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Archive for February, 2011

Is Your Business Name Adequately Protected?

In the business world, there are generally two contexts in which a company name is used: (1) as a formal “trade name” for purposes of banking, taxation, licensing, and related matters; and (2) as a “trademark” for purposes of marketing goods and/or services.  There is a common misconception that the successful filing of a fictitious business name statement and/or organizational document with the California Secretary of State authorizes a business to safely use its “trade name” for all purposes.  Critically, these filings only address “trade name” issues – not “trademark” concerns.

For example, one could conceivably file “Jiffy Lube Automotive, Inc.” as a trade name with the Secretary of State (if available) and then open a bank account and file taxes under this name.  Yet, if “Jiffy Lube Automotive, Inc.” were used to market goods or services via print advertising or displays (i.e., used as a “trademark”) there is a reasonable likelihood it would infringe the rights of “Jiffy Lube” a well branded automotive service provider.  This would subject “Jiffy Lube Automotive, Inc.” to substantial liability exposure and potentially force it to change its name and destroy all marketing materials despite the fact the Secretary of State allowed the name to be registered as a “trade name”.

This scenario is not uncommon.  In fact, infringement lawsuits can be devastating given they are not only expensive, but also frequently destroy goodwill created by prior marketing efforts.  Thus, it is imperative that business owners proceed with caution when choosing their name.  At the very least, a name likely to be used as a trademark should be subjected to thorough internet, phonebook, Secretary of State and United States Patent and Trademark Office (USPTO) searches for similar marks already in use.  There are a number of trademark search companies that provide comprehensive services of this nature.

In addition, a business owner should consult with an insurer regarding “advertising injury” and related coverage and may want to consider seeking state and/or federal trademark registration.  While not always necessary or recommended, trademark registration generally decreases the likelihood of valid infringement claims – which can be critical if the business operates in several markets or intends to expand.  Further, registration usually has other advantages such as: (1) constructive notice to the public of the registrant’s claim of ownership; (2) a legal presumption of ownership; (3) the right to sue in federal court on matters involving the mark; and (4) a basis to obtain registration in foreign countries, if necessary.

Ultimately, every business seeking to adopt a name should consider whether the name can be used as a “trade name” as well as a “trademark” and should also consider the level of risk associated with the name.  If the business owner has questions or concerns regarding these issues, an attorney should be consulted.

Visit our site for answers to legal questions regarding company names and trademarks.

Revolution Fever Sparks Interesting Questions for the International Community

We all watched these last weeks as the Egyptian people, inspired by the Tunisian Lavendar Revolution, over threw the oppressive ruling regime of Hosni Murabak.  As we watch the revolutionary sentiment spread throughout the Middle East region many new issues arise.  One issue that has not garnered much public contemplation is the interplay of international law with the practicalities of what is actually happening.  Namely, will the overthrown leaders be held responsible in the International Criminal Court for their human rights violations and who are the recognized ruling entities who the international community will deal with until permanent governments are established.

As for the accountability of the overthrown rulers of countries such as Tunisia and Egypt, it is likely contingent on where those people are located.  International law gains its jurisdiction through consent of the sovereign nations who submit to it.  Countries are sovereign entities controlling their own destiny which includes whether or not to adhere to international law.  This can include a sovereign nation choosing to only adhere to portions of international law.  Thus, wherever Hosni Mubarak (Egypt) and Zine el-Abidine Ben Ali (Tunisia) are located it will be up to the leadership of those countries to decide to detain and turn over those men to international authorities.  What is more, does the international community have an obligation to turn those deposed rulers over to their former people to stand trial in their respective homelands?

Another interesting aspect of the turmoil in the Middle East is who the international community is supposed to recognize as the countries’ governing body.  In the case of Tunisia, an interim government has been established yet there is impatience mounting with the transition to a permanent government.  In Egypt, the military has assumed control of the country until a permanent government is in place.  In both situations, the international community has ruling bodies to deal with but the question arises as to whether these entities are to be recognized indefinitely.  Does the international community have the legal and moral authority to eventually refuse to recognize these interim ruling bodies as the governments of their respective countries if they refuse to relinquish power?

