VRP Law Group, P.C.

A Boutique Business, Employment and Intellectual Property Law Firm

Archive for the ‘Trademark Law Updates’ Category

Information Technology and Intellectual Property Audits: What are they? Why do we need them? What do we need lawyers for?

Tuesday, November 11th, 2014

Information Technology (IT) and Intellectual Property (IP) Audits are more and more common place and necessary for today’s trusted advisers and professionals. The more effort you take to make sure that you protect your client’s confidentiality, intellectual property, personal information, banking information, tax information, business strategy and marketing plans, is protected the better of you will be. VRP Law Group’s IT Audits consist of the following: 1) Review of your Technology Service Agreements; 2) Reviewing and Identifying Gaps if any, in any ISP or network security settings; 3) Making sure that there is an immediate and prompt investigation that identifies vulnerabilities, breaches in data security, documents and preserves the investigation and the evidence gathered during the investigation; 4) providing good terms of use and privacy policies for use of your client’s websites or your own website; 5) Creating good internal controls to protect extremely sensitive information, intellectual property and vital trade secrets; and 6) having effective IT communication policies, password protection means, and effective training and communication of such policies to your employees and IT vendors.

Moreover, making sure that you use trusted IT vendors and manage any change in network and internet service providers to ensure that proper security protocols and change management procedures are followed by your employees, your current and future trusted vendors. Without having someone like VRP Law Group that can oversee the process and/or identify the gaps, vulnerabilities, and coordinate an effective investigation and response the change management procedures may be ineffective in addressing data security issues. These data security issues can lead to liabilities for identity fraud or theft, breach of client’s confidentiality, misappropriation of your trade secrets, vital research and development memos, confidential consulting opinions, freedom to operate opinions, willful infringement opinions, patentability analysis, prior art search analysis, fraud upon the USPTO, US Copyright or Trademark Office, or many sometimes unforeseeable problems, until a lawsuit is filed.

Empowering yourself, your employees to deal with these problems without the worry of irrational fears and implementing the necessary change management procedures is a challenging endeavor. VRP Law Group is here to help you see and identify the foreseeable and legitimate risks without heading down the wrong path or becoming an individual that is unable to see anything, but impending doom in terms of managing its assets, confidential information, intellectual property and other vital competitive advantages that may be a lure for any hacker. Using our IT and IP audits will enable you to make sure that you work closely with experienced technology counsel, cyber Law, data privacy law, and intellectual property counsel. This is always a team endeavor to make sure that you focus your clients, entrepreneurs, small or large companies’ resources on the right breach or vulnerabilities to document and preserve the corrective measures and ensure that future or repeated incidents are minimized.

Your clients and you will sleep a bit easier at night with having VRP Law Group’s IT and IP Audit professionals looking after you, your clients, your intellectual property, your change management procedures, and related information technology matters. For more go to: www.vrplawgroup.com, www.bipeblawg.com, www.eebrunchclub.com

Startup and Business Planning for acquiring capital from Investors, Angels, VCs or Private Equity Groups!

Wednesday, March 26th, 2014

This process is more involved and complex for Startups than their owners realize. However, try to keep thins simple and avoid some of the most common mistakes Entrepreneurs or Starups make. For examples the following is a simple list of Dos‘s that all Entrepreneurs and Startups should keep in mind.

Do the following:

1. First, ask friends and family or use personal resources first-within reason the first 10 to 50K should come from friends and family;

2. Identify competitive advantages, intellectual property, knowledge gaps and weaknesses, study your competitors, potential competitors, industry and market;

3. Pay your investors before paying yourself a salary or keep it small to avoid a loss of workung capital, unless you are an S-corp, then pay yourself a reasonable salary;

4. Track key metrics, such as, key customers, costs of customer acquisition, key products or services, reorders by customers, Google analytics-number of new and returning visitors, level of ngagemnt of visitors, costs of acquiring visitor, conversion rate from visitor to customer, limit overhead and fixed costs, profit margin, distributions to owners or losses shared by owners, and costs of scaling;

5. Invest time and effort in finding good people to flll knowledge gaps, to address weaknesses, acquire industry contacts or relationships, to innovate and enage customer and increase new orders or reorders, to monetize intellectual property, to develop revenues from visitors and customers, and to assist with manaiging growth;

6. Develop a detailed and realistic budget for growth and the expected revenues from growth or scaling your startup (do not undestimate costs or your time);

7. Create a task list for growing or scaling your startup (Identify which tasks you or your organization can perfom or learn to perform with education, training and time), which, tasks will require others or people other than you or your organization, which tasks can you get an outsider or third party for little to no cash outlay from you or your organization, which tasks will require a cash outlay and how much?, prioritize the tasks and need to have tasks performed on schedule.

8. Identify methods of reducing costs, improving operational efficiencies, and create manuals. Use the manuals as a starting point to train new employees , contractors or executives. Make sure key customers are satsfied, confirm receipt of products abd services and ask for feedback or input on additional features, improvements or problems the customers are experiencing;

9. Develop an executive summary, 3-5 pages, develop a power point presentation on for investors, angels, vcs, or private equity groups, identify return on investment, idetify amount of funds you are seeking, identify equity you are willing to give, make sure you maintain operational and ownership control, get a good Non-disclosure Agreement (protect right to improvements, derivatives, new versions of existing products or services, hire a good lawyer, accountant, industry expert, or team of professionals, get assistance where needed to finalize executive summary, power point presentation and pitch to investors;

10. Get a ppm and qualify for Reg D exemption, identify alternative sources of funding, grants, subsidies, strategic alliances, kickstarter, crowdfunding, personal loans to company that can be written off or converted to equity, get to market with quality products and services, protect intellectual property, get sales maintain or increase profit marging, develop exit or succession plan.

