Tag: Phoenix intellectual property lawyer

  • Registered Trade Name vs Registered Trademark: Who Wins?

    “Kum & Go,” photo by Dustin Murrell Broadcast Journalist (Creative Commons License)

    Last week, I wrote about intellectual property disputes where one side had the website domain and the other side has the registered trademark. Someone asked me how do registered trade names factor into these situations.

    What’s a Trade Name?

    In general, a trade name is something you register with your state. This is different than registering a trademark with the U.S. Patent and Trademark Office (USPTO). This is a way to register the name of your company or your product with your state. It typically takes only a matter of days to get and is cheap. In Arizona, the filing fee for a trade name is $10.00, whereas the minimum filing fee to register a trademark with the USPTO is $250, and it takes months (if not longer) for the USPTO to process your application. Your state may also give you the ability to register a state-level slogan or logo.

    Value of Registering a Trade Name

    To be honest, there’s little value in registering a trade name at the state level. It could be helpful in situations where the name of your legal entity is different than the company or product name. For example, if your entity was XYZ Company LLC and your did business as Green Ice Marketing, if you registered Green Ice Marketing as your trade name, your state might not let another company use the same name and compete with you ask Green Ice Marketing LLC.

    Even if you have a state-level trade name, it does not automatically give you statewide common law trademark rights. Common law trademark rights are based on your established geographic market, based on where you’re using the mark in commerce. Thus, if you register a trade name with your state, but you’re only using it commerce in your county, your common law trademark rights may only be that county, not the whole state.

    Registering a trade name creates a third-party record of when you started using a trademark, which may be helpful in a trademark dispute, but there are other ways to demonstrate when you began using a particular trademark in commerce.

    Trade Name vs Trademark

    In a trademark dispute, timing is often a deciding factor when two companies are selling similar products using the same or confusingly similar trademarks. In a trade name vs trademark dispute, there are two ways it could go down.

    Option #1: You Registered a Trade Name Before They Registered the Trademark.

    As stated above, when you only register a trade name with your state, there are no associated federal trademark rights that come with that registration. You only get common law trademark rights based on the established geographic market where you’re using your trade name in commerce.

    The moment your competition registered the trademark with the USPTO, you become “frozen” in your established geographic market. The registrant gets the exclusive right to use the trademark everywhere else in the United States except within the geographic market you established prior to their registration.

    It’s like a snow globe dropped over your area at that moment. They can’t go into your area, and you can’t expand beyond that invisible barrier unless you rebrand. This is what happened in the Burger King situation.

    Option #2: You Registered a Trade Name After They Registered the Trademark.

    Once someone registered a trademark with the USPTO, they have the right to keep competitors from entering the marketplace in the U.S. while using their trademark or one that is confusingly similar to it.

    Once they get their trademark, you can’t start using it too for a similar product or service.

    Here’s the rub. You state probably will not cross-check the USPTO database if you try to register the same mark as a trade name. They will deny your trade name application only if it matches something in their database of registered trade names in that state. Similar to the web domain situation, a lot people get a false sense of security when they can get a state-level trade name, but it won’t provide any protection from an accusation of trademark infringement in this situation.

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  • You Have the Domain. They Have the Trademark. Who Wins in the IP Dispute?

    “Stone Stacks – Lindisfarne” by Linton Snapper from Flickr (Creative Common License)

    I saw this scenario come through my Reddit feed. Two U.S. companies are in the same industry and using the same name for their brand. One has the dot-com web domain. The other has registered the brand as a trademark with the U.S. Patent and Trademark Office (USPTO). Which company should get to use the brand and force the other to change their name?

    Timing Matters: Who Was First

    The answer to every legal question starts with “It depends,” and here it depends on which company was using the mark in commerce first. By “use” I mean which company made the first bona fide offer for sale to the public, not who came up with the idea for the brand first.

    Option #1: You Started Using the Domain Before They Registered the Trademark

    If two companies in the same industry the U.S. are using the same trademark, but not one has registered it with the USPTO, then each one can establish what are called common law rights in the mark in the geographic areas where they are respectively using the trademark. They can co-exist peaceful as long as one doesn’t try to infiltrate the other’s established geographic market.

    Here’s what happens when they register the trademark with the USPTO – they get the exclusive right to use the trademark everywhere in the U.S., except within your established geographic area at that time. It’s like a snow globe drops over your geographic market. They can’t go into your area, but you can’t expand your market beyond that boundary. This is what happened when the chain Burger King registered their trademark and there was a mom-and-pop restaurant with the same name already in existence. If you want to expand your geographic market beyond that invisible boundary, you have to rebrand.

    These rules are easier to follow when businesses were brick and mortar establishments. Now that commerce is largely internet-based, a company is likely to naturally expand merely by being online. You probably can’t add any new social media platforms using the trademark without them claiming your infringing on their intellectual property rights.

