What if another company is already using a similar name but I still want to register?
In short, this is possible. However, it would be best to consult an experienced trademark attorney in making a determination on acquiring such a registration since the USPTO routinely rejects trademark registrations based on the “likelihood of confusion,” i.e., that consumers could be confused between a prospective trademark and one that is already on file with the USPTO.
Each application is decided on its own facts, with the examining attorney looking at many factors, starting with the marks themselves to looking at the similarity of the goods and services you provide with the registered mark. Of course, there are no guarantees; however, we have overcome likelihood of confusion rejections before and can give you an honest assessment of the chances that you might face.
What if the USPTO rejects my trademark application for some reason?
It is quite common to receive what is called an "office action" to a trademark application. An office action is written correspondence from the trademark examining attorney that requires a properly signed written response from the applicant in order for prosecution of the application to continue.
Office actions received can be as minor as technical difficulties or more substantive such as a likelihood of confusion refusal in which the USPTO believes that your trademark application is too similar to an existing trademark registration. Most replies to office actions must be received within 6 months from the mailing date on the office action, so you do have some time to respond to any “rejection” before any final decision is made. Even if you filed an application on your own, we are happy to review your options with you.
How long does it take to get a trademark registered?
USPTO records have shown the total time average to be 9.8 months. The total time is measured from date of filing to notice of abandonment, allowance, or registration. Meanwhile, it takes an average of 2.7 months between the time of filing and the time of first action on the application; in other words, it will take about 3 months for the office to substantively consider your application. In fact, we guarantee you will not hear anything for at least 3 months.
While it has generally taken 6 to 9 months in our experience for a registration to go through, our flat-fee, full-service commitment to you means we are with you for as long as it takes to acquire a successful registration or final rejection.
My business is local, but I’ve been sued in another state. Can you help?
We have in the past, so talk to us. Although we are based in Orange County, we have and can litigate matters in federal and state courts throughout the United States. Most intellectual property litigation falls under federal law, where there is more uniformity between jurisdictions, so appearing in other districts is actually quite common. Besides litigating in all federal districts in California, we have handled matters in Oregon, Kansas, and Tennessee. Even though your business may be based in Southern California, we can discuss all your options and whether we would be the best choice for you.
On the flip side, if your business is from another state/district, or even overseas, we can help. We have represented companies from many different states and countries. We have and continue to serve as local counsel for attorneys and firms from other states as well. If we cannot assist you, we will inform you and see if we know someone who can.
We are in a dispute, what do you need from us?
The truth, all of the facts, and whatever evidence you have. The worst thing to hide from your attorneys (who advocate for you) is the truth. No matter how embarrassing or difficult, anything you tell an attorney is privileged and confidential, and there is a reason for that. Without the truth, we simply cannot help you nor properly advise you on your best course of action. And without the evidence, we will not win.
We have worked for judges and we now appear in front of them. The one thing we have learned to advocate the most for is our client's credibility. We cannot do that if a client hides or is not forthright with something. If we are to best advocate for you, we ask that you trust us to handle the process. We strive to offer candid advice to our clients regardless of initial consultation, during trial, or even appeal. We ask that you be candid and forthright in return.
What kind of lawsuits and disputes do you NOT handle?
The businesses we advise are broad, so not surprisingly, the legal issues those businesses face vary widely (suggestion: widely vary). However, we do not handle tax disputes, family law (divorce and custody), criminal, and/or most administrative claims. For those, there are specialists we might be able to put you in touch with. The matters that businesses face - i.e., shareholder disputes and fraud, vendor disputes and breaches of contract, competitor disputes and interference with contracts, and business torts and non-competition claims - form our main focuses (is that a word? Yes; another suggestion: areas of expertise).
We also litigate intellectual property claims, specifically trademark, copyright and patent infringement, and their corollary causes of action such as trade secrets, rights of publicity, and unfair competition. If you are in a lawsuit, you certainly do not have time to waste, so if we cannot help, we strive to tell you that up front or once we have made that determination.
My partner is leaving the partnership. How can we ensure a clean break?
Hopefully, a written partnership agreement was prepared at the time you established the business partnership. If you have a partnership agreement, the terms of the contract will likely dictate most of the terms of separation. However, it is still a good idea to negotiate a separation agreement that more precisely defines your needs such as how and when assets will be delivered or obligations will be paid.
If the partnership is being dissolved without an agreement, then you will need to negotiate the terms of the dissolution. Things to consider include how and when your partner’s name will be removed from contracts, leases, assets, etc. and who is responsible for outstanding taxes or other debts and how those will be paid. These are only two of many issues to consider.
With that said, it would be advisable to consult an attorney to help craft a strategy for the dissolution of a partnership, especially if there is no written agreement. To help you protect your interests, please feel free to ask us about your potential partnership dissolution.
What’s best for me, an LLC or a corporation?
This answer will vary depending on your personal goals and circumstances for your business. There are many differences between the two business types. For example, the Internal Revenue Service does not view an LLC as a separate vehicle for tax purposes, which allows for greater flexibility and members can choose how they are taxed. On the other hand, corporations offer more flexibility when it comes to their excess profits. These are only two of many differences between the two entities. Therefore, it is important to sit down to look at the benefits and disadvantage of both to see which one would be best suitable for your business. Other key factors to consider include but are not limited to tax implications, requirements of the administration, ease of operation, liability protection, and the sharing of profits. At AC Legal, we are familiar with such distinctions and we would be happy to assist you to find what is most appropriate for your business.
I found someone using my art. Can I sue them?
Yes, copyright is a form of protection grounded in the U.S. Constitution and granted for original works fixed in a tangible medium of expression. 17 U.S. Code § 102. Therefore, your art is under copyright protection the moment it is created.
However, you will have to register with the U.S. Copyright Office if you wish to bring a lawsuit for copyright infringement of your art work, assuming it is a U.S. work.
I created a work and now my company is using it with my permission. Who owns it?
This depends. If your work was created in the course of your employment, your employer will likely have copyright ownership. If you are an independent contractor and possibly signed a written agreement stating the work shall be "made for hire," your company will own the copyright if one of several conditions are met; for example, if your work is a part of a larger literary work, such as an article in a magazine or audiovisual work such as a screenplay under such an agreement, your company would own the copyright.
If you, the creator, have sold the entire copyright, the purchasing business or person would become the rightful copyright owner. However, if you simply permitted your employer to use your work that you have not created in the course of employment, you would still be entitled to copyright ownership of your work. The Copyright Act gives significant rights and powers to copyright holders, particularly when the copyright is registered with the U.S. Copyright Office, a step that confers certain additional legal protections on top of the right to bring an infringement action to court. See 17 U.S. Code § 106.
How Can We Help?
The law is complex. With our legal knowledge and expertise, we advise businesses on a wide variety of issues and make the complicated, straightforward. We are happy to evaluate your situation and hopefully guide you through your business’ toughest problems.