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Common Office Action Refusals: Trademark Section 2(d) Likelihood of Confusion

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By: Vivek Vaidya One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy…. Read More

By: Vivek Vaidya

One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy.

A refusal for likelihood of confusion is based on the examining attorney’s determination that the applicant’s mark used in association with its range of goods and services so resembles a registered mark that consumers would be confused as to who is actually the source of the goods or services associated with the mark.  

Factors for Determining Likelihood of Confusion:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
  • The relatedness of the goods or services as described in the application and registration(s);
  • The similarity or dissimilarity of established, likely-to-continue trade channels;
  • The conditions under which and buyers to whom sales are made, i.e., impulsive vs. careful, sophisticated purchasing;
  • The number and nature of similar marks in use on similar goods; and
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. 

While all of the above factors are considered when making a 2(d) determination, the similarity of the marks in sight and sound, and similarity of the goods and services are usually given the most weight.  There is no mechanical test for a 2(d) refusal, and each case is decided based on its unique circumstance.

Avoiding the Problem: Clearance Searches

The best practice in avoiding a 2(d) refusal is to follow the examining attorney’s protocol for discovering conflicting marks to the best of your ability.  The examining attorney conducts a search of the USPTO’s records on an internal system for marks that so resemble any registered mark or prior filed application.

While the examining attorney’s particular search strategy is made public, the internal system that the examining attorney uses is not.  The USPTO does have a search engine that allows the public to conduct searches, but it is easy to miss a conflicting mark. This is because examining attorneys look at not only similarity in sight, sound and streams of commerce, but also foreign equivalents, connotations, synonyms, natural expansions upon a stream of commerce, and many other factors.

The bottom line is that conducting a perfect search is very difficult, which is why an applicant looking to register a mark should contact an attorney to conduct a clearance search.  The attorney will do their best to emulate the examiner’s protocol, and may even go a step further by ordering a clearance search from a professional service that performs an extremely meticulous clearance search.  An attorney is best suited to sift through the professional search results and make a determination of the risk each mark presents while being mindful of practical considerations.

Overcoming a 2(D) Refusal

If you have received an Office action that cites a 2(d) refusal for likelihood of confusion, it is your right to present arguments to the USPTO that the refusal was incorrect.  The two most common arguments are that the marks are not confusingly similar, or that the mark has acquired distinctiveness in the marketplace such that consumers have a strong association between your mark and your services such that registration should be permitted.  Making these substantive arguments truly requires an experienced attorney who has argued numerous Office Actions, understands the law, and can make the most persuasive argument possible – often utilizing extrinsic evidence.

Need a hand with performing a clearance search or responding to a 2(d) refusal for likelihood of confusion?  We are happy to help. Call (415) 633-6841, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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California Opens Trademark Registration for Cannabis Brands

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By: Vivek Vaidya The new year started on a positive note for cannabis brands with the legalization of recreational marijuana.  In conjunction, the state announced that it will now be accepting applications for trademarks associated with recreational cannabis. Secretary of State Alex Padilla launched an online portal called Cannabizfile to help entrepreneurs join the fast-growing… Read More

By: Vivek Vaidya

The new year started on a positive note for cannabis brands with the legalization of recreational marijuana.  In conjunction, the state announced that it will now be accepting applications for trademarks associated with recreational cannabis.
Secretary of State Alex Padilla launched an online portal called Cannabizfile to help entrepreneurs join the fast-growing cannabis industry. The portal provides step-by-step information on how to run a cannabis enterprise in California, including how to protect brands through trademark registration.

Trademark law provides protection to the names, slogans, phrases and logos that distinguish one company’s goods and services. Brand owners typically apply for the nation-wide protection through federal registration with the United States Patent and Trademark Office (USPTO).  However, registration with the USPTO is only allowed for goods and services that are lawfully used in commerce. Cannabis brands have long been restricted from registration due to federal drug laws, as it remains a Schedule 1 narcotic under the federal Controlled Substances Act.

Parallel to the federal registration system, California state trademark registration also requires a “lawful commercial use” of one’s product and services.  Now that recreational cannabis has been legalized, cannabis companies can reap the benefits of trademark registration at the state level.

