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Leyendecker & Lemire Announces 11 New Trademark Registrations

Real estate, agriculture, cannabis and pet supplies among industries represented

Jan. 26, 2016

GREENWOOD VILLAGE, Colo. — Leyendecker & Lemire LLC, an intellectual property and business law firm providing intellectual property and business-related legal services to entrepreneurs, individual inventors and businesses of all sizes, announces 11 new trademarks registered by the U.S. Patent and Trademark Office.

Leyendecker & Lemire successfully registered the trademarks — all for logos and character marks — on behalf of nine clients representing a range of industries nationwide.

On Oct. 20, Denver’s FusionPharm Inc. registered two trademarks for its PharmPods — hydroponic grow containers equipped with lights, water and a nutrient distribution system. FusionPharm is the developer of a proprietary line of food cultivation containers made from repurposed steel shipping containers and is a year-round produce supplier to leading natural and whole foods grocers and restaurants. One 40-foot PharmPod container is capable of growing more produce than one full acre of traditional farm agriculture — in half of the time and using 80 percent less water. For more information visit www.fusionpharminc.com.

On Nov. 3, a trademark was registered for 420 Events LLC, a producer of pro-cannabis festivals and live-music concerts, including an annual 420 rally and festival in downtown Denver that is billed as the world’s largest. The Highlands Ranch, Colorado, company trademarked a stylized design but did not claim exclusive right to use the term “420,” which is commonly used to signify and celebrate cannabis use.

Other recently registered trademarks represented by Leyendecker & Lemire include:

  • Two trademarks registered Sept. 1, 2015, for 5 Square Research Inc., a marketing research firm in South Pasadena, Florida.
  • A trademark registered Sept. 8 for Slide & Hide — a telescoping shelf system owned by DE Co. in Aurora, Colorado.
  • A trademark registered Sept. 15 for totalElement, a retailer and distributor of decorative rare-earth magnets based in Centennial, Colorado.
  • A trademark registered Oct. 6 for TerraPact, a Boulder, Colorado, real estate investment firm.
  • A trademark registered on Nov. 3 for Simpawtico, a Denver pet product retail store.
  • A trademark registered on Nov. 10 for Lumistick, a line of children’s toy jewelry such as glow necklaces and bracelets, owned by The Green Group LLC of Silver Springs, Maryland.
  • And finally, a trademark registered on Nov. 24 for This Naked Mind LLC, based in Morrison, Colorado, which produces a website (com) featuring articles and videos about substance abuse and addiction.

“Trademarks not only cover words, but can also protect slogans, logos, stylized designs or lettering, colors, product packaging and design, building design elements and a whole host of other attributes that identify goods or services in commerce,” says Founding Partner Kurt Leyendecker. “Your trademark is a valuable business asset, so it’s important to protect and manage it. We’re pleased to guide businesses like these through the trademarking process and help them steward these important assets.”

For further information about trademarks and the Leyendecker & Lemire LLC law firm, contact Peter C. Lemire at 303-768-0641 or peter@coloradoiplaw.com.

By | February 8th, 2016|FIRM NEWS|Comments Off on Leyendecker & Lemire Announces 11 New Trademark Registrations

DIY intellectual property: Really, how hard can it be?

Well, it’s kinda like removing your own appendix

By Kurt Leyendecker

We often receive inquiries at our firm from people wondering whether they can prepare and file either a trademark application or patent application themselves without an attorney. Of course, for purely selfish reasons as an attorney, I am not thrilled about losing potential revenue, but there isn’t any legal reason or rule that prevents a person from filing their own intellectual property paperwork. I say go for it — what is the worst that can happen?

As an aside, please forgive me if my column seems a bit disjointed and my prose a bit forced. You see, I am in a lot of pain right now. I noticed my abdomen was rather sore and tender a couple of weeks ago. After a little Internet searching, I came to the conclusion that my appendix was inflamed. With my deductible and copays, I figured an appendectomy was going to cost me several thousand out of pocket. Seriously, why is surgery so expensive? I mean all the doc has to do is cut a small hole, reach in and cut the appendix off, and sew everything back together. “How hard can it be?” I thought.

