Business Formation and Trademarks
TO DETERMINE WHAT IS APPROPRIATE FOR YOUR NEEDS
Please provide the following information:
1. Business name
2. A description of the purpose of the business
3. The name and physical address of the agent for service of process
4. The address for the principal place of business
5. The name and addresses of the shareholders, members, or partners, and percentage ownership interest of each
6. The name and address of directors, officers, managers and general partners (can be all one person if desired).
7. Identify the capital contribution of each shareholder, member or partner
8. Identify the fiscal year end of the entity
9. Identify the person(s) authorized to execute documents, checks and open accounts on behalf of the entity
10. Determine whether management will receive a salary (partners, officers, directors, or managers)
11. Identify the name and address of the accountant for the entity
12. Identify the name and address of the bank or financial institution for the entity
13. identify the tax matters member for the LLC
14. Determine whether a lender is requiring the entity to be a single purpose entity (SPE) and identify the SPE provisions required to be incorporated into the articles, operating agreement or partnership agreement
15. Determine whether the corporation will make an S corporation election
16. Determine where the entity will be formed and whether the entity will be transacting business outside of the state of organization; and
17. Determine whether the entity will file a fictitious business name statement
18. Obtain an Employer Identification Number which requires the following information: 1) social security number of the principal, officer, manager or member or partner, date first wages to be paid, highest number of employees next twelve months, if the principal activity of the entity is manufacturing confirm if raw material will be used; and identify to whom the entity's products will be sold (wholesale, retail, other).
Trademark Registration and Maintenance
How are marks protected?
Trademark rights are protected through registration and maintenance and enforcement. These precautions help preserve the ability of marks to indicate the source of a product or service to consumers.
Marks may be registered with the United States Patent & Trademark Office ("PTO"), and similar agencies throughout the world. In the U.S., marks can also be registered within each state and territory, although such registrations are of limited value to businesses engaged in interstate commerce. A state registration normally cannot defeat a federal registration, because federal trademark rights supersede state rights.
Unregistered marks are protected at "common law" in the U.S. -- marks need not be registered to be recognized and enforced. Nonetheless, marks registered with the PTO have advantages over unregistered marks. These advantages, which inure to the registered trademark owner, include:
• The ability to bring actions for trademark infringement in federal courts, as well as state courts;
• Eligibility for up to treble damages in a successful trademark infringement action;
• A presumption that the registered mark is valid;
• A presumption that the owner of the registration owns the registered mark;
• A presumption that the registrant has exclusive rights to use the mark in commerce;
• A presumption that the registered mark is not confusingly similar to other registered marks;
• The ability to file applications for registration in other countries, based upon the U.S. registration;
• The ability to prevent the importation of goods bearing infringing marks, by recording the registration with United States Customs.
International registrations provide similar advantages to trademark owners abroad.
U.S. registrations are issued for an initial term of 10 years. During the fifth year of registration, an affidavit must be filed with the PTO, attesting that the mark still is used in interstate commerce. Failure to file the affidavit can result in cancelation of the registration.
When a registered mark has been used continuously in interstate commerce for five years, it can be made incontestable, by filing an appropriate affidavit with the PTO. This step is optional, but a registration is strengthened greatly when the affidavit is filed.
International registrations are subject to similar, periodic, "proof of use" requirements. Some countries also require the payment of "taxes," or fees, to maintain registration rights.
If a registered mark is used and maintained properly, trademark registration can last "forever." U.S. registrations may be renewed indefinitely for successive ten year terms. In other countries, terms of registration vary; however, most allow indefinite, successive renewals, where the underlying mark is used properly, and the registration is maintained.
Just as registrations must be maintained, through affidavits, fees, and renewal applications, marks must be maintained, through proper use and due diligence. The key to trademark maintenance lies in the source identification function of marks -- remember, marks identify the source or origin of products and services. If, and when, a mark no longer performs this function, it no longer is a mark; it becomes a generic term. Generic terms designate a type of product or service, without calling to mind any specific manufacturer or provider.