State registration of the mark serves as a public notice of the brand’s use.  It also provides evidence of first use, which is the basis for deciding trademark conflicts, and allows for legal causes of action under the California Business and Professions Code.

There are a few drawbacks to state trademark registration.  Unlike applications filed with the USPTO, state applications cannot be filed on an “intent to use” basis.  This means cannabis brands must be operating in compliance with state law in order to register. Furthermore, state registration only provides protection for brands operating within the jurisdiction.

As long as recreation marijuana remains illegal at the federal level, cannabis businesses are wise to register their trademarks at the state level.  Contact BLG Trademarks at (415) 633-6841 or info@bendlawoffice.com to help you with the process of protecting your cannabis brands in California, and obtain the right to stop competitors from cashing in on your goodwill.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Benefits of Trademark Registration

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By: Vivek Vaidya What Is A Trademark? A trademark is a word, phrase, slogan, symbol or design that indicates the source of a particular product or service to consumers.  It is a branding mechanism that is meant to differentiate your products/services from other companies and other products/services. A trademark helps consumers make decisions about what… Read More

By: Vivek Vaidya

What Is A Trademark?

A trademark is a word, phrase, slogan, symbol or design that indicates the source of a particular product or service to consumers.  It is a branding mechanism that is meant to differentiate your products/services from other companies and other products/services. A trademark helps consumers make decisions about what to purchase because the mark or symbols represent a reputation.  Put simply, having a strong trademark is an essential asset to any company.

What Are The Benefits of Trademark Registration?

Registering your trademark with the United State Patent and Trademark Office (USPTO) provides immediate benefits.  Here is a list of some of the most important benefits of registration:

  • Presumption That Registrant is the Rightful Owner

In the case of a trademark dispute, the burden is on the non-registered party to prove they are not the infringing party. Practically this means that if you have registered your trademark or service mark on the USPTO’s federal registry, you have a tactical advantage. The court will presume you are the rightful owner of the mark in all 50 states.

  • Discourage Use of the Mark by Other Companies

When a company forms and decides upon a name, they routinely search for competitors.  A new company is much less likely to choose a mark that already exists or is similar to one that exists to avoid the risk of infringement.

  • Prevent Registration of Similar Marks

When the USPTO decides whether to allow the registration of a mark, they look at other marks that have been registered that may be confusingly similar to the applicant’s mark.  Therefore, if you register your mark, the USPTO polices your mark and protects your brand for you by preventing other companies from registering a similar mark.

  • Instant Rights

Federal trademark rights begin when the application is filed with the USPTO, not when the registration is approved.  Therefore, the sooner you file an application, the sooner your rights are established.

  • Protection Against Foreign Imports With Your Mark

Federally registered trademarks can be registered with U.S. Customs and Border Protection, who will protect your mark for you by denying entry of products that are shipped into the United States using your mark.  They essentially police foreign counterfeit imports for you because your mark is registered with the USPTO.

  • Ability to Bring a Lawsuit in Federal Court

Registering with the USPTO is imperative for suing others for trademark infringement under the Lanham Act in federal court.

  • Statutory Damages

While punitive damages are not available in an infringement suit under the Lanham Act, judges do have great discretion in enhancing damage awards beyond the plaintiff’s monetary damages and the defendant’s profits subject to the principles of equity.  Where there is willful trademark infringement, a judge can award three times the actual damages and profit loss to a successful plaintiff, and a plaintiff in a trademark counterfeiting suit may recover up to $1 million in statutory damages instead of actual damages or profits.

  • Use of the famous ®

Only a registered trademark may use the symbol ® next to their trademark.  This symbol not only puts others on notice that the trademark is registered and that they cannot register or use a similar mark in association with similar products or services, but it brings an aura of legitimacy to any company.  It conveys that the business owners are serious about their brand, that they protect it, and that they care about the quality of products that it is associated with.

