What is the Supplemental Register for U.S. Federal Trademark and Service Mark Registration?

The Federal Trademark Register of the U.S. Patent and Trademark Office (USPTO) has two sections: the Principal Register and the Supplemental Register. The vast majority of the time, a trademark applicant applies for registration the Principal Register. The Supplemental Register is reserved for marks that are currently “nondistinctive” in the eyes of the USPTO (or its agents) and are capable of acquiring distinctiveness or “secondary meaning”.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

What’s a “nondistinctive” mark?

Nondistinctive marks include descriptive marks, generic marks, “mere” surnames, geographic terms and nondistinctiveness, nonfunctional trade dress.

A “descriptive” mark is one that merely describes the good or service or, in the language of the Trademark Trials and Appeals Board (TTAB), “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Generic marks are the common names for goods and services. Think “desk” for a desk or “chair” for a chair. (See my prior post Not So Easy… for more information about descriptive and generic marks.) Geographical names are ones that are simply using geographic location as a mark. For example, if I decided to call my law practice: Stamford Law Firm. (Trade dress is topic for another post.)

Surnames (last names) may or may not be registrable, depending on factors such as how common the surname is and how it functions. I have friends whose surname is “Watson”, and I recently sent them this TTAB case with facts about using Watson as a trademark (in a particular case, in which the use was denied). Yes, this is the type of humor that lawyers and their unsuspecting friends find amusing! Obviously, there is a famous surname that is very common yet enjoyed a wide berth on the trademark registration front. Hint: it starts with “Mc”.

What is “secondary meaning”?

Secondary meaning is a way of acquiring “distinctiveness” for a mark over time. When a formerly non-distinctive mark becomes known to consumers as a source for particular goods or services due to the mark’s long and extensive use, it may acquire secondary meaning. Unfortunately, there is no hard and fast rule for when the mark actually acquires distinctiveness, but there is a presumption of secondary meaning after five years of substantially continuous and exclusive use of a mark in commerce. (Note: “commerce” is a term of art meaning interstate or international commerce, i.e. the commerce over which the federal government has jurisdiction.) There are a number of factors considered, including consumer perception of the mark, and evidence must be submitted to support the claim.

What protections does the Principal Register afford that are not available to a mark on the Supplemental Register?

The main protections available to a mark on the Principal Register that are not available on the Supplemental Register are the presumptions of validity, ownership and exclusive rights to use the mark. A supplemental registration also cannot be used to stop the importation of counterfeit products, and it cannot become incontestable.

What protections does the Supplemental Register afford?

All is not lost if you receive a letter from a USPTO Examining Attorney stating that your mark is not registrable on the Principal Register but may be registered on the Supplemental Register, if you do not or cannot persuade the examiner otherwise.

The Supplemental Register allows for the precious use of the ® symbol, which is for some the Holy Grail of federal trademark registration. It also blocks later-filed applications for confusingly similar marks on related goods and services, which means that no one can get a principal registration or supplemental registration for the same mark in the same class for which you already have a supplemental registration, preserving your place in line. With a supplemental registration, you can bring an infringement claim against third parties, although it is more difficult to prove than if the mark is on the Principal Register. Finally, with registration on the Supplemental Register, you can apply to register in countries that offer reciprocal registration rights with the U.S.

Note that there is also one advantage to supplemental registration over principal registration. If your mark is to be registered the Supplemental Register, there will be no need to publish the mark for third-party opposition, although a third party can later seek to cancel the registration. This may allow you to stay “under the radar screen” if your plan is to build up the name for acquired distinctiveness before would-be competitors catch on to your registration, since the Supplemental Register is checked less often than marks that are published for opposition.

Once on the Supplemental Register, can you amend to the Principal Register?

Unfortunately, you cannot. What you can do, however, is reapply to the Principal Register and show that the mark has, over time, acquired secondary meaning.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

Safe Deposit Box: Best Place to Keep a Will?

A safe deposit box seems like the perfectly logical place to store a will and other estate planning documents. They are probably the most important documents we will ever have, so shouldn’t they be kept in the safest place?

But is it a safety deposit box the best place? Or should you keep it in a fireproof safe in your home? With your lawyer? The court? Or somewhere else altogether?

[Note: This post was written while I was a practicing attorney running a solo law practice. When published, it was one of my most popular posts. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Although I mention it again below, this bears stating here at the outset and repeating: Whatever option you choose, make sure your executor knows what you did!

Safe Deposit Box

Although clients often instinctively want to put wills in a safe deposit box, many estate planning lawyers suggest not to keep a will or other important estate planning paperwork there.

