How do I decide what business entity I need?

There are several business entity types. Each of them have different requirements for filing, tax benefits, liability protections, and formality requirements. Because of this, we cannot and do not recommend one particular business entity over another. Instead, after seeking the tax advice of a local tax attorney or Certified Public Accountant, we work collaboratively with our clients to select the business entity that best suits their needs.

Should I be an S-corp and a C-corp?

S-Corp and C-Corp are tax designations. Each designation has its own benefits. We strongly recommend that you speak with a certified public accountant for further guidance on this.

How do I maintain my business entity?

This depends on the business entity you have. Some business entities require that you file and Annual Report to maintain them. Others may also need yearly updates to their bylaws and articles of incorporation. Even others may require that hold formal meetings and keep meeting minutes. It is important that you make sure you are following all the requirements for your particular business entity.

Are contracts required to be in writing to be enforceable?

In some cases, a verbal agreement may constitute a binding contract, but in other situations an agreement must be reduced to writing to become a binding contract. “Statutes of frauds” identify those types of contracts which must be in writing. Statute of frauds rules vary from state to state. However, there are exceptions to the statute of frauds rules which may apply. The best practice is always to reduce the agreement to writing to confirm the parties’ understanding and acceptance of the terms.

Are e-signatures legally binding?

A breach of contract generally occurs when a party fails to perform its obligations under the contract and such failure to perform is not excused by the non-breaching party. Examples of a breach of contract include a failure to pay for goods or services, providing defective merchandise, or failing to deliver goods or services under the time frame specified in the contract. A breach may also occur if a party violates a covenant or other term in the contract.

What are the minimum requirements to form a contract?

Every contract requires three basic elements: an offer, acceptance of the offer, and consideration. “Consideration” can include the payment of money, providing goods or services, or the mutual exchange of promises.

What constitutes breach of contract?

A breach of contract generally occurs when a party fails to perform its obligations under the contract and such failure to perform is not excused by the non-breaching party. Examples of a breach of contract include a failure to pay for goods or services, providing defective merchandise, or failing to deliver goods or services under the time frame specified in the contract. A breach may also occur if a party violates a covenant or other term in the contract.

Why are some contracts unenforceable or void?

Contracts in some cases may be found to be unenforceable or voidable due to: misrepresentation, illegality, unconscionability (when a contract is unfair or oppressive to one party in a way that suggests abuses during its formation), duress (wrongful pressure exerted upon a person to coerce that person to enter into a contract, or incapacity of one of the parties.

Can I sue if the other party breaches our contract? What can I get?

Your contract should be carefully analyzed to determine how to proceed. Some contracts require the non-breaching party to give notice of the breach and give the other party an opportunity to “cure” the breach before you can file suit. In some cases, such as with construction contracts, there may be statutory right to cure notice requirements. Some contracts obligate the parties to engage in a mediation prior to filing suit, in which the parties are required to meet with an impartial third party and attempt to negotiate a settlement of their dispute. Some contracts also include “forum selection” provisions which specify the particular jurisdiction or court in which a lawsuit must be brought.

What is a trademark?

A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

Why do you do a clearance report before you file my trademark application?

It is advisable to conduct a search before filing your application. The purpose of the search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services. Note that the identical mark could be registered to different parties if the goods and/or services are in no way related, e.g., for computers and soft drinks. 

Can I use ™ or ® in connection with my mark?

Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

What are the benefits of federal trademark registration?

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases.

Someone is using my trademark without my permission. What should I do?

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law.

My application fell into abandonment. Can I revive the application?

If you applied for a trademark, but for some reason did not continue the process after receiving an Office Action or Notice of Allowance, you can file a petition with the USPTO to revive the application within two months after the Notice of Abandonment has been posted and within six months after the USPTO electronically posts that the application has been abandoned.

My trademark registration has lapsed. Can I revive it?

Often, lapsed or abandoned trademarks is due to people failing to file a Declaration of Continued Use. After 5 or 6 years of registering a trademark, this must be filed to let the USPTO know the trademark is still being used. You can’t revive an abandoned trademark registration; you’ll have to reapply.

Can I sell my trademark?

Yes. A registered mark may be sold and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. 

