The High-touch Legal Services® Blog • For Startup Companies

A trademark or service mark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods (trademark) or services (service mark).

(Throughout the remainder of this post, the term “trademark” is intended to include service mark, as well, except where specified otherwise.)

The owner of a trademark has the right to prevent others from using the mark or a confusingly similar mark.

It is possible to obtain “common law” trademark rights simply by using a mark. However, trademark owners often choose to register their marks to obtain a higher level of protection.

A trademark that is used within a state can be registered with that state – see, e.g., the California Secretary of State website. A trademark that is used in interstate commerce can be registered with the U.S. Patent and Trademark Office. The benefits of a federal registration include the following:

• Constructive notice to the public of the registrant’s claim of ownership of the mark;
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or 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; and
• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

One may use the ™ symbol to designate any trademark and the ^SM symbol to designate any service mark. However, one may use the ® (R in a circle) symbol only after the USPTO registers a mark (not while an application is pending) and only for the goods or services listed in the registration.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

Unsolicited commercial electronic mail – “spam” – is the bane of the modern electronic existence. In an effort to limit this problem, the One hundred Eighth Congress enacted the Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (usually referred to as the “CAN-SPAM Act of 2003” or “CAN-SPAM”), which took effect January 1, 2004.

The Act

CAN-SPAM has four main provisions, which together aim to make commercial e mail (including commercial content on websites) more truthful, more transparent and more avoidable.

Read more…

Last month, I wrote about how to terminate a company’s existence by dissolution (How to Kill Your Company when that’s the Only Choice).

Since then, people have asked me what their personal responsibility is under California law if the corporation or LLC had outstanding obligations at the time it was dissolved.

Assuming that you go through the dissolution process properly and that you do not have any “alter ego” problems, your personal liability generally will be limited to the amount of any distributions that you received at the time of dissolution.

This limitation is set forth in Corporations Code Section 2011 with respect to corporations and Section 17355 with respect to limited liability companies.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

According to an article in yesterday’s Wall Street Journal, the U.S. Equal Employment Opportunity Commission is seeing a surge of complaints based on retaliation – i.e., allegations that an employer retaliated against an employee who sought to protect his or her rights by complaining to the EEOC.

The article reports that eliminating retaliation is the EEOC’s top priority, because its enforcement of anti-discrimination laws will be successful only to the extent that employees free to file complaints.

So whether you are a large or small employer, here is the bottom line:

• Do not discriminate against any employee based on age, race, sex, religion, etc.
• If an employee files a discrimination complaint, do not retaliate against that employee.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

A couple of months ago, I posted International Business and Agreements: Learning about Legal Culture. This is a follow-up that discusses certain common problems when foreign suppliers bring their standard-form agreements to the U.S.

During the past several years, I have helped quite a few foreign technology suppliers adapt their standard-form agreements for use in the U.S. The agreements that they use back home (translated to English, as required) are quaint by U.S. standards. There is a lot of white space, fonts tend to be large, and while business terms are specified in detail, many legal provisions are addressed in a cursory fashion or not at all.

This last point is critical. In other countries, applicable law fills in many gaps adequately, and the parties assume that problems will be worked out satisfactorily; litigation is a last resort reserved for extreme situations, such as fraud or a complete failure to perform. In the U.S., in contrast, we include many provisions expressly in anticipation of a suit that may be brought by either party at any time for any reason.

Read more…

Questions about forming a limited liability company (LLC) in Nevada (or, increasingly, Wyoming) come up so frequently – the last time, yesterday – that I feel compelled to write about this topic.

There is something approaching the status of urban legend about the wisdom of forming LLCs in a state that does not have an income tax. The problem is that lack of an income tax will benefit you only to the extent that you do business in in that state!

Let’s say that you live, and intend to do business (in the legal sense – see Doing Business in CA? Be Sure to Register), in California, but you form your LLC in Nevada or Wyoming. Guess what: Because you are doing business in California, you will have to pay income tax in California. Furthermore, you will have to register your LLC in California as a foreign LLC. The result: You will not have escaped paying income tax, and will have to pay the two states’ annual business fees!

The bottom line:

• Form your LLC in Nevada or Wyoming only if that is where you will be doing business.
• If you will be doing business in another state, that is where you probably should form your LLC.
• If you will be doing business in multiple states, work with a knowledgeable tax adviser – multi-state tax issues can be tricky.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.