    If you come to me with this situation, unless you’ve established nationwide common law rights before they registered the trademark, it’s often best to save your money on litigation and rebrand instead.

    Option #2: They Registered the Trademark Before You Start Using the Domain

    Remember, when they registered their trademark with the USPTO, they got the exclusive right to use their trademark everywhere in the U.S. except any geographic area where you established your market for the same mark prior to that date. If they registered before you started using the mark at all, you can’t enter the marketplace using that trademark in that industry. They win. You lose. You have to rebrand.

    What if it’s the same situation, but you were using the mark before they registered but you hadn’t created the website yet? Publishing the website after they registered, even if you were already selling the product using that brand, would be an act that would expand your market beyond your now-limited established geographic area, which is not allowed. I would expect them to send you a cease and desist letter demanding that you take down the website.

    Getting the Domain is Not Proof to Trademark Availability

    A lot of people make the mistake of thinking that if they can get the dot com domain they want that there aren’t any trademark issues that they need to worry about. There are many reasons why a company might not get the dot com of the trademark, even if it was available:

    • They are using another type of domain, like .org.
    • They are only use companyname.com for their website and not get separate domains for each of their brands or other trademarks used by the company.
    • You and they have trademarks that sound the same but spelled slightly different.
    • You and they have slightly different domains, such as XYZ.com and TheXYZ.com.

    When I’m working with a client on selecting a company name, product name, or other trademark, I encourage them to search for their prospective trademark on the internet as well as on the USPTO database. What’s tricky about this is that even if you don’t find an exact match to the trademark you want to use, there could be one out there that is confusingly similar to the one you want to use. It’s best to do as thorough of a search as possible before investing your time and money into your brand.

    Can the Trademark Owner Force You to Give Them the Domain?

    There are lots of reasons why a person or company would have a domain that matches your registered trademark that don’t violate your intellectual property rights. If it’s a situation where your website infringes on their rights, they can demand that you remove the website. It doesn’t mean they can force you to give them the domain, though that is something you can try to leverage. They can always offer to buy it off you. (I often advise my clients wait for them to offer to buy it first so as to avoid looking like a cybersquatter.)

    If they are willing to fight you for the domain, there is a risk that they may file a claim against you in court or under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If you find yourself in a trademark dispute where you have the coveted domain, it’s best to consult a trademark attorney who can examine your specific situation, explain your options, and advocate on your behalf.

    Question of the Day: Two Companies Using the Same Trademark 

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  • What Zach Kornfeld is Doing Right with his New Business

    “Thumbs Up!” by Kevin Gale from Flickr (Creative Commons License)

    This week, Zach Kornfeld of The Try Guys announced that he is starting a new tea company in two months or less, without leaving his apartment, and spending less than $500. The goal is to create and sell two original blends: “one for energy and one for chillin’ out.”

    Constraints are Good for Creativity

    It’s intriguing to watch someone create a new company is real time, particularly in this situation where Zach has a limited budget and is sheltering in place. These limitations are not necessarily bad things. On the contrary, entrepreneur and keynote speaker Jay Acunzo regularly talks about how “Constraints are a strength.” They increase the need for thoughtfulness and creativity. Also, check out his fantastic book Break the Wheel. It has an entire chapter dedicated to constraints and decision-making.  

    Zach started by consulting Jason D’Mello at the Fred Kiesner Center for Entrepreneurship for business advice, who advised him to create a DBA (doing business as) as the start of his company. (I recommend that every entrepreneur create a separate business entity – LLC or corporation – for their company, but in California, that comes with a hefty annual fee that would break Zach’s budget, so I get why he’s starting with a DBA.)

    Before filing DBA, Zach needed a name for this new company. Zach’s first idea was to name his tea company Turtle Tea because it doesn’t matter how you start or how many times you fail. What matters is that you keep trying – slow and steady.

    What Zach Did Right – Legally Speaking

    Trademark laws apply to branding in the U.S. – company names, product names, logos, slogans, etc. There are many legal issues that can crop up when selecting a brand. Before Zach ran with Turtle Tea as his brand, he did a lot of things right.

    He Checked the USPTO Trademark Database

    Zack used the Trademark Electronic Application System (TEAS) on the U.S. Patent and Trademark Office  (USPTO) website, to try to register Turtle Tea as a trademark. He didn’t just submit an application but checked the USPTO’s trademark database first to see if anyone else had already registered that name.

    Unfortunately, someone else already owns a trademark for Turtle Herbal Tea. If he tried to register Turtle Tea with the USPTO, he would have been throwing money away. If Zach used Turtle Tea as a trademark anyway, he would have set himself up to get a cease and desist letter (or worse) from this trademark owner and would have had to rebrand his company.