After a few hours of Internet research and watching a bunch of YouTube videos, I decided to give it a go and cut that pesky appendix out myself. I boiled water, sterilized a bunch of X-Acto knives, set myself up in front of a mirror and got busy.

I am not going to lie: It was a bit more difficult and painful than I imagined it would be. But I did find what I think was my appendix, and I did cut it out. Gosh, I really hope it was my appendix and not something else important. I managed to sew everything up, and well, I am just fine now except for the pain. I am in a lot of pain, and my abdomen is kind of sensitive to the touch and frankly, a bit inflamed. I am sure if I take a couple Tylenols I will be just fine. It’s not like an appendectomy is major surgery after all. I mean it couldn’t kill me, right?

Filing for trademark registration is nothing more than filling out an online form. Sure, you have to decide whether the mark is actually in use and what constitutes proper use as far as the trademark office is concerned. Sure, you have to pick a proper class of goods category and draft a proper description of the goods covered by the mark. None of this is anything that can’t be learned with enough time and effort. I suspect someone of above average intelligence could figure it all out and have a fighting chance of getting it right with 10-30 hours of research and study.

Really, what is the worst that could happen if you get it wrong? The registration never goes through; someone else starts using a similar mark for similar goods; you have to change the name of your product or service; and you lose all the goodwill built up over the years in your brand. Not so bad, right? Besides, you will have saved a few hundred dollars doing it yourself in first place.

Patent applications are a little more work. They aren’t so much applications in the traditional sense as written documents describing an invention and setting out the legal metes and bounds of your exclusionary rights. There are books available to help you draft an application yourself, and with a couple hundred or so hours of study, you should be able to do a passable job on everything but the claims.

Claims, which are the most important part of a patent application, take a bit more time to learn. I figure that a newbie patent lawyer right out of law school is good to draft claims on his or her own without partner review after a couple of years of practice, but absent a thousand or more hours of experience, you can still get lucky and write a great set.

Again, what is the worst that could happen? You never get a patent or the patent you get is extremely narrow in scope and breadth; a well-heeled competitor starts making something very similar and does great in the marketplace without infringing your patent rights because it made a small change to a rather insignificant feature you, for some inexplicable reason, included in your claims; and you lose the opportunity to license the patent for a sizable royalty. Seriously, what’s the chance your new product, service or innovation is going to do that well anyhow? The most important thing is that you saved a few grand now.

Ummm … I think I need to wrap this up. I am feeling kind of faint.

By | November 18th, 2015|BLOGGING|Comments Off on DIY intellectual property: Really, how hard can it be?

The sweet spot: When to file for your patent

Things have changed recently

By Kurt Leyendecker

Over the years, I have written a significant amount concerning patent strategy and patent procedure aimed at entrepreneurial companies and individuals, and most of the information was available on my firm’s website.  The firm recently unveiled a new modern and streamlined website.   Much of the old content was removed with the intention of updating it and making it available as PDF white papers on our new site.  What struck me most during the updating process is how dramatically my advice has changed in light of the changes to patent law, most of which went into effect a little over two years ago as part of the America Invents Act (AIA).  Some of the procedural considerations are worth noting here.

Prior to March of 2013, the person first to invent a new invention was first in line to receive patent protection, even if another person who invented a substantially similar invention filed for patent protection first. Accordingly, I advised many of my clients to keep copious notes and fully develop the invention before filing a patent application, reducing the chance that the client would have to file a second or third application at significant additional expense because of changes made during development. Under the current first to file rules, however, whomever files first on an invention is the inventor who will receive a patent even over another later-filing inventor who came up with the idea first.  Now, I recommend an inventor get an application on file as soon as reasonably possible, even if significant and potentially substantial changes may occur during subsequent development. The failure to file quickly could be the difference between receiving a patent or not.

