Lesson #183: The Top 12 Reasons to Protect Your Trademarks

A trademark is that word, phrase, symbol, logo or design that sets your goods or services apart and distinguishes you from all the rest.  The “loud and proud” protection of goodwill being built in a mark serves many valuable purposes.  To help me detail these reasons, I reached out to Tim Engling, an intellectual property attorney at the lawfirm  Michael Best.

Below, Tim helps us to detail the Top 12 Reasons to Protect Your Trademarks:

1. A registration is an asset that delineates rights in a trademark by recording and securing exclusive rights to the registrant.  A federal registration can be licensed or sold as property, and assignments, liens, and security interests can be federally recorded.

2. The registration process reduces risk for use-based or intent-to-use applications in two stages: first with USPTO examination at about three months after filing and second after allowance with publication for public opposition.  There is less risk in using a registered mark than one with untested and limited common law rights.

3. Only federal registration permits use of the circled “R” symbol, ®, adding a professional appearance and showing that a mark is important enough to protect, enhancing your brand.  Without federal registration, only “TM” may be used, which is merely an assertion that the user believes it has trademark rights.

4. Constructive notice, whereby the public is deemed notified and aware that the trademark is in use, begins the date the mark is federally registered.  Constructive notice may hinder parties from challenging your registered mark by limiting excuses.

5. With actual knowledge, competitors may avoid adopting conflicting marks. When adopting their own marks, competitors should search federal records to avoid selecting confusingly similar marks or would adopt new marks at their peril with inferior rights.

6. A registration will block registration of confusingly similar marks.  The Trademark Office should reject confusingly similar marks from later registration, protecting your image.

7. Federal law allows for incontestability – the highest status of trademark protection.  After five years of registration with proper conditions, no one can assert prior use, nor can the registration be challenged on numerous other grounds.

8. Registration permits jurisdiction in U.S. federal court, where a judge may grant injunctions, award damages for infringement and – in some cases – recovery of legal fees and defendant’s profits.

9. A federal registration is presumed valid in legal proceedings with other evidentiary benefits.  It provides evidence of ownership and the owner’s exclusive right to use the mark on registered goods and services. It helps prevail in trademark disputes.

10. Beyond federal court, a registration recorded with U.S. Customs may protect you by preventing the importation of infringing or counterfeit goods.  Customs can seize counterfeit goods, impose fines and detain imported goods that infringe.

11. A federal trademark registration can also serve as a basis for obtaining priority and registrations in foreign countries.

12. Lastly, the cost is reasonable for these benefits.  Typically, the cost for preparing and filing a federal trademark application in one class is about $1,200, and trouble-free prosecution through registration is about half that amount.

Federal trademark registration is a value-added proposition for companies, and an area where investors evaluate risk, value, and prudent company procedures.  So, it is both a benefit for the company, and protection for its investors. 

For more information on how to select, protect, register or enforce your trademarks, feel free to reach out to Tim at  tjengling@michaelbest.com or 312-596-5839.

For future posts, please follow me on Twitter at: @georgedeeb.

 

Is Your Startup Building a "Vitamin" or a "Painkiller"?

I once heard a great entrepreneurial panel discussion, including Mahendra Vora, the founder of Intelliseek (sold to Nielsen) and now a Cincinnati-based venture capitalist. He was advising the entrepreneurs in the room to make sure their startups were building “pain killers, and not vitamins” for their clients, in order to get their attention and build a sizable business of scale. I thought that was very sound advice, worth detailing into an educational post on the difference between “vitamins” and “pain killers”.

Read the rest of this post in Forbes, which I guest authored this month.

For future posts, please follow m on Twitter at: @georgedeeb.

University of Chicago Booth School Now Accepting Applications for New Venture and Small Enterprise Lab

Client applications are now being accepted for the New Venture and Small Enterprise Lab at the University of Chicago Booth School of Business. The class places teams of four to six MBA students with Chicago-area startups and small businesses to work on a special project over a 10-week quarter. The class gives students exposure to the working environment and culture of smaller companies and the opportunity to work with owners and managers while earning academic credit towards their MBA.

Client companies get to tap the talent and expertise of Booth students through a structured, 10-week class after which they will receive a delivered project addressing their specific business challenge. Past projects have included marketing strategies, sales programs, client assessment tools, investor packages, pricing strategies, developing new markets and even customer-service dashboards.

This course offers a blend of theoretical constructs and practical experience as they relate to emerging businesses through classroom lectures and on-site client experiences. It is taught twice during the 2014-2015 academic year. Once in the Fall quarter starting in late September and once in the Winter quarter starting in January.

If you are interested in learning more about becoming a client company for the University of Chicago New Venture and Small Enterprise Lab please visit www.34701.org and complete a client application.

[VIDEO] George Deeb Presents "The Birth of the Startup Excubator" at Techweek Chicago 2014

In case you missed it, here is the presentation made by Red Rocket's George Deeb at Techweek Chicago on June 27, 2014.  On behalf of the Ensemble alliance members, George presents "The Birth of the Startup Excubator Model", and compares its strengths and weaknesses versus other startup accelerator programs.

Here is the video from Techweek's YouTube Channel:



Here is the matching powerpoint presentation from SlideShare.

Hope this helps you to better understand Ensemble's "startup excubator" model.  If interested in learning more, feel free to reach out to Ensemble via their website.


For future posts, please follow Red Rocket on Twitter at: @RedRocketVC.

Create an "Everyone Sells" Culture

The common fault in the thinking of many entrepreneurs is that revenues will only be driven by the sales team, and the sales team alone. They put a lot of energy into hiring the best salespeople they can afford, training them up on their product or service, and them letting them loose and hoping for the best. The problem with that thinking is salespeople are only one part of the equation.

Read the rest of this post in Forbes, which I guest authored this week.

For future posts, please follow me on Twitter at:  @georgedeeb.