    He Checked Alternative Spellings for Potential DBAs

    Now that Turtle Tea was off the table, Zach started running trademark searches for other potential names. One thing he did was check alternative spellings. A primary rule in trademark is you’re not allowed to have a trademark that is confusing similar to someone else’s such that consumers will be confused about whose product they’re buying. You can’t register a trademark if it sounds confusingly similar to someone else’s – different spelling but sounds the same.

    When Zach looked up “Zach,” he also had to check “Zack.” Likewise, when he looked up “Zach’s” he had to look up “Zax.” When I research my client’s trademarks, I try to look up alternative spellings to make sure a sound-alike trademark hasn’t already been registered.

    He Checked Related Products for Similar Trademarks

    When someone has a registered trademark, they have the right to use their name on their goods/services as well as on the ones they would logically expand into. For example, if someone sold milk, a product they’d like expand into is cheese or ice cream.

    Likewise, Zach needed to consider not just tea companies that had registered similar marks to what he wanted, but also other beverages. One of the names he was considering had to be rejected because it was already registered by a coffee brand.

    By the end of this video, Zach didn’t have a name for his company despite his many searches. This frequently happens. (Zach’s fans are suggesting names for his company via social media. The best one I’ve seen so far is Korndidtea – a take on his Twitter handle, @korndiddy.) Many clients send me dozens of trademarks to search against the USPTO database for them before deciding on a name. You don’t want to waste time and energy on a brand that have already been claimed as a trademark by someone else.

    I love that Zach’s experience shows that Joe Average people can use the USPTO trademark database to do their own preliminary searches when considering a name for company or product. I don’t recommend filing a trademark without consulting a lawyer, but you can definitely your basic research yourself.  

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    Ruth Carter

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  • Clarify What Your Photography Client is Buying: Prints vs Digital License

    “Shooting the Dress” by Garry Knight from Flickr (Creative Commons License)

    Professional portrait photographers generally need at least two contracts when working with a client: one for the sitting and one for the deliverables. For the latter, make sure the client is crystal clear about what they are, and equally important, what they are not buying. Having clarity on the front end will prevents problems on the back end.

    Assume Clients Don’t Understand Copyright

    Part of your job as a professional photographer is to educate your client about the basics of copyright and how it applies to images you’ve been hired to create. Many people assume that they are allowed to take a print, scan it, and share online or via email.

    In my pre-lawyer life, that’s what I thought. I spent plenty of time in the computer lab during my undergrad scanning photos. There was even a bulletin board dedicated to the photos that people left in the machine.

    This is still an issue for Joe Average people. Here’s a real question that recently came across my screen: I hired a photographer to take family pictures. I want to share them online and with extended family. The photographer says I can’t do that. Why?

    I suspect this person bought prints and not a digital license, or they have a license but it doesn’t include an allowance to distribute the images.

    As a risk-adverse lawyer, I would put specific verbiage in the contract that states what the client can and can’t do with the photos, including that only the digital version the photographer provides can be used to share the images with family and friends, probably in bold print.

    This serves two purposes:

    1. It protects your copyright, and
    2. It maintains the quality of your work.

    It’s also a good idea to include the information about your socials so they can tag you. (Good clients give credit their photographer when posting images online, even if they’re not required to.)

    What the Client gets with Prints

    When a client buys prints, they are buying the tangible object – the picture on whatever medium it was printed. They are buying the thing. They are not getting the copyright right or any copyright rights (unless that’s part of the contract they signed).

    The limits of what someone can do with a print are similar to what they can do if they bought a book. They can display it, sell it, give it away, destroy it, etc. What they can’t do is make copies of it.

    Scanning a print is making a copy. So is taking a photo of the photo.

    I’ve seen people do this at amusement parks. They don’t want to buy the photo the park took of them on the rollercoaster, so they take a photo of the screen where the image is displayed – so they take photo of the photo. When I’ve seen this happen, the teenage clerk usually says, “We’re not supposed to let people do that.” Now you know why. 

    What the Client gets with a Digital License

    What a client can do with a digital license depends on the limits within the license itself.

    Whoever owns a copyright has the exclusive right to control if and how the work is copied, distributed, displayed, performed, and what derivative works can be made from it. If I were writing a license for a photographer, I’d address all five of these rights – including “perform,” even though that’s not a verb we typically use in regards to photographs, but I’d rather be thorough.

    Most of the time, the photography licenses I draft are for a non-exclusive, perpetual, worldwide license. It also addresses whether the licensee is allowed to use the images for commercial use. Sometimes the photographer requests additional provisions, like one that says the licensee isn’t allowed to alter the images, which may include cropping.

    Following the license provision, I often add a sentence that states all other uses of the images must be approved by the photographer in advance.

    Solution: All Print Packages Include a Digital License

    One way to address this issue to require clients to purchase a digital license when they’re purchasing prints. The client won’t have to scan any images if they already have digital versions.

