Federal Trademark Registration
What is a Registered Trademark?
The importance of the registered trademark is lost on many business owners. This is because the majority does not understand what a trademark stands for or has a very vague idea of the meaning of it. A trademark is a symbol, word, or words representing a company or product legally registered or established by use. A trademark embodies the business’ goodwill and reputation. The more reputation grows, the more valuable the brand represented by a trademark, will be. Similar to property rights, a trademark can be bought, sold, licensed or used as a security interest to secure a loan. Furthermore, a trademark never expires for as long as it is used for commerce in the United States.
In the United States, multiple layers of legislation protect a registered trademark. Primarily, trademarks are protected under the Lanham Trademark Act. The US Patent and Trademark Office is a federal agency that enforces Lanham Act and regulates the registration process. The registered trademark symbol (®) provides notice that the preceding word or symbol is a trademark or service mark that has been registered with a national trademark office.
At the state level, a trademark is protected by common law principles of unfair competition. Common law protection is limited in scope and only extends to the territory where the mark is used.
Why Register a Trademark?
The main benefit of registering a trademark on the federal level is the enforcement of the trademark rights granted by the Lanham Act. Statutory causes of action that could be brought by the owner of a trademark include: infringement (unauthorized use), counterfeiting (use of a substantially undistinguishable mark from the registered mark), trademark dilution (use of name that is likely to reduce public’s perception of a famous mark which signifies something unique), false advertising (false designation of origin, for example), passing off (false representation with intent to induce to believe that the goods or services are those or another).
It is important to understand that even without a registration the trademark is somewhat protected. State trademark registration is an alternative option available for business owners. Though state registration generally grants rights no greater than one could obtain under common law, the process is quick, easy and it does have certain benefits. It secures the mark’s placement in trademark reports and provides a notification to the third parties. If the business is at an early stage and there are no plans to go nationwide, the protection granted by the state is enough for a purely local business.
Federal registration allows the owner to have indisputable evidence of validity and ownership rights of the mark. Furthermore, under federal registration, a trademark falls under federal court subject matter jurisdiction over infringement and other trademark claims without showing diversity or minimum amount in controversy. Statutory remedies available for federal trademark infringement claims include treble damages and recovery of attorney’s fees. In addition, federal trademark provides grounds for registering the mark in foreign countries.
It is important to note that even if it may seem your business meets all the requirements for trademark, the registration of a mark is not guaranteed. Officers of the USPTO consider all federal trademark applications. It usually takes up to a year to finalize the process.
When to File a Trademark Registration
Trademark registration is important for business owners who are serious about their business and their brand. Every step you take to grow your business is an investment in your brand and you should secure it. To gain maximum legal protection, we recommend filing a trademark application soon after you start doing business. The trademark process takes more than 6 months so it’s best to get started early.
What Should be Included in the Trademark?
Any type of device used to identify the source or origin of a product or service can be registered as a trademark. It could be words, phrases, symbols, designs. Some trademark could also include, under certain circumstances, sounds, smells, colors and shapes. The main benefit of having it registered, is that it provides an exclusive right to the registered owner to use the trademark in connection with products and services covered by the mark. This helps to distinguish the origin and quality of the goods or services that may originate from different sources.
Requirements for Federal Trademark Registration
Initial requirements for the federal trademark protection include usage in the stream of commerce and distinctiveness. Furthermore, it shouldn’t include any deceptive terms or immoral language, and there shouldn’t be any similarities or confusion with other registered marks.
While the process of filing a trademark application may seem to be quite easy at the first, it can be a tedious process. The most tedious part of the process is the so called “trademark clearance”. An applicant has to conduct a very thorough search (Federal Trademark Register search, state trademark registers, various public sources) and proceed with a very detailed analysis to eliminate possible conflicts and issues with the application. An applicant or an attorney assisting with the application needs to evaluate if the proposed mark qualifies for trademark protection and federal registration. Conducting trademark clearance on initial stages helps to avoid or reduce investment in a trademark that is already unavailable.
A recent study which analyzed 25 years of USPTO data shows that applicants who used an attorney to file their trademark applications were 50% more likely to get their marks approved than those who applied without legal representation.
How does your company protect its trade secrets? Are you putting the effort in to have policies and procedures in place prior to disclosing trade secrets to employees, contractors, vendors, clients and business partners? Don’t wait until after someone infringes on your trademark to seek legal advice. Our firm can help you achieve trademark registration by ensuring all the requirements are met for filing.