I want to register my trademark. What’s the next step?
Call Bend Law Group, PC at (415) 633-6841 or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Steps For Buying A Restaurant With A Liquor License In California

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By: Doug Bend There are nine steps necessary to purchase a restaurant in California with a liquor license: 1. Find The Restaurant You Will Be Purchasing A good way to find a potential restaurant to purchase is to work with a business broker. Typically, the business broker is paid a commission by the seller and… Read More

By: Doug Bend

There are nine steps necessary to purchase a restaurant in California with a liquor license:

1. Find The Restaurant You Will Be Purchasing

A good way to find a potential restaurant to purchase is to work with a business broker. Typically, the business broker is paid a commission by the seller and there is no cost for the buyer.

2. Letter of Intent

Once you find the restaurant, the buyer and seller often sign a letter of intent to make sure they agree on the 20,000-ft terms of the deal before investing time and money into due diligence.

3. Due Diligence

After a letter of intent has been signed, there is often a due diligence period in which the buyer has the opportunity to review the tax returns and financials of the restaurant.

4. Purchase Agreement

If everything checks out during due diligence, the buyer and seller will first negotiate, and then sign, a purchase agreement that is contingent on the transfer of the liquor license.

5. Escrow Account

Once the purchase agreement has been signed, the buyer and seller are required to open an escrow account with an escrow agent. If the restaurant includes the transfer of a liquor license, the buyer is required to put the full purchase price into escrow.

6. County Transfer Notice

Once the escrow agent has been hired, they will file a notice of transfer with the county.

7. ABC Transfer Notice

You are also required to submit a transfer application with the ABC, which often includes a request for a 120 day temporary permit. Within 30 days of submission the buyer must submit a statement to the ABC that the full purchase price has been placed in escrow.

8.  Public Notice

A public notice of application for the ownership change must be posted at the premises for 30 days. The escrow agent will also file a notice with the newspaper.

If all goes well with the public posting, the escrow agent will submit a form to the ABC that all contingencies have been met.

9. Transfer Of Funds

Once the ABC transfers the license, the funds are held in escrow until (i) the seller deposits the required releases from the various state agencies, such as Board of Equalization, the Employment Development Department (EDD), and Franchise Tax Board (FTB) and (ii) possession is transferred to the buyer.

The escrow agent will then release the purchase price to the seller. This is generally within about 75 days of the original open of escrow unless there is public opposition to the transfer.

Unfortunately, there is no way around this timeline as it is mandated by law and the ABC’s requirements.

Please do not hesitate to contact us at info@bendlawoffice.com or (415) 633-6841 if you would like our help with the purchase or sale of a restaurant.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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The Silver Lining of the GDPR for Ad-Tech Companies

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By Vivek Vaidya The General Data Protection Regulation (GDPR) went into effect in May 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all computer… Read More

By Vivek Vaidya

The General Data Protection Regulation (GDPR) went into effect in May 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all computer devices are connected – some estimate the internet of things to be a $9 billion industry by 2020.  The EU has recognized that it is important that users be able to control the valuable information they provide on the internet, especially in light of how often regular internet users input personal information.

The GDPR requires (among other things) that data be collected in accordance with one of the following justifications: (1) with the consent of the user; (2) in performance of a contract with the user; (3) in order to comply with law; (4) for the purpose of health and safety; (5) to perform an official governmental function; or (6) based on the legitimate interests of an organization or third party.  For ad-tech companies who do not have a prior business relationship with the user, consent is the primary justification for processing personal information.  Another requirement of note is that websites, apps, and online platforms be able to provide users with their data upon their request, and also delete data upon request.

The GDPR particularly affects ad-tech businesses that base their marketing practices on third-party data used to target consumers.  The inability of websites to share data is causing them to rethink their customer service, communication, and business strategies. Online marketers are no longer able to chase users around the internet, bombarding them with advertisements.

There have been different approaches by ad-tech companies to shift their behavior while remaining relevant and compliant.  One is a hands-off approach, where companies have stopped collecting and handling personally identifiable information for users located in the European Union. This obviously hurts a company’s bottom line. A second approach has been to rely on the GDPR’s exemption of collecting data for a “legitimate business purpose,” which includes requested marketing, fraud prevention, and sometimes market research.  A third strategy is the passive approach: hoping that the EU only goes after big players in the tech industry, and will have to make concessions and changes to the GDPR before going after the smaller fish.