    When you first meet with a client to discuss their needs, ask them about what they want to do with the final images, including how they want to show them to others. If you hear a client talking about how they can’t wait to share the photo with family/friends – clarify what they mean and make sure purchase a package that suits their needs.

    Lights Camera LawsuitTM

    There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

    At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

    Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

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    Ruth Carter

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  • How to Respond When Someone Steals Your Photo

    Running with the Seagulls by Ed Schipul from Flickr (Creative Commons License)

    Photographers need to be mindful of the possibility that some people may use their photos without permission. People will pull images to use on their website and social media posts. Additionally, there are people who think they have rights to a photo merely because they’re in it. I’ve even heard of hair and makeup artists who take photos from the shoots they have worked on to use them in their portfolio.

    This issue is compounded by the fact that there is inaccurate information about photo use on the internet. Some sources assert that you can use any photo you find on the internet as long as you give an attribution and a link to the original. They think they’re giving you free publicity, but what they may be doing is committing copyright infringement and telling you about it.

    Start with the End in Mind

    When I work with clients who believe their copyright has been violated, one of the first question I ask is,

    How do you want this to end?

    Knowing what the client wants as a result of my work tells me what avenue for recourse they’re interested in pursuing.

    To maximize the likelihood of achieving your desired outcome, it’s best to decide before your photos are stolen how you want to respond to the alleged infringer so you can be prepared in advance for when it happens.

    Always Respond When Someone Uses Your Photo Without Permission

    You don’t set the precedent that people can use your photos without a license. If you let others use your work and then you want to assert your rights against another infringer, the infringer could point to your past behavior and argue that since you’ve allowed others to use your images without repercussions, that this new infringer should be treated the same.

    (This is why you hear about companies sending strongly worded cease and desist letters to minor infringers. They have an obligation to protect their intellectual property.)

    There are five ways you can respond when someone steals your photo:

    Option #1: Grant Permission

    If you’re ok with someone’s use of your image, you can grant them permission after the fact. It can be something simple like

    Hi there. I noticed you’re using my photo for XYZ. I’m ok with uses like this, but in the future, you need to ask my permission in advance. I grant you permission for this use.

    Option #2: Cease and Desist Letter

    This is a letter from you (or your lawyer) to the suspected infringer that informs them of the copyright rights they violated, directs them to remove the image by a specified date, and tells them what you’ll do if they don’t comply. Be ready to follow through on whatever you threaten/promise in your letter, or you’ll lose credibility.

    These are sometimes referred to as the “nastygram,” especially when it’s written by a lawyer and the client’s goal is to put the fear of god in the person so they comply. There is no rule that says you can’t send a letter that says,

    I love that you love my photo, but you need to remove it by . . .

    Option #3: DMCA Takedown Notice

    DMCA stands for Digital Millennium Copyright Act. This option is only available in situations where your photo and the infringement of it are both on the internet. Instead of sending a cease and desist letter to the person who stole your photo, you send a takedown notice to the company that hosts the website where the infringement is occurring. Some social media platforms have a form on their site for submitting a takedown notice with designated spaces for all the information you’re required to include in a DMCA takedown.

    Option #4: Send a Bill and a License

    There is at least one photo licensing company that is notorious for doing this, but any photographer can send (or have their lawyer send) a letter to the suspected infringer that says,

    By using my photo, you’ve agreed to my licensing terms. Here’s a copy of the license and your bill!

    If you want to use this option, it’s ideal if you have your licensing terms or at least information about licensing on your website.

    Option #5: Sue for Copyright Infringement

    This option requires the most work in advance compared to the other options because you must register the photo’s copyright with the U.S. Copyright Office in order to be eligible to sue for infringement. There are time constraints in which you have to register you work in to be eligible for statutory damages, including attorneys’ fees. Additionally, your photo has to be stolen by someone who can afford to pay the damages, otherwise you may never collect (and you’ll likely have to pay for your attorney yourself).

    If registered your photo too late, you can still sue, but you can only get your actual damages, and you have to pay your attorneys’ fees. Most of the time, in this situation, it’s not worth it to sue because you’ll spend more on your attorney than what you’d get in damages from the court.

    What’s the Right Option to Protect Your Photography?

    You have to make that decision yourself. Decide in advance how you want to respond when someone steals your photo and plan accordingly.

    Your strategy for responding to suspected copyright infringement can include more than one of these options – such as sending a cease and desist letter yourself and if that doesn’t work, then have your attorney send one. Some people are more motivated to comply when they see the law firm’s letterhead.

    Regardless of your strategy, it’s best to speak with your attorney in advance and consult them when dealing with someone who’s using your photos without permission. There have been many times that I’ve written the cease and desist letter for my client to send that included the sentence,

    I hope we can resolve this without having to get lawyers involved.