If not, contact us today for a no-obligation assessment of your overall legal needs and risk management program. Call us at (832) 305-5529 or email us at info@filippovlaw.com to schedule an appointment.
This blog is intended as an information source for existing and future clients of FILIPPOV LAW GROUP, PLLC and should not be construed as legal advice. Readers should not act upon the information contained in this blog without professional counsel. The materials presented in our blog, “tweets” and legal articles may not reflect the most current legal developments, verdicts, or settlements. These materials may be changed, improved, or updated without notice. FILIPPOV LAW GROUP, PLLC. is not responsible for any errors or omissions in the content of this site or for damages arising from the use or performance of this site under any circumstances. © Copyright 2017 FILIPPOV LAW GROUP, PLLC
Read More
Best Protection for Trade Secrets and Know How
The most important group of company assets is its intellectual property (“IP”). IP includes trade secrets, patents, trademarks, copyrights, drawings, computer programs, electronic media, research, data, samples, pricing information, business plans, verbal communications and other proprietary business information. IP requires special consideration and attention in all business transactions, beginning with a client and vendor relationships and ending with employee contracts.
Unlike copyright, trademark, and patent protection, there is no government registration for trade secrets and company “know how”. Many companies overlook the need to protect this information. Trade secrets need protection because they are not generally known to the public and comprise exclusive “know how” of economic value, generated by people who wish to protecting it. Businesses must protect their “know how” to achieve a leading edge over their competitors.
Trade secret protection extends to designs, formulas, strategy, technique, practice, instrument, patterns, process or even sometimes a customer list. However, trade secrets must not be original, unique, or novel. Rather, most businesses refer to their trade secrets as “confidential information.”
A trade secret may be as easily lost as it is created. Trade secrets only retain their protected status for as long as their secrecy is preserved. Thus, it is important for business owners to make a reasonable effort to maintain the secrecy of its confidential information.
Best Protection for Trade Secrets
Trade secrets must remain “secret” or confidential in order to remain protected. If the trade secret is inadvertently disclosed, it may lose its status as a trade secret. Companies often realize too late that a lack of written agreements has jeopardized their trade secrets and the availability of legal remedies. The best protection for trade secrets is to have policies and procedures in place prior to disclosing trade secrets to employees, contractors, vendors, clients and business partners. Written and signed agreements are necessary in order for a company to have the full range of protection and legal remedies to prevent disclosure of trade secrets. A business can protect its trade secrets through the use of confidentiality agreements, non-compete and non-disclosure agreements.
Proper Trade Secret Procedures and Protocols
Experienced business attorneys can help you achieve trade secret protection by ensuring that all requirements are met for secrecy of company assets. Attorney at Filippov Law Group, LLC assist many businesses in maintaining secrecy with proper procedures and protocols. Depending on the proprietary information, non-disclosure agreements or company non disclosure policies may be necessary. We can weigh and analyze the different procedures and confidential information to fit the needs of your company. We provide services such as non-disclosure agreements, non-compete agreements, due diligence investigations, trade secret identification, employee counseling upon entrance and at exit, and employee training manuals. Attorney at Filippov Law Group, LLC can analyze company procedures or confidential information policies and agreement forms against the factors courts use to evaluate protection of trade secrets. Whether a trade secret would be best protected by utilizing non-disclosure agreements or litigation, we can advise on what is needed to keep your proprietary information confidential. We can also advise on what protocols and procedures are needed to implement and maintain trade secrets. Some of the additional services we provide are trade secret identification, due diligence investigations, employee/compactor on-boarding and exit counseling, non-disclosure or non-competition agreements, and employee training policies.
Don’t wait until after you lose your trade secret to seek legal advice. Our firm can help you achieve trade secret protection by ensuring all the requirements are met for secrecy.
How does your company protect its trade secrets? Are you putting the effort in to have policies and procedures in place prior to disclosing trade secrets to employees, contractors, vendors, clients and business partners? If not, contact us today for a no-obligation assessment of your overall legal needs and risk management program. Call us at (832) 305-5529 or email us at info@filippovlaw.com to schedule an appointment.
