by the EEBC-It’s Just Brunch!  See the Winners:  EEBC Its Just Brunch Spring 2014 Competition Winners Final

Meet the Panelists and Investors:  EEBC Startup Competition Special Thanks to Panelists_Final Proof_032514

The next EEBC Quarterly Competition takes place in June 2014 and the EEBC is currently, looking for qualified teams to compete.

Visit http://eebrunchclub.com/ for more information, http://www.chicagostartupattorney.com, or go to www.vrplawgroup.com

The New Generic Top Level Domains (GTLDs) and what do they mean for online consumers and retailers!

When we browse the internet, we know how to get to the websites we want to go to.  We know to type in, for example, “amazon.com,” and know that by doing so we will be able to shop on Amazon.  This has already started to change, however, as the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to make over 1,400 new top level domain names available for purchase.

Now, we will likely have to go to “movies.amazon” or “books.kindle” in order to get to the site we want. In essence , we will have to relearn how to find products and services on the web.,  Moreover, consumers will have to understand the new top level domain and which TLD and URL will enable them to find the products or services they want.  On line retailers will have to understand how the new TLDs may impact their SEO process. consequently, the new TLDs may or may not lead to a better online distribution means.

These new domain names have been met with mixed reviews.  On one hand, companies are excited; these new names allow them to advertise their brands even more, encourage competition and innovation, and assist consumers in getting to the correct site.  On the other hand, however, people worry about the cost of registration and upkeep, not to mention the potential for trademark violations and cybersquatting.  Registration for one name costs $185,000.00, and in most cases, it makes sense for companies to register multiple names.  This is a defensive maneuver, as it will keep others from registering names that will cause consumer confusion or infringe on trademarks.

While ICANN has developed a database to protect trademarks, called “Trademark Clearinghouse,” it has its drawbacks.  For one, it costs $150.00 a year, per trademark.  Further, it may not be the most effective; it only protects against identical matches of trademarks.  This does not include misspellings or names that are very similar to trademarks.  So, companies will have their work cut out for them when purchasing the top level domain names and protecting them from competitors.

The first seven new top level domain names went live on the Internet on January 29th, 2014.  So far, we have seen the addition of .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures.  More are expected to come out on February 5th, 2014.  For more go to http://www.vrplaw.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

Business Owners, Small Franchisees, and Franchise Operators and breach of contract and fraud claims!

It is common place for there to be disputes between Franchisees and Franchisors. Often times, the dispute involves continued use of trademark licenses without paying royalties, claims of fraud involving financial information, and breach of contract or the franchise agreement.  However, there is some measure of protection from the unhappy or disappointed with their purchase of a franchise or a franchise store.  The franchisee often claims that the financial ;projections of the past performances of the franchise stores or operators.

There is often disagreement about what financial information was provided by the Franchisor and how much of it is mere puffery, opinion or an accurate reflection of the historical performance of different franchise stores.   However, in a recent Ruling the Illinois Appellate Court for the First District provided a finding that allowed Ace Hardware to defeat the claims asserted by Avon Hardware.  Avon Hardware asserted that Ace Hardware was liable for providing fraudulent or misleading sales and financial information to Avon Hardware.

Ace Hardware was found to have provided a variety of opinions and financial information to Avon Hardware, but was found to be not liable to Avon Hardware.  The primary reason for the First District Court’s dismissal of the common law or statutory fraud was the inability to overcome the language in the parties’ Franchise Agreement cautioning about the financial and sales data and the opinions contained therein.  The First District Court dismissal of the fraud claims were based on the Franchisees failure to plead and prove materiality and reasonable reliance on the Financial Sales and Data.

Thus, it is crucial for Franchisees to make sure that they verify sales projections and ensure that the Franchisor is required to provide audited financial and sales data.  This will help curtail the risk of being provided unnecessarily inflated financial information and sales data.  Moreover, it will help ensure that you do not have Buyer’s remorse.   Of course, if you have any concerns or questions, then please contact us at http://www.vrplaw.com