    Lights Camera Lawsuit

    There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

    At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

    Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

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    Ruth Carter

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  • Let’s Talk About Trademarks

    https://www.flickr.com/photos/trippinlarry/5987691227
    “Lemonade, anyone?” by trippinlarry from Flickr (Creative Commons License)

    I’m going to say “no” a lot today. I’ve seen many trademark questions lately, many of which make me cringe.

    Here’s what you need to know about trademarks. They are synonymous with branding. Your trademarks are the names, logos, slogans, etc. that you put on your products or services that differentiate you from the competition. They inform consumers about the origin and quality of the product or service.

    When you apply to register a trademark, you have to tell the U.S. Patent and Trademark Office (USPTO) what you’re claiming as a trademark and on what products or services you’re using it. The USPTO won’t register your trademark if it’s too similar to a previously registered trademark. If they have a problem with your application, they’ll send you an Office Action with an explanation of the problem, and they give you 6 months to submit a response.

    This is also why it’s possible for two companies to use the same trademark when they’re products and services are so different that no one would think they came from the same company, like Delta Airlines, Delta Faucet, and Delta Dental.

    Onto the questions . . .

    How would an Unregistered Trademark be Better for “Brand Image” than a Registered Trademark?

     A trademark is a trademark regardless of whether you register it or not. What changes is the rights you get with your brand when it’s a registered trademark. Having a registered trademark gives you the ability to stop competitors from entering the marketplace in the U.S. while using a trademark that is confusingly similar to yours. (Trademark rights are limited by country. If you have a registered trademark in the U.S., that doesn’t mean someone couldn’t register the same trademark for the same goods somewhere else.)

    When you don’t register your trademark, you only can get common law trademark rights based on the geographic area where you are using the mark in commerce. You won’t have the ability to stop a competitor from using the same or a confusingly similar trademark in another geographic area in the U.S. like you’d be able to do if you had a registered trademark.

    Additionally, if you don’t register your mark, there’s a risk that your competitor will, which will limit your ability to use your trademark to the area established by your common law rights when the other mark was registered. This happened to the first Burger King restaurant. The first Burger King was “frozen” in its established area when the franchise registered the trademark. If the first Burger King company wanted to expand beyond that area, it must do so with a different trademark than “Burger King.”

    If your company is going to license its trademark to others, having a registered trademark is more valuable that an unregistered trademark. For many companies, their most important asset is their intellectual property.

    If I Want to Apply to Register a Trademark and There’s a Competitor That’s Already Registered a Similar Name, Will I have a Better Chance with the USPTO if I Apply to Register my Logo that Contains the Company Name?

    Why do you want to a brand that’s similar to your competition? It baffles me when companies knowingly pick a name that’s like one that’s already in use. It makes wonder if the owners are trying to ride a competitors’ coattails (which is illegal) or if they don’t understand how branding works.

    The purpose of having a trademark is to prevent consumer confusion. The USPTO does not want to grant companies the similar trademarks if they’re selling similar products or services.

    For a lot of companies, I recommend filing the word mark for just their name (assuming it’s trademarkable) as well as the logo, because logos often change over time. The name of the product or company usually doesn’t.

    The USPTO requires separate applications for the logo and the word mark if you want both as registered trademarks. When a logo contains words, those often are given more weight than the rest of the logo in terms of whether there’s confusion because that’s often the most prominent part of the logo. The logo components may help differentiate your trademark from the competition, but it may not be enough. You can always apply and see what happens.

    Can I use a Cancelled Trademark if the Owner is still Manufacturing the Product?

    When you do a search on the USPTO trademark database, it will show the trademarks that are “live” and “dead.” A dead trademark may be “abandoned” or “cancelled.” An abandoned trademark was one that was applied-for but never registered. A cancelled trademark was registered at one time but not anymore.

    When a company has a cancelled trademark but is still using it, it likely means that they registered the trademark and did not file the renewal when it was due. The company still has common law trademark rights based on its geographic market.

    It may be possible to use a cancelled mark that’s still in use as long as you’re not in the competitor’s established geographic market, but I usually don’t recommend it. It sounds like a situation where you’d be setting yourself up to get a cease and desist letter and/or sued for common law trademark infringement and unfair competition.

    On the flip side, I have seen companies use trademarks that have been cancelled and the previous owner has long since stopped using the trademark or the previous owner went out of business. A few years ago, I saw popsicle companies doing this – claiming abandoned trademarks and bringing the product back to market.

    Is it OK if my Trademark is Barely Different than Someone Else’s – Like Adding or Removing a Space or Adding a Word?

    The key to whether your trademark is different enough is based on whether consumers will be confused. As such, the USPTO treats trademarks that look and sound the same as being the same. You can’t take a registered mark and change the spelling slightly and have a valid trademark for the same product or service.

    When you take someone’s trademark and add a word to it, the USPTO will consider how similar the marks are. If the main part of the mark matches an existing registered mark for the same type of product or service, it’s less likely that the USPTO will register your trademark as well.