I used to recommend against the use of provisional patent applications.  For those who are unaware, provisional patent applications are less formal and less expensive applications that have a limited pendencyof one year, are never examined by the patent office and consequently never issue as a patent. Essentially, a provisional patent application provides a filer up to one year to decide whether to file a more formal more expensive regular patent application.   Under the old rules, however, the need for a placeholder was less critical since the first inventor would be awarded the patent whether or not he/she was the first to file an application.  Being less formal, the provisional application, especially if prepared based on a still evolving product, runs the risk of not satisfying one or more statutory criteria.  Further, since provisional applications are not docketed for examination, the issuance of a patent is delayed by up to a year.  Add to all this the additional cost of filing both a provisional and a non-provisional a year later and the drawback significantly outweighed the benefits.

Things changed with the advent of the first-to-file paradigm.  While provisional applications still suffer from the risks mentioned above, to ensure that he/she is not beaten to the punch, an inventor is advised to file a provisional application as soon as possible after conception to secure his/her priority rights even if changes may occur to the invention in the coming year.  Changes, if they occur, can usually be incorporated into the regular patent application when it is filed. Unlike before, timing has become critical and takes precedence over other considerations.

Traditionally, patent lawyers have as a matter of course fought to obtain for their clients as broad of patent protection as is possible.  With broad protection, however, there is a risk that if litigated, a court will invalidate the patent as being obvious or anticipated by prior art that was not previously considered by a Patent Office patent examiner.  This risk was balanced by a presumption of the patent’s validity and the substantial cost of seeing litigation through to its conclusion on the hope of obtaining a favorable invalidity verdict instead of an unfavorable infringement verdict.  Cost and uncertainty pushed most cases to settle.

The AIA instituted a new review procedure that permits a party to challenge a patent’s validity on limited grounds and, most significantly, obtain a ruling within a little over of a year.  This process replaced re-examination which could be dragged out for years.  The difference in timing is significant.  Under the previous procedure, a patent holder suing an alleged infringer could hold out in re-examination until the patent case concluded and hopefully a judgment of infringement was entered; whereas, under the review procedure, a validity determination is made long before the court case concludes, giving the alleged infringer a bit of a timing advantage.

The point of the foregoing is simple: Patent claims are more likely to be adjudicated and broad claims are more likely to be found invalid than ever before.  Narrower, carefully tailored claims are more likely to survive a challenge.  Unlike in the past, I am more likely to advise a client to take allowed patent claims that are narrower than I might have in the past.  The consideration as to whether a claim is not only reasonably broad but also able to withstand challenge must now be more seriously considered.

For the entrepreneur and business owner, the upshot of all this is simple: When you have an idea or invention you believe has potential value, see a patent attorney as soon as possible to discuss what steps are necessary to maximize your potential protection and value. Waiting is more dangerous than ever.

By | October 18th, 2015|BLOGGING|Comments Off on The sweet spot: When to file for your patent

Pay attention to the dancing baby

What businesses need to know before sending takedown notices

By Peter Lemire

A while back, the 9th U.S. Circuit Court of Appeals issued a decision in what has come to be known as the “Dancing Baby Case”. Every business needs to know about it before sending Digital Millennium Copyright Act (DMCA) takedown notices to Web hosts and other companies that host third-party content such as Facebook, YouTube, Amazon and eBay.

Although the biggest users of the DMCA are media companies and content producers, pretty much any business could find itself dealing with DMCA issues. A frequent issue in our office is competitors’ unauthorized utilization of product photographs, product videos, or logos that are protected by copyright.

The DMCA has been a powerful tool for businesses to fight copyright infringement, but it is somewhat of a double-edged sword that can land companies in a host of trouble that they never expected.  While it is important to police one’s intellectual property, the dancing baby case is a good example of how knee-jerk reactions and overly aggressive enforcement can land a company in a whole host of legal trouble that it never anticipated.

The DMCA was passed in 1998 to implement two treaties of the World Intellectual Property Organization.  The two treaties dealt with digital rights management and providing a safe harbor for companies that host third-party content.  The latter created a procedure that is commonly referred to as “notice and takedown.”   The notice and takedown procedures were established to provide third-party hosts a shield from secondary copyright infringement liability.