All in all, we are witnessing amazing times.  Just as with the fall of the Berlin Wall 22 years ago, we are witnessing a fundamental change to an entire region.  Will this lead to the end of totalitarian and dictatorial governments in the Middle East just as the fall of the Berlin Wall led to the demise of the Soviet Union and its authoritarian communist rule of the entire Eastern European region, only time will tell.  In the meantime, as events unfold in the Middle East we get to be witnesses to history and contemplate the far reaching consequences and questions raised by these events.

Sex Torts… The New Type Of Tort

You are probably wondering… “what is a sex tort” and “where can I get one for my significant other?”  However, you probably do not want a sex tort.  Maybe, I should explain that we are not talking about a seductive dessert here.  In the legal sense, a “tort” is not a fancy pastry or dessert.  It is in fact a type of law that is generally synonymous with personal injury.

So, now you are thinking, “what the hell is a sex tort?”  Well a “sex tort” is a short way of describing a lawsuit, where the plaintiff is suing the defendant for transmitting a sexually transmitted disease during sexual intercourse.  The basis of the claim is usually: (1) that one partner possessed a STD, (2) that partner knew that he/she had the STD, but did not tell the other partner that they possessed the STD, and (4) as a result the two partners had unprotected sex, transmitting the STD to the other partner.  Now Courts are awarding millions in damages in sex tort cases… so the question arises, is the court the appropriate forum for regulating sex.

Matthew Heller of the California Bar Journal wrote a very good article on the subject.  You can check it out here.

 

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The NFL Doesn’t Need Any Stinking Lawyers

Its Super Bowl week, so may as well keep with the football theme.  Hey, football is a business as much as it is game, so there are numerous legal issues, including trademark, contract negotiations and employment.

As you may know, the Collective Bargaining Agreement between the NFL team owners and the the NFL Players’ Union is set to terminate in March 2011.  The CBA is ending in March 2011, is due to the team owners elected to terminate the agreement due to the fact that the owners believed they were giving too much money to the players.  If you are interested in the CBA history and negotiations, I suggest that you check out Mike Florio’s blog, Profootballtalk.com.  You can reach it here.

In any event, the team owners and the Players’ Association is currently attempting to negotiate a new CBA prior to the expiration of the current CBA.  According, to one owner, the problem is the lawyers.  More specifically, Robert Kraft, the owner of the New England Patriots said:

“In my opinion, we could get a deal done in the next week.  If business people sat down on both sides, and we tried to get the lawyers in the background. . . .  Get lawyers away from table.  Lawyers are deal breakers, not deal makers.”

As a lawyer, I will acknowledge I biased on this issue and I have to admit, Mr. Kraft’s statement tweaked me a little bit.  Frankly, I think he is way off base.  And, I suspect, given many people’s opinion of lawyers, I think there will be more people on his side than mine, but oh well.  In any event, my thoughts:

First, the client is always the boss in a negotiation.  If a client wants to make a deal, the client can make the deal.  A lawyer’s primary job is to inform the client and advise accordingly, so that the client knows the ramifications of his/her actions.  The lawyer can negotiate on the client’s behalf… or the client can negotiate on his/her own.  But at all times, the client is the decision maker on substantive issues.  Consequently, Mr. Kraft, and the other owners can simply start negotiating on there own… or even agree to what the players want.

Second, if the lawyers are getting in the way of a negotiation, they are terrible lawyers.  A lawyer is required to put their client’s interests first… not their own egos.  So, if the lawyers are getting in the way… they should be fired.  Again, the client is the decision maker.