    There is no equation or formula you can use to guarantee that your trademark application will be approved by the USPTO.

    Can I File my Own Trademark Application?

    Yes. You don’t have to be a lawyer to submit a trademark application to the USPTO, though I recommend using one. At the very least, it’s best to have a lawyer review the application before you submit it. I’ve run into too many people who submitted a trademark application by themselves for trademarks that aren’t registerable. They could have saved themselves time and money by consulting a lawyer.

    Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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  • I Can’t Pre-Guarantee Your Case

    https://www.flickr.com/photos/157270154@N05/38470202756/
    Photo by CreditDebitPro

    I regularly receive emails from prospective clients who explain the gist of the situation they’re in followed by, “Do I have a case?” A variation of this email is the prospective client who sends me a small section of a contract they signed and a short summary of the situation they’re in and then they ask if I can help them obtain a specific outcome. Some prospects specifically say that they don’t want to hire me, not even for a consult, unless I say they have a case.

    Here’s the Deal

    I can’t give anyone a guarantee about the outcome of a legal matter based on an email. If the law were that easy, we wouldn’t need lawyers.

    In any situation, I have to examine:

    • The parties involved,
    • Which law applies – statues and case law, and
    • What actually happened

    before I can say whether you have a case.

    I can’t give effective legal advice without all the pertinent information. I can’t evaluate a contract based on a single provision. I have to read the whole thing. To not do so would likely be unethical and potentially worthless to you.   

    There is one caveat to this. If I’m talking with a person who wants my help, but it sounds like they need someone other than a lawyer, I’ll tell them that. Whenever I deal with someone who’s experiencing online harassment, I tell them that they may have a situation that should be handled by law enforcement. If they still want to meet with me, I warn them that this may still be my recommendation at the end of the hour.

    I Don’t Want to Pay to be Told I Don’t Have a Case

    I get that people don’t want to take the time or spend the money to meet with a lawyer to be told they don’t have a case. But if you want a lawyer to analyze your situation, part of what we do for a living is that analysis.

    Maybe it would make sense to look at this situation using a medical doctor instead of a lawyer. I’ve never heard of anyone going to the doctor with the sniffles and saying they didn’t want an appointment unless the doctor said they could make the person better. That’s ridiculous.  Some illnesses don’t get better, and some are things like the cold virus that just has to run its course.

    I don’t like telling my clients that they don’t have a case anymore than they don’t want to hear it, but sometimes that’s the case. The fact that you’re upset does not mean that you have been legally harmed. Until I actually look into the person’s matter, there’s nothing I can tell a prospective client except “Would you like to schedule a consultation?” or something to that effect.

    Yes, I Charge People to Talk to Me

    If you’ve ever called my office phone, you know my outgoing message says don’t leave me a voicemail, send me an email. I do this for a few reasons:

    1. Unless it’s an expected call, I rarely answer my phone. When I’m working on a client’s matter, I don’t want to be distracted or interrupted. I’ve also turned off the ringer on my office phone. I won’t notice the call coming in unless I happen to be looking at the screen and see it change to the incoming caller’s number.
    2. When you leave a voicemail on my phone, a little red flashy-flashy light goes off until I deal with the message. It annoys the crap out of me. (Pro tip: Don’t annoy your lawyer.) It forces me to divert my attention away from focusing on my client, deal with the message, and then take extra time to pick up where I left off on my client’s matter.
    3. If the call is from a prospective client, they usually want to tell me their whole story before asking for help. This is what the consultation is for, and no, I don’t do free consults.

    Sometimes all a person needs is a consultation. I’m happy tell people how they can help themselves in a situation, and I have no problem providing recommendations that are mindful of the person’s budget.

    A few years ago, someone called me and they were incredulous when I said that they had to pay to talk to me. Listening to, analyzing, and providing information and advice on a legal situation is what I went to law school to do. This is my profession. If you want to hear my perspective on your legal situation, you have to pay for that privilege. (There are lawyers who do give free consults. I am not one of them.)

     I wish there were more guarantees in the legal profession. Just this week, I reminded a colleague that our job is to present the best case for our client and advocate on their behalf, but the ultimate decision in the matter is left to another authority.

    Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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  • How to Write a Decent Trademark Cease and Desist Letter

    https://www.flickr.com/photos/tangi_bertin/541603067/
    Stop by tangi_bertin from Flickr (Creative Commons License)

    A friend recently forwarded me a trademark cease and desist letter he received and asked if it was anything they needed to worry about. Now, I always tell my clients to take such letters seriously, and give them their due consideration, but then I read this particular letter. It was possibly the worst cease and desist letter I’ve ever read. It was written by an entrepreneur, not a lawyer, so I automatically mentally cut the sender some slack, but still, it was bad.