If a host complies with certain procedures, promptly removing or denying access to infringing content upon receiving a takedown, it will be shielded from copyright infringement liability.  The notice and takedown procedures also provide a host with a liability shield from its own customers in the event that it removes or denies access to allegedly infringing content.  This can be very handy in the situation where you are dealing with an uncooperative or foreign infringer, as hosts are generally willing to comply with a conforming takedown notice.

Because this procedure works so well and is so effective, businesses and their attorneys will sometimes fire off notices without considering all the factors.  The DMCA requires that the notice be sent with a “good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”  Generally speaking, it’s the “the law” portion that trips people up.  Additionally, the DMCA has provisions that are aimed at deterring abuse of the system by authorizing damages to be awarded if a person “knowingly materially misrepresents … that the material or activity is infringing.”  When you add in the often-confusing doctrine of fair use, that’s when things start to get interesting and we end up talking about dancing babies.

The heart of the dancing baby case (formally named Lenz v. Universal Music Corp. et al.) revolves around a 29-second video of Stephanie Lenz’s 13-month-old son dancing to Prince’s song “Let’s Go Crazy” that was posted to YouTube in 2007.  The song was playing on a stereo in the background as Lenz’s son danced around the kitchen.

Universal Music, which was responsible for enforcing Prince’s rights at the time, had paid employees that searched YouTube on a daily basis.  They would look for videos that used Prince’s compositions in which the song was recognizable, was in a significant portion of the video or was the focus of the video.  If the video met those criteria, then a takedown notice would be sent.  The analysis did not consider fair use.

Universal Music sent a notice and takedown letter to YouTube and YouTube removed the video. Lenz then sued Universal seeking damages alleging that Universal had misrepresented the infringement in violation of the DMCA because the appearance of “Let’s Go Crazy” in the video was protected by fair use.

The issue on appeal was whether Universal had to consider fair use aspects when determining whether there was a good faith belief of infringement It now goes back to the trial court to see if Universal really had a good faith belief of infringement.  Since the music was in the background, was distorted, not high quality, and was only incidental to the main focus of the non-commercial video (the dancing toddler), things don’t look good for Universal.

The main lesson for businesses is that it is really important to fight the immediate urge to fire off a DMCA takedown letter every time a potential copyright violation is found on the Internet.  Doing so without a thoughtful consideration of the elements of copyright infringement and exceptions to copyright infringement such as fair use may not only result in the content to continue to be accessible, but it could very well subject your business to a very large judgment against it for abuse of the DMCA.

By | September 18th, 2015|BLOGGING|Comments Off on Pay attention to the dancing baby

Patent Client Profile: John Jackson

 

The Problem

As everyone knows, petroleum, ore and other valuable materials are found in the depths of the Earth. The problem has traditionally been that, because they are at such depths, they cannot be found by the naked eye and therefore require various types of systems and techniques to be discovered.

One of the most common methods for testing for what’s in the ground is drilling test holes at locations of particular interest and removing samples of the earth from various depths to determine what materials are in it. It’s not cost effective to core throughout the entire length of drill holes, however.

So another method of testing has been to measure topographical irregularities to determine whether there may be materials of interest, such as oil and gas, below the surface. The problem with this method is that it’s far more successful at ruling out areas that may be of interest than finding areas that are.

The Solution

In the early 2000s, John Jackson of Littleton developed a method for finding oil and gas by air, a method and apparatus for passive geophysical prospecting. The apparatus has an antenna that detects electromagnetic radiation that naturally emanates from the Earth’s surface. The antenna generates an electrical signal from the detected radiation while traveling by vehicle over land, water or airplane.

The electrical signal is filtered of frequencies and converted into a prospecting voltage signal. The voltage signal is then compared to a set voltage and an output signal is generated, recorded and analyzed, providing information as to whether the material of interest is in that ground location.