Third, we really need to ask ourselves, are the lawyers really the problem here… or is the owners and the players.  Here we have billionaires and millionaires trying to get richer.  The owners and the players are arguing over how money will be divided , who will pay for building new stadiums and the number of games they will play in a season, as well as countless other items.  Furthermore, it was not the lawyers who terminated the existing CBA, it was the owners, inclusive of Mr. Kraft.

Moreover, the team owners are not simpletons, who are easily taken advantage of by the slimy lawyer.  They are wealthy businessmen and women who know what they are doing.  Mr. Kraft, for example, is the CEO of the Kraft Group and sits on the Board of Directors for Viacom and the Federal Reserve Bank of Boston. Therefore, I don’t think lawyers took advantage of him and the other owners and are preventing an agreement… rather, it appears to be the owners and the players preventing an agreement.

Finally, after giving more thought to it, I cannot help but think that Mr. Kraft was trying to tweak his adversary in the negotiation.  DeMaurice Smith is the Executive Director of the NFL Players Association and happens to be a former trial lawyer.  Mr. Smith is the only primary negotiator who happens to be a lawyer.  Roger Goodell, the Commissioner of the NFL and Jeff Pash, the primary negotiator on behalf of the team owners are not lawyers.  So, apparently, this negotiation would go much smoother if the person the players hired to represent their interests in these negotiations was not allowed in the negotiating room.  That sounds fair.  Thirty-two wealthy, educated and sophisticated businessmen versus 1,700 (or so) players who primarily went to college only to play football.

In any event, I think Mr. Kraft’s statement is ridiculous and wrong.  At the same time, I believe that many people probably agree with him.  I understand that people want to go see their lawyer as much as they want to go see the dentist (my dentist has a similar phrase… he says that people want to see their dentist as much as they want to see their lawyer).  But hey, we aren’t that bad.

If you are interested Mike Florio has a post on Mr. Kraft’s statement as well, which you can read here.

Redevelopment Funds To Cease?

As many of you know, Governor Jerry Brown is proposing to cut the program funding redevelopment.  While this may not be a legal issue, it does effect many of our clients, whether they be developers, contractors, restaurateurs or retailers.  Ultimately, the state has to save money somewhere, so it appears that redevelopment funds are on the chopping block.  There is no doubt that Sacramento will feel the effects of redevelopment fund cuts.  Over the past couple of years, Sacramento saw significant redevelopment in its downtown, however, that may come to an end.  If so, what is in store for the K Street Mall… an area in significant need of redevelopment.

The Sacramento Business Journal recently ran a pretty big story on this issue, to read it, you can click here.  There is also an editorial done by the Business Journal, which can be read here.  In the event you are not a subscriber to the Business Journal, you can read about redevelopment in the Sacramento Bee here.

Categories: Uncategorized

Trademark and Copyright Issues in the Superbowl

Okay, I am going to ruin the Superbowl for everyone, by talking about some random legal issue that arises out of the “big game”.  When it comes to the Super Bowl, most people concern themselves with planning parties, ordering pizza and drinking beer.  Me, on the other hand, I see a giant trademark issue.

You may have noticed that some advertisers do not use the term “Superbowl” in connection with their advertisements.  They refer to the Superbowl as the “Big Game” or something similar.  The reason… they do not have the right to use the term “Superbowl”.  Several years ago, the NFL obtained a trademark on the term Superbowl.  You can find the trademark registration by going to the United States Patent and Trademark Office website.  I understand that the NFL also holds a copyright on the term “Superbowl”, but was unable to confirm that on the United States Copyright Office.

In any event, the NFL’s trademark on the term “Superbowl” allows them significant control over the mark “Superbowl.”  Granted, there are various exceptions, but they are few and far between.  As a result, if you want to use the term “Superbowl”, you need to pay the NFL for the right… in other words, you need to buy a license to use the term “Superbowl” in connection with your advertising.  If, you use the mark “Superbowl” without paying for it, you can be subject to a lawsuit brought to you courtesy of the NFL.

If you are interested in this issue you can read more about it here.

Categories: Uncategorized