This blog is intended as an information source for existing and future clients of FILIPPOV LAW GROUP, PLLC and should not be construed as legal advice. Readers should not act upon the information contained in this blog without professional counsel. The materials presented in our blog, “tweets” and legal articles may not reflect the most current legal developments, verdicts, or settlements. These materials may be changed, improved, or updated without notice. FILIPPOV LAW GROUP, PLLC. is not responsible for any errors or omissions in the content of this site or for damages arising from the use or performance of this site under any circumstances. © Copyright 2017 FILIPPOV LAW GROUP, PLLC
Read More
How to Negotiate a Commercial Lease Agreement
Are you preparing to enter into a business lease? Before signing a commercial lease, consider the following terms commonly found in commercial real estate agreements and take the necessary steps to negotiate the terms of your lease.
Operating Expenses (Common Area Maintenance): It is common for commercial leases to include a provision requiring the tenant to pay for operational and maintenance expenses. However, landlords may also include language specifying that tenant pay for insurance and tax-related expenses for their leased building space – expenses the property owner should handle. By reviewing the history of the building’s operating expenses for the last several years, you will be able to determine a trajectory of future expenses. It is important to negotiate the terms of the operating expenses and limit them to legitimate common area expenses. It is also important for the tenant to retain the right to audit and review property owner’s expenses and calculations. A tenant should attempt to insert a clause setting a maximum threshold for operating expenses and insert a “kick out” clause allowing termination of the lease if the threshold is exceeded.
Damages Provisions: Several provisions and clauses frequently found in the commercial lease deal with potential damage and destruction to the leased property. Landlords usually require indemnification and subrogation clauses to be included to cover themselves from incurring additional expenses. The tenant should negotiate limitations on responsibility for expenses incurred from damages, especially those occurring outside the control of the tenant.
- Force Majeure: It is important for tenants to be aware of the weather patterns in the area where they intend to lease. For example, if the leasing area is prone to flooding, hail storms, high winds, wildfires, falling trees, or power outages then the tenant should ensure that the lease contains a Force Majeure clause that covers these weather conditions. Additionally, a major event out of the tenant’s control can include items unrelated to weather such as labor union strikes.
- Damages: Several clauses can be included within a commercial lease addressing damages. These clauses require careful review and may require adjusting the language to be more favorable to the tenant. Typically, the damages clause will address how the landlord and tenant will handle damage to the property, repair, and if there is a need to terminate the lease early due to the extent of the damage to the leased property. There are two common types of damages resulting from a breaching party and providing resolution:
- Liquidated Damages (LDs): A default clause requiring a breaching party to pay a per diem amount for each day of default. Not a favorable clause for the tenant and one that should be amended or removed entirely from the lease agreement. Amendments should include language setting a cap for total damages that the breaching party is liable to pay.
- Consequential Damages (CDs): Include implied damages, such as reputation and name. It is ideal to add a waiver of CDs to the lease agreement and to include language for loss of profits, loss of business opportunities or goodwill, loss of property and/or equipment, and the expense of unforeseen costs.
Subrogation: A waiver of subrogation provision is one of the most critical, yet misunderstood provisions in a commercial lease. This clause allows the insurance company paying the claim to sue a third party it deems responsible for the damage. In terms of leases, the tenant is the third party. Without a clause of waiver of subrogation from the landlord’s insurer, the tenant may be obligated to pay the landlord’s insurer for the damage to property. Landlord and tenant should negotiate whether the waiver of subrogation will be mutual, or only benefit one party.
Additional Insureds: In some cases, landlords will require the tenant to add them to their Comprehensive General Liability (CGL) insurance policy as an additional insured. In this case, if a claim is made for damage, the tenant’s insurance will be required to pay for the claim. Instead, the tenant should attempt to have the landlord named as a Named Insured under a separate policy outside the CGL.
Indemnity: An indemnity provision is a hold harmless agreement involved in a process to assume risk. It is the transference of risk from a third-party claim to the party best able to bear the risk. The claim will arise from damages incurred from the negligent party—party best able to bear the risk, the tenant in this case because he has direct oversight of the rented property space. Indemnity clauses must adhere to strict terms in Texas. The ultimate negotiation of the indemnity clause will determine the tenant and the landlord are responsible for their own actions.
Repair and Maintenance: Tenant should carefully review this clause to determine if the landlord included language that would require the tenant to maintain an area that is the responsibility of the landlord. Typically, repair and maintenance is limited to the interior of the leased premise. However, the tenant should stipulate the exclusion of HVA, sprinklers, heating, and structural elements repair from the clause. The landlord is responsible for the upkeep and repair of said items.
