Monthly Archives: June 2014

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            Branding is big. It is so big that if you listen to some pundits, every business owner should eat heaping bowls of Brand Flakes every morning. Your mark, be it a trademark, service mark, or trade name, is a part of the branding process. Your mark can be the logo, name, or phrase that you want your customers or clients to associate with your goods or services. Even law firms, like the MACY-LOGO-color.png, use logos.

Be Unique – Just Like Everyone Else

            Creating the name or design is just the start. Before running with your creation, look around for anyone using the same thing or something similar. The search can include using Google and other search engines, running searches on online phone directories, a search with the state agency that registers entity names or state-level trade names or trademarks (often available online), and search trademark filings with the United States Patent & Trademark Office ( You can hire someone to do the search or you can do it yourself; be thorough either way. Getting sued or having your stuff seized for allegedly infringing on Company X’s mark would not be fun.

            Did you find someone else using the same or similar mark?  It may make sense to create something new.  What if you want to use your first design anyway?  That could be risky because lawsuits for infringing on an unregistered or registered mark can be costly – more so if you lose.  Your evaluation of the risk may include whether the other person’s mark no longer qualifies for legal protection.  That could happen if the other person abandoned his mark, the other person’s mark now is generic (“kerosene” is an example), or the other person has otherwise failed to protect his mark.  Those are hazards you should avoid with your own mark.

No Squatters Allowed

            Using a mark is necessary to build its strength.  You want customers and clients to have a positive association between your mark and your goods or services.  For example:

  • “I need to speak with a lawyer.” – MACY-LOGO-color.png !
  • “The lawyer needs to be high quality.” – MACY-LOGO-color.png !
  • “I want the lawyer to wash my windows.” – [crickets chirping]

         Use is necessary if you want to get a federal registration of the mark.  You can file to register the mark if you are not using it at the time, but you will have a six-month period to start using the mark.  You can get extensions, up to a total of three years, if necessary.  Eventually, though, you will have to use the mark in commerce to get the registration.  You also will have to use the mark to keep the registration.

          Whether and how the mark is used, and how customers perceive the mark, often are contested in lawsuits over unregistered and registered marks.  The law likely will offer little to no protection to an unused mark.

Why Register if the Law Can Protect Unregistered Marks

            The law may protect an unregistered mark to an extent.  Why should you register a mark?  There are benefits to registering a mark.  A state trademark registration may give you certain benefits within that state.  A federal registration offers benefits that can extend nationwide, and a non-exhaustive list of benefits include:

  • Putting the public on notice that you own the mark.
  • A presumption in your favor that you own the mark and have an exclusive right to use that mark with certain goods or services.
  • Access to filing a claim in federal court.

Protect the One You Love

            Registered or unregistered, protecting your mark is a necessity.  Protecting your mark involves monitoring the quality of the goods or services bearing the mark, not abandoning the mark, avoiding having the mark become generic, and watching for others who may infringe on your mark.

          The need to protect remains if you license the mark because an owner who licenses his mark still has to monitor how the licensee uses the mark.  A naked license is a good way to put a mark at risk.  A naked license has inadequate or no quality control provisions.  Get your mind out of the gutter.

           Choosing not to protect your mark puts at risk the time and money you spent on the mark. In other words, this could happen to your mark if you do not protect it: Trashing (r)

Wrap It Up – I Have To Get Back to Building My Brand

          A strong mark is an asset – just ask Coca-Cola. A strong mark can increase the value of your business. None of that will happen unless you are willing to devote the resources necessary to build and protect the mark.

This post provides general information only and is not intended to create an attorney-client relationship or to be legal advice about a specific situation. Laws change and your situation may be different. You should consult with a licensed attorney for legal advice specific to your circumstances.


Caught on Tape – Mouth Meet Foot

            Free speech creates a wonderful mess.  People generally are free to let their words fly.  Their words could be profound, mundane, offensive, or downright stupid.  Cell phones and smart phones capable of recording sound, and other recording devices, makes it relatively easy to have those words caught on tape and exposed to the world.  Donald Sterling recently found this out with the leak of a recording of him making racially charged comments.

            The furor over his comments overshadows other commentators asking whether the recording was legal.  State and federal wiretap laws, the right of privacy, and other factors outline when someone can record a conversation without facing liability.  I will focus on the wiretap laws.

Is That a Digital Recorder in Your Pocket or are You Happy to See Me?

            Getting everyone involved to knowingly consent to the recording of the conversation is a way to avoid violating the wiretap laws.  How about doing it without everyone’s consent?  Whether the wiretap laws require everyone to consent depends on whether the laws of a “one party” state or a “two party” state apply.  In a “one party” state, at least one person known to be present in the conversation must consent to the recording.  In a “two party” state, everyone known to be present in the conversation must consent to the recording.  There are exceptions, such as law enforcement acting with a warrant or when a court order allows for the secret recording or monitoring.  Just because you feel like doing it, or doing it could help you prove a point, are not likely to be exceptions.

Are You OK That I Secretly Recorded You or are You Happy to Sue Me?

           Who remembers Linda Tripp of the Clinton-Lewinsky scandal in the 1990’s?  Linda Tripp recorded phone calls she had with Monica Lewinsky, and those recordings caused a stir.  However, at least one of them was in a “two party” state when Linda recorded the calls without Monica’s knowledge.  Linda faced criminal charges for recording the calls without Monica’s knowledge.

            Linda Tripp’s experience highlights an additional risk involved when recording phone calls.  If the people on the call are in different states, whomever decides to record the call would be wise to check beforehand the laws of the state of each participant.  What may be legal in one state may not be legal in another.  It becomes more complicated if one of the participants is in another country.

Watch Out for “Gotcha!” Turning Into “Oh Fudge, What Have I Done?”

            For anyone hot to record someone secretly – beware.  Failing to follow the law can cause you real trouble.  Technology is making it easier to capture the moment both in picture and in sound, but just because you can does not mean you should.

This post provides general information only and is not intended to create an attorney-client relationship or to be legal advice about a specific situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.