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The problem arises with the fact that many states seal a safe deposit box when informed of the death of the owner, and a court order must be issued to request that the box be opened to search for the will. Although probate courts will generally issue this order “immediately”, in practice there is still a delay until the request is made to the court (or the court acts on its own) and the order is actually granted.

Documents that are generally allowed to be released include the will, any deed to a cemetery or burial plot and any life insurance policy for the named beneficiary. I mention below (by way of example) some basic information about two states, Connecticut and New York, although more complete and updated information may be applicable if and when it is needed by your heirs. Following this information is a discussion of other options for keeping your estate planning documents, such as with an attorney, with the court or in a fireproof safe in your home.

Connecticut

In Connecticut, there is a standard form to request that a safe deposit box be opened after the death of an individual (click here), which should be submitted to the decedent’s corresponding court of probate. The form may be submitted by a next of kin, spouse, or any person showing a sufficient interest in the presence of a will to obtain any will or cemetery deed in the safe deposit box. The court may also issue an order ex parte. In all cases, an officer of the bank must oversee the process and report back to the court.

New York

Surrogate Courts in New York have different forms depending on which court is issuing the order. (New York tends to be more complicated in many legal matters, unfortunately.) Here’s the form for Queens County, for example (click here). To its credit, New York has made it easier with a do-it-yourself program, called the Surrogate’s Court Safe Deposit Box Petition Program, to walk people through how to make the request (attached here). Among other documents, you will need to obtain a copy of the death certificate before making the request.

Bank Procedures

In addition to the above, a bank may have its own procedures, such as requiring Letters of Appointment, Letters Testamentary or Letters of Administration (each being a letter allowing an executor or administrator to act on behalf of the decedent’s estate) before allowing access to the safe deposit box.

As you can see, there administrative hassles involved (those discussed here and others) with storing a will or other estate planning documents in a safe deposit box. That said, for individuals who do not have another safe place to store a will or prefer the safety of a safety deposit box, it may be the best choice.

Lawyer’s Office

Another option is to keep a will with the attorney who drafted it. Again, this may or may not prove as easy as it sounds. For example, we had wills drafted by an attorney shortly after the birth of my first child. After five years the lawyer wrote to us stating that the originals would be sent back to us if we did not inform her that we wanted her to keep them. (But I thought she was going to keep them until we died?)

In addition, offices may move or close, and if you do not keep careful records, it may be difficult for your heirs to locate an original will when the time comes.

The Internet does help in this regard, but it is not foolproof. I represented a client recently who had drafted her first will many years earlier and wanted to update it, changing her executor and adding grandchildren as beneficiaries. We attempted to locate the attorney who had drafted the original will, even contacting a lawyer who had previously shared office space with him and sending out email blasts to estate planning attorneys who might have known him. The man was nowhere to be found. He had either retired or passed away himself. Needless to say, if my client had died without updating her will, her heirs would have only had a copy to submit to the court (that is more open to being contested and requires additional proof to be probated), not the original.

Finally, if the lawyer is not responsive for whatever reason, executors or others seeking to obtain estate planning documents from the attorney may also need to obtain a court order to compel production.

Again, a lawyer’s office may be the best place to store a will, depending on your circumstances. However, you should weigh all factors for and against before making a decision.

The Court

You can file your will with the court in many states, which is also a safe option, but this means that your will becomes an official document, not a private one. If you decide to change the terms of your will, you cannot get it back, so beneficiaries and former beneficiaries can see how their respective inheritances have changed (or been removed) during successive revisions. On the contrary, if a will is a private document, you can destroy the original and all copies, and would-be heirs who have fallen out of favor are none the wiser.

In addition, if you move out of the jurisdiction of the court, out of state or even out of the country, your court-filed will does not come with you. There should only be one original of your will (an inviolate rule, barring very specific cases of different wills covering different assets, such as an international circumstance). That means if you drafted a will while living in Westchester County, New York, and filed it with the Surrogate’s Court in White Plains, your executor and beneficiaries would need to obtain it from that court, even if you or they have since moved to Phoenix, Paris or beyond.