Provisions Relating to Real Property Tax: It is important to ensure language within this provision stipulates the tenant is responsible only for defined real property tax specified within this provision and that these taxes end at the termination of the lease/tenancy. Additionally, it is vital to exclude state and federal income tax. The lease should specify the tax implications in the event the landlord sells his property; specifically stipulating a maximum threshold the tenant will pay for property taxes resulting from a change in ownership.
Compliance with Laws: It is important to thoroughly review the language within the lease agreement to ascertain who is responsible for maintaining the building/property’s compliance with state and federal laws. The tenant should include language specifying they will only be required to maintain compliance with laws regarding their particular use of the leased space. Furthermore, the tenant should include a cap amount they are required to pay per year to limit their yearly exposure.
Assignment and Subletting: It is imperative that you understand what areas within the agreement require consent from the landlord. Within most lease agreements, the tenant is required to obtain permission to sublet or assign their lease. Prior to signing your lease, negotiate this clause to include language for assignment in terms of business reorganization and for space-sharing. In instances of subletting, a provision should be included regarding “excess” rent obtained from subletting. The tenant should attempt to retain part of the excess rent. Additionally, if the lease contains a recapture clause allowing the landlord to terminate the lease at a request by the tenant to sublet, you need to counter with a stipulation allowing you, as the tenant, to withdraw the request if it triggers termination.
Eminent Domain and Estoppels: Tenants should ensure the lease addresses what will happen if a casualty loss damages the premises or eminent domain threatens the leased premise. Provisions addressing this issue can allow termination rights for the landlord and/or the tenant to navigate eminent domain. Effectively reducing risk and loss for the tenant and addressing whether the tenant will continue to lease the premise. The inclusion of an estoppel clause within the lease binds the tenant to factual statements concerning their actions within the lease. Estoppels provides information concerning tenant lease terms to lenders or potential purchasers of the premise. Tenants can negotiate the types of questions that can be asked within the estoppel clauses and set a response time that is convenient for the tenant.
- Subordination, Nondisturbance and Attornment (SNDA) Provision and Lenders: It is important to include a provision for subordination and nondisturbance if the landlord does not hold the deed of trust to the leased premise. The SDNA provision will protect the tenant in the event the landlord defaults on their loan and the property reverts to the lenders. In this case, the tenants lease will continue as is, with the lender being viewed as the new landlord.
- Termination and Abatement Rights: Tenants should include provisions addressing abatement rights relative to the proportion of the affected area of the premise. The abatement should provide additional remedy to the tenant in the event the landlord fails to resolve the affected premise issue and the issue continues to affect the business of the tenant. Including termination rights within the clause, allow the tenant to vacate the premise and terminate the lease without further obligation to the landlord.
- Cross-Default: Tenants who operate within a chain of businesses, should strike the cross-default clause from any lease agreement at their locations. The cross-default clause places all business within the chain in default if one premise location defaults. This is not fair to the other locations who are paid through. Additionally, the tenant should include language for a cure period to remedy the default locations lease.
Termination: Termination clauses cover a broad range of items. Tenants should be aware of provisions addressing relocating the tenant to a different location, landlord’s rights for expansion into the leased space and/or relocation consequences.
- Alternative Dispute Resolution (ADR): It is now common to include ADR provisions in lease agreements. However, tenants should ensure that the ADR provision is non-binding and allows the tenant to seek further remedy if they are unhappy with the results attained by mediation or arbitration. This provision should require a mediator or arbitrator be in compliance with the American Arbitration Association or the International Institute for Conflict Prevention and Resolution and to ensure full neutrality. The tenant may also wish to specify that ADR to take place in their premise location.
- Holdover Provision: Holdover provisions require attention and amending, prior to signing a lease. Tenants should be aware that such a provision will require them to pay a premium for their property upon the expiration of the lease with neither the tenant nor landlord, insisting on vacating the premise. Tenants should negotiate an amendment specifying the conclusion of the lease agreement, the rent will be month-to-month, at a specified amount. Additionally, such month-to-month rent is subject to the Termination for Convenience clause that either party can initiate without risk. The holdover provision can be included to activate in terms of the termination of the lease, but not for a lease expiring.
