​Trademark infringement is the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. But what does this mean for your small business? How can you avoid receiving a nasty cease and desist letter accusing you of infringing someone else’s trademark? And how much can a trademark mistake cost you?

We’ve talked before about the importance of conducting a thorough trademark search before launching a brand name or logo or slogan. You might be surprised to learn about similar trademarks that are already in use. You might learn that your proposed trademark would be considered relatively weak. Even if trademark registration simply isn’t in the budget yet or a federal registration doesn’t make sense for other reasons, you still need to know what trademarks your competitors are already using. 

​Whatever the reason for not moving forward with a trademark registration, that still leaves an important question—What rights do you have if you don’t or can’t register your trademark? Is there anything you can do to protect your unregistered trademark?

When you are working hard to build a brand, it’s easy to say “just trademark everything…name, multiple logos, slogans.” And in a perfect world, you should trademark every aspect of your brand. But in the real world, trademark registrations are not cheap, especially on a start-up budget. And multiple trademark registrations won’t matter if you aren’t also making sales, hiring staff as you grow, and improving your product or service.

So if budget is an issue, what should you trademark first? Your name or your logo?

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​A licensing agreement is a contract in which you, the licensor, gives someone else, the licensee, permission to do something that they otherwise would not have the right to do. There are many situations in which a small business might use a licensing agreement:

• If your business is only reaching customers in a particular region, you might enter into a licensing agreement with another business to sell your products or services in a different region. 
• If your business develops software, you are typically giving end users permission to use the software in a particular way, but you are not selling the underlying code that makes up the software. (This is also true of businesses that operate under a software as a service or SaaS business model.)
• If you create content for others, you have to decide whether you are giving up all of your rights in that content, or simply giving your client permission to use that content (in which case, you retain the right to re-use that content with another client).
• If your business has a proprietary process or patent rights in a particular technology, you might monetize that confidential information by giving another business the right to use that confidential information.
• If you franchise your business or offer a business opportunity, you are licensing your brand for someone else to use.

​While licensing agreements need to be customized to fit your particular business situation, there are some common terms that most licensing agreements should address.

Over the lifespan of a small business, you may find yourself needing to sell or transfer intellectual property rights. There are a variety of situations where this might come up:
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• The trademark or copyright was registered in the name of an individual owner instead of the business. (Because this can be an incredibly valuable business asset, most of the time, the intellectual property should belong to the company and be registered in the company’s name.)
• The intellectual property rights are being sold in connection with the sale of all or part of the business.
• The trademark or copyright is being used as collateral to secure a debt.
• The company is merging with another business, and the intellectual property rights need to be transferred to the other business (or sometimes a new entity created out of the merger).
• The business entity (or sometimes individual) that owns the trademark or copyright undergoes a name change, and the registration simply needs to be updated.

​Even though intellectual property rights are intangible, they can still be sold or transferred much like any other business asset. This week, we look at how to transfer ownership of these assets. Except for name changes, we first need an agreement between the parties describing the terms of the sale or transfer. Then, we need to record the assignment of the intellectual property rights in the appropriate office.

(Note: Licensing intellectual property is not the same as transferring ownership. Licensing deals with a temporary right to use intellectual property, not a change in the underlying ownership.)

The Coronavirus pandemic has turned life upside down for most of the world, and has been especially difficult for small businesses and nonprofits. However, this hasn’t completely eliminated legal obligations and deadlines. I have said before, and I will say it again, I firmly believe that we will get through this. Many small businesses and nonprofits will find ways to pick back up and re-open their doors. Many of you have already found creative ways to transition to online sales. Small businesses and nonprofits are an essential part of the economy, and that will still be true on the other side of this pandemic. 

One of the many legal obligations that you may be tempted to set on the backburner (or may simply have forgotten about in the midst of the current crisis) are your trademark deadlines. The USPTO is not granting waivers of fees or extensions of time for most trademark related filings. These include:

• Deadlines for filing statements of use or requesting an extension of time;
• Deadlines for filing trademark renewals, including affidavits of continued use; and 
• Time periods related to proceedings before the Trademark Trial and Appeal Board. 

In Part 1 of this series, we discussed the importance of conducting a trademark search. In Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. And in Part 3, we discussed how to register your trademarks with the USPTO. But once your trademark is registered, it’s your job to protect it and enforce your rights. To do so, you must file certain maintenance documents in a timely manner and actively police your trademark.

To recap, in Part 1 of this series, we discussed the importance of conducting a trademark search, and in Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. Assuming your trademarks aren’t confusingly similar with that of another company offering related goods or services, how do you go about actually registering your trademark with the U.S. Patent and Trademark Office (USPTO)?

In Part 1, we discussed the importance of conducting a trademark search, preferably before investing too much into a brand only to learn that your trademark cannot be registered or, worse, infringes someone else's trademark. The most common reason for the U.S. Patent and Trademark Office (USPTO) to refuse a trademark registration is because there is a "likelihood of confusion" between the mark you applied for and an already registered mark. Put simply, in order to protect consumers, two trademarks generally cannot be "confusingly similar" to one another.

The question isn't whether your trademark is identical to someone else's. The question is how similar the two trademarks in question are and whether both marks are being used for related goods and services. For example, you wouldn't be able to trademark "McDonald's Burger Joint" for obvious reasons, but you could make a good argument to trademark "McDonald's Financial Services" because burgers and financial services are not related goods or services.