DECISIONS, DECISIONS

Have a new mark that you want to use?  I discussed in an earlier post that you should conduct a search for other marks that are the same or similar to your intended mark, before the launch.  What happens if your search scores a “hit?”

Move Along – Nothing To See Here

You can just go with another mark, avoiding the other mark entirely.  Whether you should do this before or after answering the following questions sometimes is self-evident.  I would be stupid to launch “Matt’s Coca-Cola Experience” without getting permission from Coca-Cola, for example.

Mother, May I?

You could request permission or consent from the owner of the other mark; this often takes the form of license.  An example would be a franchisee getting a license from the franchisor to use the franchisor’s mark.  Do not count on a competitor from giving you a license, though.

Fight of Flight

Maybe you are free to use your mark, because the competitor’s mark does not apply to your market.  Act with caution – the other’s mark could be strong enough to make it unwise to use a similar mark in another field.

The competitor’s mark may have a fatal weakness that you can exploit.  The competitor may have failed to protect its mark, turning that mark into a toothless, paper tiger.  There are times when it makes sense to launch a legal challenge to such a mark.

Will You Marry Me?

Maybe the other mark is ripe for a purchase.   This can be a win-win when the price is right.

Baby Needs a New Pair of Shoes

You can roll the dice and go forward with your mark without answering any of the questions.  Maybe it will work out or maybe you that decision will backfire.  A finding of intentional infringement can make matters worse if you lose a trademark infringement lawsuit.

A Little Elbow Room, Please

Maybe you find that there are several other similar marks in use, and maybe you determine what you have relatively low legal risk by going ahead with your mark.  Will you have to spend more time and money than you otherwise would to get your mark noticed?  Will the crowded marketplace make it harder for you to get exclusive rights to your mark?  Whether your mark is worth the effort will answer whether you should go with that mark or get a new mark.

As We Bid Adieu

Learning that someone else is using a mark that is the same or similar to your desired mark is not the end of the world.  Getting guidance from a competent professional will be well worth it.  This blog post is not a substitute for that advice.  Please contact us if we can be of help.

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

© 2017 Matthew D. Macy

Federal Court Puts New Overtime Rules On Hold

On November 22, 2016, a federal district court in Texas issued an preliminary injunction pausing the implementation of the new overtime rules set to go into effect on December 1, 2016.  The overtime rules significantly raised the salary requirements for employees to be exempt from overtime under the EAP (executive, administrative, professional) exemption.  You can read my post about that here.

The preliminary injunction does not permanently stop the rules – it is a temporary brake.  The judge’s order is the first in what is likely a series of legal challenges and decisions.  We can expect the US Department of Labor (“DOL”) to challenge the judge’s preliminary injunction with some form of an expedited appeal.  Meanwhile, though, the judge’s order puts a break on the new salary requirements.

Employers should avoid a knee-jerk reaction to the injunction.  Whether to put any changes on hold, or to keep or remove any changes already made, should be done carefully.  Both the legalities and business considerations (such as the affect on employee morale) must be considered.  Employers also should stay alert in case the judge’s order changes, the order itself is suspended, or is reversed.  An employer that does not pay attention does so at that employer’s peril.

Please contact us with any questions.

Have a happy Thanksgiving!

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

© 2016 Matthew D. Macy

Misclassifying Your Workforce Can Bite

A business owner and her lawyer are having lunch.  They were talking about Uber’s troubles.  Uber, the ride-share business, faced lawsuits over Uber classifying its drivers as independent contractors.  We now join the conversation in progress.

Business Owner:  Why does it matter whether someone is an employee versus an independent contractor?

       Lawyer:  Costs and liability are big reasons.  Whether a worker is an employee or independent contractor affects overtime entitlement, benefits, liability exposure, taxes, unemployment, worker’s comp, and which employment laws apply.  Making a mistake in classification can be costly.

Business Owner:  How so?

            Lawyer:  Take overtime for starters.  An employer is responsible for paying overtime if the worker is a non-exempt employee, even if the employer calls the worker an independent contractor.  A worker who successfully sues that he was an employee entitled to overtime that was not paid can get the unpaid wages, interest, liquidated damages, any penalties under state law, and his attorney’s fees and costs.  Then there are the attorney’s fees spent by the employer.

Business Owner:  That is not cheap.

            Lawyer:  That is not all.  There can be the audits, tax issues, etc.  The employee does not need to sue for that to happen.

Business Owner:  Oh, bother.  How do I properly classify someone?

           Lawyer:  There are several tests by the various governmental agencies and the courts.  You will have to pick the ones that apply to your business.  There are common themes between the tests, thankfully.

Business Owner:  Such as?

            Lawyer:  A written independent contract usually is important.  What has to be in the contract will depend on which test you need to satisfy.  Then there is control.  How much control the employer has over the who, what, when, where, and how of the job is considered.  Who provides the tools and materials also affects the outcome.  Then there is the risk of loss among other factors.

Business Owner: Any worker has a risk of loss.  The worker can be fired for doing a bad job.