Companies can still collect cookie-less data like keywords and search data while remaining GDPR compliant, which highlights the importance of creating a trustworthy relationship with users.  This type of first-party data, or data that the consumers have directly provided through a company’s website, should be prioritized in marketing efforts.

The GDPR is persuading many businesses to provide the same rights to all users, including those outside the EU, because of the momentum towards similar data privacy regulations in other jurisdictions.  However, it is important to realize that the GDPR does not consist of static regulations.  Over the next months and years, there will be challenges and changes to the regulations. It will be interesting to see how the EU changes the regulations and publishes clarifications to vague and ambiguous portions of the law.

Overall, the GDPR requires businesses to move away from third party data collection and marketing campaigns based on this data, a practice that regularly annoys customers.  While this may seem like a hindrance to marketing efforts, the silver lining is that the regulations present an opportunity to create a unique value exchange with consumers that leads to more consumer trust and better bottom line results.  Companies that send too many irrelevant marketing materials and create bad customer service interactions are more likely to be contacted by consumers with burdensome GDPR information requests, so it is important to create relationships with users that make them feel comfortable providing first-party data and consent to receiving marketing materials.

The post-GDPR world means that ad-tech companies need to be more open and stop sales tactics that irritate consumers.  One positive effect of the GDPR is that companies are being forced to be more open, deliver more value, and enhance their relationship with consumers.  It should cause a constructive impetus for improvements across the tech industry, and companies that bear this in mind will succeed in growing their bottom line.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article. 

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New Requirements to Classify California Workers as Independent Contractors Changes Everything

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A California Supreme Court decision issued in late April drastically changed the requirements to classify workers as independent contractors for the purposes of California wage and hour laws. In Dynamex Operations West Inc. v. Superior Court, the Court overruled the previous multi-factor test for classifying workers as independent contractors and replaced it with a new test. Where the… Read More

A California Supreme Court decision issued in late April drastically changed the requirements to classify workers as independent contractors for the purposes of California wage and hour laws. In Dynamex Operations West Inc. v. Superior Court, the Court overruled the previous multi-factor test for classifying workers as independent contractors and replaced it with a new test. Where the previous test was a balancing of factors that provided for much more uncertainty and, arguably, more manipulation of the facts, the new Dynamex test starts with the presumption that all workers are employees and then requires an employer to prove that all of the following are true before a worker can be identified as an independent contractor:

  1. The worker is free from the control and direction of the company in connection with performing the work, both in reality and under the terms of the relevant contract;
  2. The worker performs work that is outside the usual course of the company’s business; AND
  3. The worker is customarily engaged in an independently established trade, occupation, or business of the same nature as the work being performed for the company.

The first and third prongs of the new standard are similar to the previous test, which focused on the amount of control the employer exerted over the worker and also whether the worker had other sources of income besides the employer.

The second prong is the significant change – if the worker is performing work that falls within “the usual course of the company’s business,” then the person must be classified as an employee. Therefore, even if a worker is hired to take on overflow work or pick up intermittent jobs, if this work is in the scope of the company’s main business activities then the worker must be classified as an employee.

The decision will very likely be a blow to the growing “gig economy,” but the implications for small businesses and start-ups that have limited resources and may need more intermittent services is staggering. This new checklist test is much more stringent, and as a result the majority of workers in California should now likely be classified as employees (there have been some broad generalizations that plumbers and electricians will be the only remaining independent contractors…). As employees, the workers are entitled to overtime pay, meal and rest breaks, and at least minimum wage, and employers need to obtain workers compensation insurance for them and comply with other logistical requirements related to reporting and payment.