    If you’re in a situation where you suspected a competitor is violating your trademark rights, please get your lawyer involved. And if you’re going to write your own cease and desist letter, make it a decent one.

    Make Sure Your Trademark has Likely been Infringed

    A trademark has two components. It’s the name, logo, slogan, etc. that you’re claiming as a trademark plus the product or service on which you’re using it. (It’s possible for two completely different companies to have the same trademark, like Delta Dental and Delta Airlines.) For many companies, the first trademark they register is just the word or phrase that is the name of your company or product/service. This is called a “word mark.” It’s just words, no images, graphics, or sounds.

    When you have a registered word mark and someone uses the same word or phrase, it’s not automatically a violation of your trademark rights. For example, Paris Hilton has registered trademarks for “That’s Hot” for “multimedia entertainment services” and apparel. These trademarks do not give her the ability to stop everyone from ever using the phrase “that’s hot,” as a descriptor. If a person is not using the word or phrase you registered as a trademark for their business, it’s likely not trademark infringement.

    What to include in a Cease and Desist Letter

    While I don’t endorse the idea of business owners writing their own cease and desist letters, it happens. If you’re going to write your own, these are some of the things I’d tell my client to include in their letter if they insisted on doing it themselves:

    • Provide the legal name of the person or company that owns the trademark,
    • Identify your trademark including the registration number and a screenshot of the trademark listing from the USPTO database,
    • Identify the alleged infringing activity, preferably with a URL and/or screenshot if it’s online or photographs if it is not, and
    • Clearly state what you want the recipient to do in response to your letter with a due date for compliance.

    When to get the Lawyers Involved

    If you encounter suspected trademark infringement, call your lawyer. Even if you want to send a cease and desist letter yourself, call your lawyer first. They can help you make sure there’s a real trademark issue that requires your attention and help you craft the cease and desist letter.

    Many of my clients want to reach out to the alleged infringer to speak business owner to business owner, first. They want to send friendly but clear cease and desist letter, and give the other side a chance to resolve the matter “without having to get the lawyers involved.” I have helped write many a letter that included that phrase. The other side doesn’t need to know that I’m already involved.

    If they don’t respond favorably to my client’s friendly letter, then I will follow it up with a strongly worded nastygram that demands that they cease all uses of my client’s intellectual property and failure to do so will result in litigation (or whatever consequences my client has selected).

    My recommendation for clients is to refrain from making threats in cease and desist letters unless they’re willing to follow through with it. Otherwise, if the other side calls your bluff and you don’t follow through, you will lose all credibility and any further demand letters will likely be ignored.

    If you threaten litigation in your cease and desist letter, be ready to pull the trigger if the suspected infringer doesn’t comply with your demands. Some people won’t take you seriously until a lawsuit has been filed. A lawsuit will force them to deal with the situation because of the court-imposed due dates or risk the effects of a default judgment if they ignore it.

    Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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  • How to Legally Use User-Generated Content

    https://www.flickr.com/photos/zoidberg72/16243539933
    Selfie by dr_zoidberg from Flickr (Creative Commons License)

    Here’s a question I get from companies and their marketers: What are the legal dos and don’ts for using user-generated content? These are situations where a company wants to use a photo, video, or text created by one of their fans, usually from a site like Instagram, Facebook, or Trip Advisor. Many companies merely want to approach the person through the platform where they found the content they want to use and ask for permission to use it. While this strategy is convenient, it may not be in the company’s best interest.

    Using Content Within a Platform

    It’s easiest when a company wants to share someone’s post within the social media platform – e.g., sharing someone’s Instagram photo on the company’s Instagram. Many social media sites build this option into the platform where you don’t even have to ask for permission to share someone’s post on another’s account.  

    Of course, I’m a risk-adverse lawyer so I tell my clients to review the terms of service first to see what happens just in case it turns out the person who created the post you shared didn’t have the right to do so and now you have to deal with the fallout. Depending on the circumstances, I might contact the person to ask the person if they took the photo (which would indicate if they’re likely the copyright holder), try to verify that the original poster is complying with the platform’s rules

    Using Content Across Different Platforms

    Here’s where it gets a little more complicated. These are the situations where you want to take content from someone’s post on one platform and share it on a different social media site, your website, or another third-party platform. For this situation, I recommend you have a contract drafted by a lawyer. You could have them create a template for you if curating user-generated content is part of your marketing plan.

    If I were creating a contract template for obtaining permission to use content created by a user or fan, I’d likely include terms such as:

    • The user owns the IP in the content: either they created it or they have permission to use it
    • The user has authority to grant the company permission to use the content
    • The user grants the company a perpetual, irrevocable, worldwide, sublicensable, paid-in-full, royalty-free license to the company to use the content for any purpose without needing the person’s consent or credit, including the creation of derivative works (or in the alternative, that the user grants the company a copyright assignment)
    • The user will reimburse the company’s legal fees and damages if it is accused of wrongdoing because the company used the user’s content

    Such a contract would also include boilerplate verbiage, like a dispute resolution provision that states how the company and user will resolve disputes if one occurs.