Fireproof Safe in Your Home

It may be, after considering other options, that you decide to keep your last will and testament in a fireproof safe in your home. This is often a good option, especially if you have a safe that cannot be remove from the premises by anyone seeking to tote off valuables. In that case, I would recommend keeping a copy of the will in a safe deposit box (clearly marked COPY, with instructions on where to find the original), in the unfortunate circumstance that the original is lost. Be careful not to create too many copies, since you may later revise important provisions of your will and do not want multiple prior copies floating around that a beneficiary with a reduced share tries to “prove” is your correct and valid last will and testament. This can happen even among otherwise friendly parties, such as children and grandchildren. Do your heirs a favor, and keep everything clean to mitigate potential conflicts.

The Freezer

According to the rumor mill, there may still be a few folks who actually store important documents in the freezer. I have never met anyone who did – maybe it’s a poor man’s safe? – but I certainly don’t suggest having a last will and testament shoved behind the frozen peas. Not only does it sound a bit too Sopranos to me (and James Gandolfini himself left a mess for his heirs), but the bag it’s stored in better be really, super waterproof in the event of a power failure.

Let Them Know What You Did

Regardless of the option you choose for storing your will, make sure that your executor(s) know what you did. The best estate plans only work if the right people know how to follow them and where to locate essential documents when the time comes.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

Not so Easy: How to Choose a Name or Design for Your Future Trademark or Service Mark

Intending to name your business and obtain a federal trademark or service mark registration for the name? Just choose a name or design that reflects your passion, search the USPTO database to see that it’s free and (application in hand) you’re on the path to registration, right?

Not so fast. How easy it will be to register your mark depends on the name or design you have chosen and where it fits in the continuum below.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Fanciful/inherently distinctive marks. Fanciful marks are the best from a purely trademark (or service mark) perspective. These are made up words or inherently distinctive marks and are what is called prima facie registrable. This means the mark could be opposed by another party with superior rights but should not, if truly an invented name or mark, be initially rejected by the USPTO.

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Arbitrary marks. An arbitrary mark is a common word that is used in a new context, unrelated to the dictionary definition of the mark. Use of the word “Apple” for computers is a commonly cited example. There was no relation between the word for the fruit and the word for the computer before these were linked in a mark. Arbitrary marks are also generally eligible for registration.

Suggestive marks. Suggestive marks are often good choices, since they often make the most memorable names for businesses. However, although they are generally presumed to be entitled to trademark protection, they are less strong from a trademark perspective than fanciful or arbitrary marks. A suggestive mark tends to indicate the nature, quality or characteristic of a good or service but does not actually describe the characteristic. The consumer must make a “mental leap” to connect the mark with the good or service. The risk with suggestive marks, in some cases, is that what you as the business owner believe is suggestive, the USPTO examiner may believe is descriptive.

Descriptive marks. A term is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Salty for a brand of crackers is an example of an immediate idea of the characteristic of the good. As I mentioned, some marks may walk the line between suggestive and descriptive, and if you choose a mark that could be either, you may need to convince the USPTO that your mark is actually suggestive not descriptive.

Generic marks. Generic marks are the common names for goods and services. Think “desk” for a desk or “chair” for a chair. These marks are not registrable. (Note that marks which may have been originally distinctive can become generic over time if they lose their distinctive character.)

If you are contemplating a business name, I suggest you consider the above points, whether or not you intend to immediately seek a federal trademark registration. Base your name on what works for you, but also make sure that after all the time and money you put into it, that you can protect it from others who may want to ride your coat tails! Fanciful and arbitrary marks are the easiest to trademark, followed by suggestive and not descriptive marks. On the other hand, suggestive marks are less costly to market, since by their nature consumers already have some association between the mark and the goods or services.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

Note that a USPTO search may not be sufficient for all proposed marks, and in many cases a more comprehensive search is recommended. Trademark matters are highly fact-sensitive. Please consult an attorney for more information about your proposed mark.

Founding Your Nonprofit: Incorporation and Tax Exemption

Taking a nonprofit from a dream to a viable entity involves weeding through the state incorporation and federal tax exemption process. Would-be founders of a nonprofit often find this a daunting marathon rather than a quick sprint. Indeed, there are many steps to be followed (with the proverbial “i” dotting and “t” crossing) and a bit of IRS grace to make this a reality. (Or, if you are hoping to form a 501(c)(4) on the wrong side of the political fence, maybe “grace” isn’t the operative word.)

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

I would like to give an overview of nonprofit incorporation and 501(c)(3) tax exemption, which is the most common way that charities are formed and become tax exempt entities. There are two main stages to the process:

1) State incorporation as a nonprofit entity. At a state level, founders of a nonprofit will create a nonprofit corporation after obtaining consent where required from government agencies. There should be helpful information the Department of State (or Secretary of State) website in your state. In New York, for example, you can visit the following website: http://www.dos.ny.gov/corps/nfpfaq.asp. A corporation is formed as a not-for-profit entity in a single step, which means among other things that it has a public purpose and is not formed for the benefit and financial interest of private individuals. Nonprofit status, however, does not equate to tax exempt status. That is the second step.