Ask for, accept criticism and feedback, incorporate critcism and feedback, address weaknesses do not hide them, be candid and upfront about challenges and problems and your plan for overcoming them, do a reality check, reward and pat yourself on the back for wins along the way, learn from failures, losses and mistakes along the way, do it at your own pace taking into consideration market and industry conditions, lead by example and be respectful and value other peoples ideas, money, passions and time; accept responsibility for your or the organizations failures, mistakes and success.

Finally, Refine on all of the above and Continue to Learn, Refine on all of the above and Contniue to Learn, Refine on all of the above and Continue to Learn—-Anyone see a pattern or theme.

Most importantly, have fun and enjoy the entire process. When you stop having fun retire and advise others!

Defense of infringement claims, preliminary or permanent injunction proceedings and keeping your clients in business!

Sunday, January 19th, 2014

Unclean hands is often, overlooked and not asserted by any Defendant that is sued for a preliminary or permanent injunction. If you can get the Court to find that the Plaintiff has acted with Unclean Hands, then the Defendant may be able to tip the balance of equities interests in its favor. But, this doctrine can also be combined with unfair competition or deceptive trade practices to ensure that the Defendant has some counterclaims for negotiating leverage.

The Defendant must establish that the Plaintiff has acted to prevent the Defendant from engaging in competition for a product or service that it offers or is related to the Plaintiff or its affiliated companies. An overly aggressive intellectual property enforcement or policing policy can lead to IP misuse or anti-tying violations. However, these doctrines and claims can be made whether you are subject to a copyright, patent or trademark infringement suit.

Both of these defenses and the facts and circumstances that support them may also support unfair competition and deceptive trade practices claims. In addition, the consumer protection act of each state and the Federal Trade Commission’s regulations should be reviewed and incorporated into your discovery, evidence preservation, litigation, negotiation and settlement strategy, early, on in the Lawsuit.

So, why is this important? It will allow the Defendant to avoid an early temporary or preliminary injunction being entered against it. This can be the difference between the Defendant being able to generate revenues that can be used to fund its defense of the Lawsuit. Moreover, often this can be the difference between getting a settlement on your terms and continuing to operate the business, or being driven out of the market.

Making sure your litigation attorney understands the implications of the Unclean Hands, the unfair competition, IP misuse and anti-tying doctines can be the difference between staying in business and having to close your doors.

Of course, if you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Understanding TTAB Proceedings and the Use of a Trademark Registration and Applications With the USPTO!

Wednesday, January 1st, 2014

Many trademark professionals do not understand the value of a presumption of validity and first use of a trademark. However, this presumption can mean the difference between winning or losing a summary judgment motion, a trademark opposition or cancelation proceedings. Unfortunately, the trademark trials board procedures must be compiled with to enable a trademark owner to have the board to consider your application, its prosecution history, and the certificate of registration.

In order to have the TTAB consider the application, its prosecution history or registration, a party must use a notice of reliance, a certified copy of the registration. Otherwise, the dates of use will not be considered competent evidence of use of a trademark. Although the application or registration at issue is automatically part of the record that the TTAB can consider, the dates of use are not always competent evidence of use of the trademark.

However, you must comply with TTAB Manual Section 704 to have the dates of use qualify, as competent evidence of use of a mark. This rule is similar to the federal rules of evidence relating to authentication and foundation (901, 902 and 903). Once, this preliminary, requirement is met, the dates of use of the mark can be used to establish priority, first use, and establish trademark or servicemark rights.

Working with an attorney with experience with TTAB proceedings will enable to protect your brand and enforce your trademark or servicemark rights. If you have any concerns or questions about protecting your trademark portfolio, then please contact us.

Litigation of Copyrights and Seventh Circuit Rules regarding validity of Copyrights, declarations from the Register of Copyrights, need for financial experts for damages!

Friday, November 8th, 2013

In a recent Seventh Circuit Opinion, the Court, found that a partners use of a copyrighted logo was not infringing due to an invalidity of the copyright registration. The District Court’s finding of invalidity based on what it found to be a misrepresentation in its application to the Copyright Office. Although the Plaintiff may have inadvertently or intentionally misled the Copyright Office, the district court should not declare the Copyright Registration for the Logo to be invalid.

Prior to declaring the registration for the copyright to be invalid, the District Court should first contact the Register of Copyrights that the information relating to the authorship and ownership that was misleading would render the actual registration invalid. The District Court could make the factual determination that the Plaintiff purposely misled the Copyright Office, but it cannot make a determination of its impact on the application to register itself. Once, consulting the Register of Copyrights and allowing the Register to determine the materiality of the misleading information, then the Court could procedurally make some type of ultimate conclusion.

With respect to the breach of contract claim against the partner of the Copyright Owner, the Seventh Circuit stated that it could not award the royalties or percentage of the profits it awarded based on the speculative and inaccurate evidence presented by the Copyright Owner. Moreover, the Plaintiff and the Copyright Owner could not establish damages using inaccurate and incomplete financial information to establish an entitlement to a percentage of the profits of the partnerships. Thus, the Seventh Circuit remanded part of the Ruling to the District Court for further proceedings consistent with the aforementioned Ruling.

As such Copyright Litigants and Owners have to be aware of the impact on their trial and litigation proceedings based on the quality of the evidence and the need to ensure that the evidence is going to meet evidentiary requirements. Otherwise, the hard work and effort put into the lawsuit and even winning a trial may be ruined by the failure to ensure compliance with evidentiary requirements. If you have any concerns or questions, then please contact us.

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