- Default: Termination for Convenience The tenant should ensure that a Notice clause is included within the lease providing a remedy to the tenant in the event a default is triggered against the tenant or the landlord invoked the Termination for Convenience clause. Thereby, allowing the tenant time to remedy the default before termination procedures are invoked by the landlord or allow the tenant additional time (depending upon what is negotiated within the Notice Clause) to obtain a new location. Additionally, a Net Book Value Protection clause should be included within the lease to protect the tenant’s financial interests if a Termination for Convenience clause is included within the lease. This will allow the tenant to recoup part of their losses for investments put into the property/property.
Conclusion: Prior to signing a commercial lease, it is important to review each clause within the lease with an experienced attorney to protect your business and financial interests. Failure to carefully review your commercial lease could result in increased insurance premiums, unnecessary expenditures for leased space upkeep, liability exposure to state and federal taxes, and unfavorable one-sided termination clauses.
Is your business about to enter a commercial lease? As a rule, never sign a commercial lease agreement without a lawyer’s review and approval. The attorneys at FILIPPOV LAW GROUP, PLLC have the experience and answers to the questions you face when reviewing a commercial lease agreement. Contact us today for a no-obligation assessment of your overall legal needs. Call us at (832) 305.5529 or email us at info@filippovlaw.com to schedule your appointment.
This post is intended as an information source for existing and future clients of FILIPPOV LAW GROUP, PLLC and should not be construed as legal advice. Readers should not act upon the information contained in this blog without professional counsel. The materials presented in our blog, “tweets” and legal articles may not reflect the most current legal developments, verdicts, or settlements. These materials may be changed, improved, or updated without notice. FILIPPOV LAW GROUP, PLLC is not responsible for any errors or omissions in the content of this site or for damages arising from the use or performance of this site under any circumstances. © Copyright 2017 FILIPPOV LAW GROUP, PLLC.
Read More
Reducing Cost By Minimizing MSA Indemnity Risks
Master Service Agreements (MSAs) form the core of any Oil & Gas Service provider’s business. Eager to bank on opportunities to work with Oil & Gas majors, Oil & Gas providers frequently overlook major risks by singing multiple MSAs without negotiating their terms.
An MSA is not just a contract; it is a risk management tool. Specifically, the indemnity provisions within the MSA primarily function as the means of risk transfer. Most Most Oil & Gas Companies like to lower their risk by placing it onto the Contractors. A properly drafted, reviewed and negotiated MSA indemnity provisions will help oil and gas providers lower their risks.
To further mitigate risk, Oil & Gas operators use other contractual documents, including MSAs, attachments, insurance agreements, terms and conditions, bills of lading, compliance requirements, safety requirements, work orders, and invoicing procedures. These documents are usually designed within the MSA, to reduce various risks governed therein. Such additional documentation typically contain complicated non-disclosure provisions, lien and liability releases, warranty disclaimers, pollution provisions, precise insurance requirements and complex indemnity language.
Filippov Law attorneys provide Oil and Gas clients with a thorough MSA review and negotiation process. At Filippov Law, we assist clients in creating MSA forms that fit their business needs and help with their MSA negotiations. The opposing party usually does not propose excessive changes or redlines out of a sense of goodwill. At Filippov Law, we have successfully negotiated hundreds of Oil & Gas Company MSAs on behalf of Contractor clients, leading to significant reduction of risk of litigation and insurance premium savings.
At Filippov Law, we examine each of our clients’ MSAs for risk and cost for Contractors; and successfully negotiate indemnity provisions leading to a reduction of risk and insurance premiums.
How does your counsel manage the indemnity risk of your MSAs? Are they putting the effort in to reduce your insurance costs and minimize your balance sheet (self-insured) exposure? If not, contact us today for a no-obligation assessment of your overall legal needs and risk management program. Call us at (832) 305-5529 or email our managing member directly at info@filippovlaw.com to schedule an appointment.
This blog is intended as an information source for existing and future clients of FILIPPOV LAW GROUP, PLLC and should not be construed as legal advice. Readers should not act upon the information contained in this blog without professional counsel. The materials presented in our blog, “tweets” and legal articles may not reflect the most current legal developments, verdicts, or settlements. These materials may be changed, improved, or updated without notice. FILIPPOV LAW GROUP, PLLC. is not responsible for any errors or omissions in the content of this site or for damages arising from the use or performance of this site under any circumstances. © Copyright 2017 FILIPPOV LAW GROUP, PLLC
Read More