2) Tax exemption at the federal level.  At a federal level, the Board of an incorporated nonprofit will file a Form 1023 to apply for tax exempt status with the IRS. This is a complex form and takes much diligence, thought and time to complete. Often a lawyer’s assistance is helpful so that the nonprofit knows it is answering questions correctly and completely. Important items on the Form 1023 include the Statement of Activities and financial data.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

My Biggest Risk, Finding My Core – One Year Later

My biggest risk was giving up security in exchange for self-direction. In the process, I broke through and found my core, which drives my life and practice today.

Here’s my story.

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Notes: This post was written in 2013, one year after I walked away from a six-figure job and launched a solo law practice. Since April 2015, I have been working with clients as a career coach and helping them take their own risks.

When published, this was one of my most popular posts.

One year ago today, I walked out the doors for the last time of a safe, stable and seven-year long job. It wasn’t a bad job, all things considered. I learned a tremendous amount, made some good friends and enjoyed the challenge of being under fire from time to time. There were major and petty annoyances, like any other job, but it was fine. The ubiquitous “fine”.

A Fine Job, not a Great Life

Yet good enough was no longer enough. It simply wasn’t working for me, especially the push-yourself-to-your-limits-each-and-every-minute atmosphere typical of many law jobs, most notably in the finance world. Needs (not wants), from motherhood to health, were screaming to be addressed. I struggled to fit my life around my job, as high-level jobs nearly always demand, instead of integrating the two into a solid whole. I did yoga on the weekends and was stressed out all week. I felt stifled and exhausted, and I could no longer do my best work.

The answer was clear. I needed a way to reconnect with my values. This wasn’t a free-to-be-me, let’s-find-myself goal. Don’t get me wrong, as uncool as it sounds, I have always loved being a lawyer. But I was choking down my own success, not able to chew any of the individual bites. I wanted to taste my life again. I wanted to be the lawyer and person I knew I was meant to be. I only have one life, after all, and it was abundantly clear that I wasn’t living it the way I had always envisioned.

A New Path – Finding My Core

After many months of racking my brain for what environment could better match where I was going (or how to make my job a better fit), I realized that there was no known place to land. At least not with my then-current skills and the common lack of vision among recruiters and HR departments. I could have spent years retraining, but I didn’t have years. I needed to make it happen. Soon. Myself. I needed to craft my own suit rather than buying off the rack. Create my dream job from scratch.

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(You have to love stock images. Can you think of an uglier suit than that?)

So I did. On May 1, 2012, I took my biggest risk. With six months of income saved, a supportive family and a walk into the unknown, I started my own law firm.

A year later, with many scrapes and lessons learned, I can report back that my path is not for the faint of heart. Although there is not one day that I wish I was parked back in that chair at my old office, I can imagine many people would. It has been quite an uphill walk, and no one drives by with a golf cart ready to help you up that hill. (Although a few will stop to offer some shade and a cool drink.) It’s character-building at its best. And worth every minute.

We Are Not Alone

I have learned, most importantly, that I am not alone. I have a great support group of clients, mentors, colleagues, other lawyers, small business owners and friends who have helped me visualize what my practice can be and achieve new heights. In return, I do the same for them. I would never have imagined how my world could and did open up after that first step.

After over a decade with corporate law as my core, my practice has expanded organically, largely driven by client needs and my desire to maintain a manageable schedule and grow in measured steps. I was asked by a friend to find a local trademark lawyer, and I ended up with a new client (after hours and hours of study to learn the area). Then a friend of a friend needed help with her non-profit. I am now working with a few key mentors and colleagues to assist her with the tax exemption process and other matters. Still other friends and colleagues, who are parents of minor children, have needed wills, advance directives and guardianship appointments over the past year. Furthermore, artists, knowing my background in the arts, have come to me with questions in that field. These practice areas are diverse and yet related, and my knowledge and experience in each one informs the other.

The Years to Come

I look forward to what the next year may hold in store, as these (now core) practice areas continue to cross-pollinate and mature. As I said recently to a group of businesswomen I know, each new day is like a little present waiting to be opened.