    Always Apply Reality

    In any potential legal situation, be sure to apply reality. If a company wants to use a photo with two people in it, whoever posted the image may not be able to speak on behalf of the other person in the photo, and you may need release from identifiable people to avoid being accused of violating their right of publicity.

    Additionally, it will likely take longer to get permission if you want to use images and other content across platforms. Be sure to build that into your timeline if your marketing plan involves using user-generated content.

    There are also those who may question whether it’s worthwhile to have a lawyer create a contract for these circumstances. When there are no issues, a contract may seem superfluous; however, contracts are imperative in situations where there is a dispute and/or the parties forget the terms of their agreement. When you work with your lawyer to create you contract, make sure it has provisions that will apply to situations that are likely to occur as well as the worst-case scenarios.

    If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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  • Side Hustle Contracts

    https://www.flickr.com/photos/joybot/6701744493
    Do the Hustle! by Joybot from Flickr (Creative Commons License)

    Note: The links for Chris Guillebeau’s books are affiliate links.

    I admire people like Chris Guillebeau who run with ideas and make stuff happen. He’s written a number of books, including The $100 Startup: Reinvent the Way You Make a Living, Do What You Love, and Create a New Future. The most recent book of his that I wrote was Side Hustle: From Idea to Income in 27 Days where he walks you through, day-by-day what you should do to launch a side hustle business. It’s a good book, but Chris and I disagree about how to approach contracts.

    Day 14: Contract

    Chris calls Day 14 “Set Up a Way to Get Paid.” This chapter covers selecting a payment system, creating invoices, and using simple contracts. For your contract, he says you only need to specify what you’ll do, how much you’ll get paid, when you’ll get paid, and “any protections you require.” Chris also says that that you can communicate all of this via email without needing a separate agreement document.

    <cringe><shudder>

    While Chris is technically right, I would never advise a client to operate their business this way. This is the type of contract that works when nothing goes wrong; however, contracts exist to save you in two situations:

    1. When there’s confusion about the parties’ obligations, and
    2. When there’s a problem or dispute.

    Always Have a Separate Written Contract

    If there is situation where lawyers are needed to resolve a dispute, the first thing I ask my client is “Where’s your contract?” If it’s a series of emails, and perhaps some text messages, and phone calls or conversations you claim occurred, the first part of my job will be compiling the terms of the agreement.

    When there’s a single agreement, all the terms are in one place. And when the contract requires that all changes must be in writing and signed by both parties, it minimizes the risk of confusion or a he-said-she-said situation.

    When you don’t have the terms of the contract in a single document, it opens the door for complications in the future. In many cases, it’s more cost-effective to have a lawyer create a contract template for your side hustle than to have to hire one to piece together the terms from the parties’ communications and actions. 

    Minimum Contract Terms

    In general, I don’t advise people to write their own contracts (unless they have a law degree or sufficient contract experience), but here are the basic terms I’d expect to find a side hustle contract:

    • Parties to the contract
    • Purpose of the contract
    • Payment terms, including what happens if the customer doesn’t pay (e.g. entrepreneurs who require ½ the fee up front and ½ upon completion)
    • Intellectual property terms – related to creation, assignment, and/or license
    • Where and how problems will be resolved, including the venue, jurisdiction, and which state law will govern
    • If/how the parties can make changes to the contract
    • “Entire agreement” – all the terms in the contract are in the agreement
    • “Severability” – if the contract has any invalid terms then the parties will throw those out and the rest of the contract will remain
    • A provision that states if a party chooses not to use a right granted by the contract, they don’t waive their right to use it in the future

    When I approach a new contract for a client, I try to mentally walk through the customer’s journey and address the problems that the client is trying to avoid and pre-plan how you want to deal with problems when they occur.

    Using a Lawyer for your Side Hustle

    If you’re going to have a side hustle, I recommend you sit down with a lawyer for an hour. Tell them your goals and your budget. An understanding lawyer will tell you about the legal issues you need to be aware of, can do a quick trademark search to see if the name(s) you want to use are already registered, and they can tell you want you can do yourself and what tasks you should hire a lawyer to do for you.

    A Few Final Thoughts

    Thinking about what missteps I’ve seen companies inadvertently commit, here are a few extra tidbits of information:

    • The terms of service for a website, online course, or mobile app are contracts. Write them or have them created with care.
    • Please don’t rip of another company’s terms of service and just change out the company and product names. That’s a recipe for trouble. You don’t want to represent that you do things that you don’t. I’ve also seen situations where the company’s terms of service says that it’s governed by New Jersey law and the company has no connection to that state. (The company they stole the terms from was in New Jersey.)

    If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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