How do I give permission for someone else to use my trademark?

You can contractually agree to license your trademark to another person or entity.

I have a logo or name for a product or service idea that I have not yet launched or made available to the public. Can I still file for trademark protection?

Yes. An Intent-To-Use trademark application (ITU application) allows an applicant to apply for a trademark that has not yet been used in commerce. Use in commerce means the usage of your trademark in connection with selling or offering the relevant goods or services. After the initial filing of an ITU application, the applicant must file a Statement of Use once the mark has been used in connection with the goods or services identified in the application.

What is a trademark priority date?

Trademark priority examines how long the trademark has been actively used in commerce and can help to determine if the trademark owner has precedence over another user of the same or a similar mark. However, the best way to achieve a priority date for your trademark is by filing a federal trademark application as early as possible. Even if your trademark is not yet in use, the application can be based on an intent to use the mark, allowing the filing date to act as an earlier priority date and declaring your claim on the trademark’s rights.

Do I have to be a United States citizen to file a trademark application?

No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.

I received a notice of opposition. What do I do?

Once a notice of opposition has been filed against your trademark application, you must file an answer within 30 days. This answer must respond to each of the allegations made in the notice of opposition. Once your answer is filed, the Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding (which is essentially like a trial).

I submitted my trademark application on my own. Now I’ve received an Office Action. What do I do?

The most important thing in responding to an office action is to be timely. Trademark applicants are given 6 months to submit a response to an office action.

The next thing to decide is whether you will submit a response yourself or hire a trademark attorney to do it for you. While responses to simple office actions can typically be handled on your own (for instance, where the examining attorney has required a disclaimer to be added), it’s usually inadvisable to do, especially for substantive office actions like “likelihood of confusion” and “mere descriptiveness.”

What do I have to do to maintain my trademark?

When filing post registration maintenance documents, make sure you file to maintain your registration for goods and services with which your trademark is currently in use in commerce. Provide specimens that show proper use in commerce. Also make sure you update the ownership info in your maintenance filing. In addition to timely filing all post registration maintenance documents, it is important to monitor your trademark to ensure that no one is using it without your permission.

How long does a trademark registration last?

The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. 

Accordion Content

What is a trade secret?

Trade secrets are intellectual property rights on confidential information which may be sold or licensed. In general, to qualify as a trade secret, the information must be:

  • commercially valuable because it is secret;
  • be known only to a limited group of persons, and
  • be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees.

What kind of information is protected by trade secret?

In general, any confidential business information which provides an enterprise a competitive edge and is unknown to others may be protected as a trade secret. Trade secrets encompass both technical information, such as information concerning manufacturing processes, experimental research data, software algorithms and commercial information such as distribution methods, list of suppliers and clients, and advertising strategies.

A trade secret may be also made up of a combination of elements, each of which by itself is in the public domain, but where the combination, which is kept secret, provides a competitive advantage.

Other examples of information that may be protected by trade secrets include financial information, formulas and recipes and source codes.

How long does a trade secret last?

Trade secrets are protected without registration, that is, trade secrets require no procedural formalities for their protection. A trade secret can be protected for an unlimited period of time, unless it is discovered or legally acquired by others and disclosed to the public. For these reasons, the protection of trade secrets may appear to be particularly attractive for certain companies. 

What are the rights conferred by trade secret?

In general, trade secret protection confers owners the right to prevent the information lawfully within their control from being disclosed, acquired or used by others without their consent in a manner contrary to honest commercial practice.

While the determination of such practices depends ultimately on the circumstances of each individual case, in general, unfair practices in respect of secret information include industrial or commercial espionage, breach of contract, breach of confidence and inducement to breach. It further includes the use or disclosure of a trade secret by a third party who knew, or was grossly negligent in failing to know, that such practices were involved in the acquisition of the confidential information.

What remedies do I have if someone misappropriates my trade secret?

In general, a trade secret owner can collect damages from the person who violated the trade secret for the economic injury suffered. The trade secret laws of some countries might also permit the use of injunctions, which requires the cessation of the use of any products that have been created through the use of trade secret information contrary to honest commercial practices. In some countries, for particular cases of trade secret violation, criminal penalties are available.