            Lawyer:  There is more to the risk than that.  Who stands to lose money on a particular job is considered.  Here is an example that helps explain this.  Assume you and a painting company agree on a flat price of $3,000 for the company to paint your house.  You pick the paint, the finish, and agree on a schedule.  The painting company supplies the painters, the tools, and manages the painters and the pace of work.  The painting company, however, underestimated its costs and lost $200 because its total costs were $3,200.  The painting company’s employees are entitled to their wages regardless.

Business Owner:  What now?

            Lawyer:  Let me know if you want to go over how you classify your workers.  Any other questions?

Business Owner:  How come it seems like we are reading a script?

            Lawyer:  Because we are.

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

© 2016 Matthew D. Macy

Watch Your Step With Your New Mark

You have a name, slogan, logo, or other mark for your new business or product.  Look first before spending time and money to identify your brand with that mark.  A search beforehand may warn you of another mark that could hinder your use of the new mark.  It is not fun to get a cease-and-desist letter or a lawsuit you could have avoided.

There are services available to conduct searches for you; the costs and efficacy varies.  There are do-it-yourself searches for little to no cost that you can do first.  Here is a sampling of DIY searches:

  • Google and other search engines:  Self-explanatory.
  • Federal Trademark Registrations:  The US Patent & Trademark Office (“USPTO”) handles the federal registration of trademarks under the Lanham Act.  The USPTO database has registered marks, marks that were registered but lost that status, and applications for registration, is available for free via the Web.  You can search the database here.  Try different variations on the name – spacing, punctuation, and non-letter characters can affect the search results.  There also is a way to search for logos and non-verbal marks using keywords and design codes.
  • State Trademarks and Trade Names:  States often have their own trademark registration and trade name databases.  You can search Georgia trademark registrations here and Colorado trademark registrations here.  The registration of a trademark or a trade name could be at the same place, or, like in Georgia, be in separate databases.  Georgia has trade name registrations take place at the county superior court, for example.
  • Records of incorporations, etc.:  A person forming an entity usually has to submit formation paperwork with the appropriate state agency, such as the state secretary of state.  The databases often are searchable online.  You should search the databases for the states where you want to do business.  Here are links to the sites for the Georgia’s Secretary of State’s website and the Colorado Secretary of State’s Web site.
  • Domain names:  A domain name register should give you the ability to conduct an online WHOIS search on a domain name.  A WHOIS search should tell you whether anyone has registered the domain name or whether it is available.
  • Social Media:  Examples of where to search are Facebook, Houzz, and LinkedIn.  There are many more social media sites; how far you should go will vary on the nature of your business.
  • Online phone book: Put in your intended name and something similar to see what pops up.

Remember GIGO (garbage-in-garbage-out) when searching.  The more varied are your searches, the more reliable are your results.  Examples of variation include spelling the mark correctly and incorrectly, spelling out non-word elements and visa versa (e.g., “plus” and “+”), using different phonics (e.g., “phone” and “fone”), altering the spacing between words, and so on.

Each database has its limitations.  Georgia’s trademark registration database, for example, will not show any pending applications.  It can take a week or so for new federal trademark applications to show on the USPTO database.  Even with that in mind, the search results can guide on whether a more in-depth search makes sense, where you can proceed with peace of mind, whether you should proceed with caution, or whether you should change your mark.

Stay tuned for a discussion of options if you get a “hit” on any of your searches.

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

This article has links to websites owned and operated by third parties.  Use those links at your own risk.  The author including those links is not an endorsement by the author or the author’s firm of those third parties, of the content of those sites, or of the security of those sites.

© 2016 Matthew D. Macy

Maximize Your Options under the Defend Trade Secrets Act of 2016

Trade secrets are valuable. The owner of a trade secret must take reasonable measures to protect the trade secret. The reason measures can include limiting access on a need-to-know basis and the agreements put in place. For example, when an employer sues an employee for stealing a trade secret, the court will ask whether the employee signed a trade secret or confidentiality agreement. Not having an agreement would be a serious setback for the employer.

A well-drafted trade secrets agreement is useful, while a poorly drafted agreement can backfire. Anyone using those agreements should regularly review the agreements for updates. For example, in May 2016, the federal Defend Trade Secrets Act of 2016 (“DTSA”) became law. The DTSA opens the federal courts to more civil cases over trade secret misappropriation. The DTSA also imposes a notice requirement on employers. An employer that fails to comply with the notice requirement, when required, will limit what the employer could recover under the DTSA.

Employers that use trade secrets or confidentiality agreements need to have a notice of the whistleblower protections in the DTSA. The requirement applies to contracts entered into or renewed on or after when the law came into effect.  The employer also can comply by having the agreement cross-reference a policy document that has the required notice.  What is unclear is whether the notice can be a summary of the whistleblower rights, a repeat of the statute, or something else.

An employer that does not include the notice when required will not be able to get punitive/exemplary damages or an attorney’s fee award on a DTSA claim in a lawsuit against an employee. Regardless of whether state law or the contract covers that “gap,” it makes sense for an employer to include the notice when required to preserve as many options as possible.

It pays for an employer to review its agreements going forward for DTSA compliance, and to make sure the agreements still meets the employer’s needs. The recent DTSA gives employers and others an excuse to review their agreements.

We are happy to assist employers and others with their policies, procedures, and agreements. Feel free to give us a call.

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

© 2016 Matthew D. Macy