While workers providing ancillary services to businesses, such as lawyers and accountants (though it depends on the business, as these workers still provide work inside the course of some companies’ business), are likely still contractors under the new Dynamex standard, all employers need to honestly, and immediately, assess their workforce and determine if any contractors need to be reclassified. The new test went into effect as soon as the decision was issued in late April, so misclassified contractors need to be reclassified as employees as soon as possible. Misclassification lawsuits can result in enormous judgments, made up of backpay and penalties, that will very likely outweigh the “savings” of classifying a worker as a contractor.

If you need advice on this issue, contact us at info@bendlawoffice.com or (415) 633-6841.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article. 

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How Should Professional Service Providers in California Structure Their Business?

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An interview with Doug Bend by Nikole Mackenzie, a CPA and the owner of the owner of Momentum Accounting, on whether a California professional corporation should elect to be taxed as an S-corporation. Nikole: It’s a pleasure having you! I’ve been following your articles on your blog, so I’m excited to finally have a chance to speak with… Read More

An interview with Doug Bend by Nikole Mackenzie, a CPA and the owner of the owner of Momentum Accounting, on whether a California professional corporation should elect to be taxed as an S-corporation.

Nikole: It’s a pleasure having you! I’ve been following your articles on your blog, so I’m excited to finally have a chance to speak with you one-on-one.

Doug: Absolutely. It’s nice to be here, Nikole.

N: So, today I was hoping we could go over your thoughts on what professional service providers should do about incorporating their new ventures. What does someone need to know if they’ve just started out on their own?

D: Well, first of all, in California, certain professions that require a state license are prohibited from forming a limited liability company or a traditional corporation. Most of the companies affected by this are in the financial, legal and medical fields.

N: What would you recommend then for companies in those industries?

D: In most cases, I would tell them to incorporate as a professional corporation and elect to be taxed as an S-Corporation.

N: What are the advantages to being taxed as an S-Corp?

D: If you do not elect to have your California professional corporation taxed as an S corporation, the default is for it to be taxed as a C-Corporation.

N: And what exactly does that mean?

D: Well, as a C-Corporation, your professional corporation would pay federal taxes on its profits and you would also pay individual taxes if you receive salary, bonuses, or dividends from the corporation.

N: How would being an S-Corp differ?

D: By electing to be taxed as an S-Corporation, your professional corporation would instead be a pass-through tax entity, like an LLC or a partnership.  Electing to be taxed as an S-Corporation may also allow you to pass losses from the business to your personal income tax return, where you can use the losses to offset income that you may have from other sources.

N: Ok. And can you talk about how the owner might take out a “reasonable salary?”

D: If the corporation pays you a “reasonable salary,” you may not be required to pay self-employment taxes on any additional corporate profits that are paid to you as dividends as a shareholder in addition to your reasonable salary.

N: That does sounds very advantageous—especially for those just starting out.

D: It is. It’s a great way to help small business owners who are sole proprietors get some financial breathing room.

N: Now, what would the disadvantages be?

D: The main drawback of electing to have your professional corporation taxed as an S-Corporation rather than a C-Corporation is that, in a C-Corporation, the cost of the premiums for shareholder benefits, such as insurance coverage, are deductible as a business expense. In addition, the shareholders may not be taxed on the value of the benefits.

N: Are there any restrictions on who can be a shareholder of an S-Corp?

D: Yes.  The Internal Revenue Code limits the number of S corporation shareholders to 100 or less. Also, S corporation shareholders can only be individuals, estates and certain types of tax-exempt entities and trusts, and the individuals must also be U.S. citizens or permanent residents.

N: And what about stock?

D: S-Corporations may only issue one class of stock, whereas C-Corporations can have different classes of stock that have different rights and liquidation priorities.

N: What would you recommend to someone who is just starting their professional corporation?

D: I would tell them to consult with their CPA or tax professional to make sure being taxed as an S-Corporation is the best fit for them. That being said, for most California professional corporations, electing to being taxed as an S-Corporation rather than a C-Corporation is likely to provide the most tax savings.

N: Thank you so much, Doug! I think that just about answers everything we were hoping to cover.

Doug Bend is the founder of Bend Law Group, PC, a law firm focused on advising small businesses and startups. To find out more, please contact Doug at doug@bendlawoffice.com.

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