Fast forward to today, one short year from the day I walked out of that safe job and started this journey. My hope for more collaborative relationships and a self-directed, fulfilling future is being realized. I am blessed with awesome clients who have taken a risk in hiring me out of the gate, and I believe and trust that they have been fully satisfied with their choice. I look forward to serving them further and new clients and friends in many years to come.

*****

Anne Marie Segal’s biggest risk was trading security for self-direction. She has taken a further risk to document the decision and process rather than project a pre-approved, professionally-manicured cutout with no personality. (We tend to like our lawyers bland, after all, without any zest or salt.) She’s not that lawyer, and she never will be. Ms. Segal’s clients, who are generally looking for a client-centered relationship – not a didactic, inflexible lawyer with no new ideas – thank her for that.

Law Office of Anne Marie Segal (2012-2014) is now closed. To find information about my executive coaching practice, please visit my About page on this blog or my website.

Lawyers’ Fees Be Damned. Why Can’t I Just Use LegalZoom?

At some point, just about every lawyer is asked this question by a client or friend. Why do I need to pay lawyers’ fees to create my LLC, file my trademark, draft my will, etc.? I like to keep things simple. Why can’t I just use LegalZoom or another self-service documentation provider?

[Note: This post was written while I was a practicing attorney running a solo law practice. When published, it was one of my most popular posts. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Well, the short answer is – you can. You can get a short, generic form agreement or filing from a service provider (with or without minimal “attorney review”), which may look and feel like a helpful, valid and comprehensive document until some dispute arises. You can also put your own roof on your house with the advice of a book or YouTube video, or from a kit, which may look and feel just fine until water starts to leak in….

silver-keyboard

Take a multi-member LLC agreement, for example. What are some of the things that can go wrong with a sparsely-drafted, generic agreement? I recently checked out the standard form of operating agreement from one of these services (not LegalZoom in this case, but a competitor with similar services). It allowed me to create a PDF copy (not Word, so I could not make additional changes) of a multi-member LLC agreement, with the help of prompts included as part of the program. Here are only some of the problems I observed in the program and language of the document, aside from what else could be added or improved:

1) Initial capital contributions are included but there is no language about what happens if (a) a member fails to contribute or (b) additional contributions are required or desired over time. These contributions may be needed to keep the company solvent, pay debts or ensure adequate capitalization (so limited liability is respected by the courts), or desired to expand the business, but under the agreement there is no mechanism to encourage or require them.

2) The agreement provides for profit allocations four times a year, with no discretion by the manager or a vote of the members. What if the proposed distribution would render the company insolvent? Should the members ignore or amend the LLC agreement at that point or call their lawyers to sort it out?

3) The agreement also provides that the members will receive enough funds to cover their income taxes when profits are allocated. Like the above, it sounds good, but what if there is not enough cash to do it (e.g., in the case of a large property distribution)? Should there be, for example, an exception in some cases? The program not only does not allow the option, it fails to clarify or even present the issues.

4) The agreement provides that “members … keep accurate books and records”. Have you ever heard of proper accounting by multiple individuals, none of whom has ultimate responsibility for it? Same for the tax filings. Have fun with that one.

5) The program automatically grants all members authority to sign checks from the LLC’s account. Does that sound like a good idea? Well, it depends, but in many cases it is better to have only one or two people handling the company purse.

6) Any member can withdraw at any time. The program did not offer an option that would require the member to provide any notice of withdrawal (so that, for example, the others could get funds together to buy him/her out).

7) The program also plugged in (without verification or options) that the members agree to hire an outside firm to assess the value of a withdrawing member’s shares. How would you, if you were trying to administer this agreement, find the right person to do that? How much would it cost? Is one opinion enough and what qualifications must the firm have? Again, if you are not working with a lawyer, you may not know if there are other valuation options and/or how to craft careful language to avoid disputes.

8) The agreement also provides that if the withdrawing member is not bought out by the others (collectively or individually) within 60 days, the LLC will be dissolved. A smart and devious LLC member could use this provision to force the hand of the other members, especially if the others are cash-poor, with threat of dissolution simply by threatening to withdraw.

9) There are no options – only standard language – regarding what happens a member dies or becomes incompetent. In that case, the interest goes to the heir who would have “all of the rights of an assignee of the member’s interest”. (It did not state “and all of the obligations”, which is a critical flaw.) This means that if a child, spouse, parent or other individual is an heir, the other members are stuck with him or her. Even if the new member has no idea how to run the business, is a pain in the neck, etc. Of course, the members could dissolve the LLC by majority vote and create a new one (with additional cost, heartburn, potential tax consequences, loss of goodwill in the name, potential breach of leases and other long-term contracts, etc.) Or they could kick out or buy out the new assignee/heir if the agreement included provisions to do so, which this one did not.

