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Misleading Trademark Notices

Misleading Trademark Notice by Kelly Weiner

{3:00 minutes to read} One of the more frequent questions I get from clients is, "Why am I getting this invoice? I thought I already paid you for my trademark." Another potential victim of an increasingly popular scam. When a trademark application is filed with the US Patent and Trademark Office (USPTO), the entire application, including the trademark owner's name and address, become publicly available through the USPTO website. Shortly after an application is filed, or shortly before a maintenance...

Marking Your Trademark

By Kelly Weiner

{5:00 minutes to read} The rules around when and how to use symbols to mark trademarks on product packaging and marketing materials are often misunderstood and misapplied. Trademark symbols are used to mark words, phrases, taglines, and logos that identify the source of a product or service. The symbols put others on notice that the owner is claiming rights in the trademark. I will use “trademark” to refer to both trademarks and service marks in this article. A trademark...

Working With an Outsourced Attorney?

By Kelly Weiner

{4:00 minutes to read} Outsourced attorneys can help a small firm attract more clients and grow in an organic, sustainable way. There are many different small firm models. This discussion will focus on small firms that want to offer a full-service experience through a team of lawyers providing core services for their clients. The goal is to keep as much work as possible within the confines of the firm. ...

LegalForce Sues LegalZoom

By Kelly Weiner

The 81-page complaint, filed in the U.S. District Court for the Northern District of California on December 19, 2017, says the lawsuit is being brought to “expose the willful and systematic acts of unauthorized practice of law, false advertising and unfair competition by LegalZoom,” and to help attorneys “compete on an equal playing field” with the online legal document company. See Complaint-LegalForce-RAPC-v-LegalZoom See my other post regarding LegalZoom for why I don't consider the company "competition." I occasionally get asked by prospective clients...

Protecting your rights in the digital world: Website/App Terms of Use

By Kelly Weiner

When developing a website or app, Terms of Use (also referred to as Terms of Service or Terms and Conditions) are typically an afterthought. Companies know that they “should” have them – the Terms of Use govern the relationship between the parties. But, oftentimes companies overlook one important step – consent. Generally, there are two ways in which end users “consent” to the Terms of Use for a website or app: continuing to use the website/app (a “browse-wrap agreement”) or...

Defining the Scope of your Goods/Services – Class Headings

By Kelly Weiner

Unlike many other trademark offices, the US trademark office does not permit the use of class headings to identify the goods or services in a registration. A common filing strategy for applicants (particularly foreign applicants and other applicants that rely on foreign registrations as the basis for registration in the US) is to include the class headings in an initial application, with the intention of later narrowing the scope of the goods or services at a later time. In a...