A generic term cannot be a mark. Generic terms are in the public domain, and may be used freely by anyone. The terms "escalator," "shredded wheat," "kerosene," "aspirin," "yo-yo," "zipper," and "trampoline," all began as marks. Through lack of proper use, and/or enforcement, these marks became generic. Today, any company may use them to describe certain types of products..
Marks generally lose their source-identifying function through abandonment. As the term suggests, an abandoned mark is one which has been "thrown away." Intentional abandonment occurs when an owner fails to use a mark for a specified period, and does not intend to resume use. Marks also may be abandoned unintentionally, through improper use.
A mark may be abandoned "unintentionally," when the trademark owner fails to use it properly, or fails to monitor its use by others. "Improper use" is use which places the mark in danger of becoming generic. Thus, marks should be used consistently, and distinctively, to enhance their source-identifying function.
If an entity other than the trademark owner, uses a mark on its own products, in its own way, the mark's ability to function as an indicator of source is diminished. For this reason, all third-party uses of a mark should be licensed, and monitored carefully. Unlicensed uses, or unmonitored thirty-party licensing, can result in a finding that a mark has been abandoned.
Trademark infringement also diminishes the beneficial capabilities of marks. When marks are appropriated unlawfully by unlicensed third parties, consumers are likely to become confused regarding the source or origin of goods or services. Therefore, trademark owners should take steps to discover, and prosecute, adverse users. A trademark owner's failure to prosecute known infringers of a mark may result in a finding of an abandonment of trademark rights.
On-going Monitoring and Checking
Many trademark owners list their most important marks with a trademark "watching service." Watching services notify trademark counsel of attempts to register conflicting marks, so that timely oppositions to adverse applications may be filed. These services are particularly helpful in civil law countries, where trademark rights are secured through registration, rather than use. Too often, a trademark owner seeking to expand its business abroad, discovers that its flagship mark already has been registered in a target country -- perhaps even by a local "trademark pirate." In such cases, the rightful owner may have no choice but to purchase the mark from the thief. If the owner does not submit to this extortion, it may have to select another mark, or face a lawsuit for using the mark it created! This outcome might have been avoided if a trademark watch were in place.
Watching services are available in many countries, including the U.S. Trademark watches can be customized to meet the needs of a particular business. A watch may cover one country, several, or the entire computerized world. However, watches are unavailable, or more limited, in countries without publicly-searchable, computerized, trademark databases.
Watching services are not expensive, given the level of information provided. Pursuing the leads watch notices produce can be costly, however, depending upon the mark, and the level of adverse activity. In any event, trademark watching is an invaluable practice, that can help a trademark owner protect the source-identifying function of its products or services.
Trademark enforcement consists of pursuing adverse users. An adverse user is one who is not authorized to use a mark, but uses it anyway, or who is authorized to use the mark, but uses it improperly.
In most instances, adverse users may be stopped without litigation, by a friendly contact from the trademark owner, or a "cease and desist" letter from the owner's attorney. Most adverse users would rather select a different mark for their products or services, than defend against a trademark infringement claim. Yet, where an adverse user is not convinced that infringement has occurred, and has invested substantially in the allegedly infringing mark, an amicable solution may not be possible. Sometimes, a trademark owner will offer to reimburse the adverse user for the cost of changing marks, to avoid the higher cost of trademark litigation. In other circumstances, particularly where willful and large-scale infringement has occurred, trademark litigation, or arbitration, may be the only tenable approach.
The monetary remedies available in trademark infringement actions are based on the actual damages suffered by a trademark owner. These damages may include profits lost to the infringing activity, and may be trebled where the infringement is proved to have been intentional. Injunctive relief also is available, to restrain the infringer from further unlawful activity, and impound, and destroy, infringing goods.
Litigation should be avoided whenever possible. Nonetheless, trademark rights should be enforced when adverse uses are confirmed.