10) Under the standard language – which could not be changed in this program – all amendments to the agreement require unanimous written consent of the members. Depending on the number of members and their commonality or diversity of interests, this may or may not be recommended. Also, if unanimous consent is needed for every single change, one member can always stalemate or simply not participate in the amendment, holding the others hostage.

11) The so-called “required mediation” language is very poorly drafted and will likely be misunderstood or the source of bitter disagreements, if ever invoked. For example, the agreement says that “all members agree to enter into mediation before filing suit” yet also provides that “if any member doesn’t attend the mediation, the members are free to file suit”. Changing the language to read “the members (other than the member who did not attend the mediation) are free to file suit” would be just a start at improving the provision.

12) Did I fail to mention that, upon initially selecting an LLC agreement, you are not given a warning or alert from the program that you should check with your accountant or otherwise to determine whether an LLC is even appropriate and most efficient in the first place? If it is not, how much money and time have you saved?

If you are starting a multi-member LLC in any jurisdiction, I strongly urge you to consult with a business attorney and have a properly drafted LLC operating agreement to clearly spell out the rights and obligations of the parties. (I would offer a similar recommendation for other important legal documents.) Any money and time you spend on the “front end” getting it right will likely be money and time you save on the “back end” if the relationship between you and your fellow LLC members sours or if there are disagreements about what a poorly-worded contract actually means. (Oh, and at that point, can you imagine who will want to pay the legal fees to resolve your differences?) As is often said colloquially, marriage and business relationships are often much easier to get into than to live with or get out of. Don’t be the one caught holding the bag.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

LegalZoom is a registered trademark of LegalZoom.com, Inc. 

A Yo-Yo By Any Other Name

A yo-yo by any other name….

I had never intended to follow up with another trademark post so soon, but I received some comments to the prior post that behoove me to do just that!  Today, the topic is genericide and, as I said in a Facebook post last month, “no, that’s not a typo.”

What would a yo-yo be called if not a yo-yo? Have you ever wondered if there’s a generic name for the toy (like tissues for Kleenex® brand tissues)? The name “yo-yo” was first trademarked in 1932, and at one time it was called a pocket disk toy. Probably most, and possibly none, of my readers would ever remember that name, however. Yo-yo’s have been yo-yo’s for most of our collective lives. As such, shortly after the introduction of the Duncan Butterfly (remember those?) in 1962 and a major television campaign by Donald Duncan, Royal Tops Company sued in federal court stating (and the court agreed on appeal) that yo-yo had become a part of common speech and Duncan no longer had exclusive rights to the term.

[Note: This post was written while I was a practicing attorney running a solo law practice. When published, it was one of my most popular posts. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

The long and short of it is this: the name yo-yo fell subject to genericide. In other words, the trademark “died” because the word became part of the general lexicon as a description for the thing, not the brand. Hence the need for major brands to police their marks and make sure that we don’t refer to the PROPER NAME without the COMMON NAME included.

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So that means it’s an Original Slinky Walking Spring Toy or a Band-Aid Brand Adhesive Bandage. Not the shorter, generic forms we often hear in common parlance. Hearing one’s brand name used universally is music to any brand-makers ears, but not their lawyers….

I assume that over half (maybe 99%?) of my readers here today will ignore this advice. Further, those of us who do try to follow it will fail from time to time. In fact, as I was reading up on my facts for this article, I came across an established webpage on branding that referred to “putting a band-aid” on something, as a manner of speech and without any disclaimers. Nonetheless, I am hereby informing you that’s a no-no (not a yo-yo) – even if the short-form references are clearly in jest – as I was advised yesterday by two very senior trademark folks. (One also added that there is no use playing games, as trademark attorneys do not have a sense of humor. So sad for me, but we do need to know the rules of the sandboxes we are playing in.)

Anyway, now you know how to keep out of trouble, with the trademark gods, at least. If you would like to know some more genericized, former marks that we can happily refer to directly, click here. And if my future posts look a bit awkward and wordy from time to time, now you’ll know why. (Or maybe from time to time I’m just not an eloquent writer. No, that can’t possibly be it.)

Alright, readers. My work here is done for today. Let’s see if more comments come. Tomorrow is another day!

Note: Additional information about genericide and trademarks can be found on the International Trademark Association’s website or in their enclosed PowerPoint presentation (click here) entitled Funeral for a Brand: How Trademarks Become Generic.