In 2003, when John’s Texas-based attorney unexpectedly died, John was left in the lurch and sought out Leyendecker & Lemire after finding them via an online search. He hired L&L to shepherd his pending application through the patent office. John has continued to work with the firm for more than a decade, having multiple United States and foreign patents issued with L&L’s assistance. He has also used the firm’s legal services to review and help finalize a fully paid up license of his patented technology that netted John a significant sum.

By | August 4th, 2015|CLIENT PROFILES|Comments Off on Patent Client Profile: John Jackson

Client Profile: ‘Sunday at the Memories’ / James Durkee

 

The Issue

James Durkee’s father, Ray, was a radio talk show host for nearly 40 years whose listeners spanned 100 stations and eagerly awaited his Sunday broadcasts, “Sunday at the Memories.” Ray launched his “Sunday at the Memories” show in Denver in c28014_13746382aa0848e4a62eae41b698b0ee.png_srz_p_230_250_75_22_0.50_1.20_0.00_png_srz1973, a nostalgia-oriented show that featured music of a bygone era along with news, sporting events, movies, commercials, TV shows and just about anything else that would take listeners back in time to the ’40s, ’50s or ’60s. The hugely successful show created what James calls “theater of the mind” and its ratings rivaled that of the Denver Broncos.

As the show’s popularity grew, Ray created a new, three-hour show to sell to stations across the United States, eventually finding syndication in 100 stations at its peak. By the early 1980s, “Sunday at the Memories” had an audience from Washington to Maine as well as Hawaii and Guam, and the Aramco Oil Company even played the show for its American workers in Saudi Arabia.

Ray syndicated the show from his home for 15 years before retiring in 1990.

Believing in the value that the show had for its listeners, James Durkee set out to archive his father’s shows, bringing more than 1,500 hours of memories to the Internet and hoping to give them encore presentations on the radio.

The Solution

James needed legal guidance on how to go about preserving and protecting his father’s legacy, so he sought out Leyendecker & Lemire in February 2015.

The team at L&L helped James do a trademark search and file a trademark for “Sunday at the Memories.” L&L was “very simple and easy to communicate with and engage with for the work being performed,” James said.

Since working with L&L, James has begun to stream his father’s shows online at SundayAtTheMemories.com and once again secured the show a spot on the radio dial from 4-7 p.m. Sundays on Cruisin’ 950 AM in Denver.

James’ trademark application has made its way through the review process at the U.S. Patent and Trademark office and is expected to receive registration this summer.

By | July 28th, 2015|CLIENT PROFILES|Comments Off on Client Profile: ‘Sunday at the Memories’ / James Durkee

The rise and fall of the labradoodle

June 22, 2015

How a trademark would have made all the difference

Peter Lemire

Leyendecker & Lemire speaks to trademark issues often – with clients and within this column. In the world of intellectual property, this might seem strange. After all, patents are usually the ones in the spotlight, soaking up all of the adoration and discussion in intellectual circles. Even some intellectual property attorneys will give short shrift to trademarks and almost treat them as an afterthought – an add-on to the patent, if you will.

However, there’s good reason we spend so much time talking about trademarks: They are universal. Most businesses have them, and oftentimes they account for the vast majority of business value represented by a company’s intangible assets. Trademarks are eternal, whereas patents and copyrights have a fixed term that will eventually expire. At the end of the day, once your technology is not necessarily the newest thing, your trademark is what will differentiate your company. Additionally, trademarks can be used to great effect and commercial gain in situations where other forms of intellectual property are not available.

I recently came across an article in Psychology Today that shows not only the power of branding, but also the risks that are associated with not adequately protecting and policing your mark. The seemingly unlikely focus of this analysis is, well, a dog; specifically, a pseudo-breed that everyone knows – the labradoodle. The focus of the article is actually on the regret of Wally Conron, the creator of the labradoodle, in introducing these dogs to the world.

Labradoodles, despite what a lot of people think, are not actually a breed of dog. They are a crossbreed, or what is more commonly referred to as a mutt. So if the labradoodle is really just a mutt, then how has it earned such high stature in society, where people are willing to shell out thousands of dollars for one? One word: branding.

As the article recounts, the labradoodle came about when Conron was the puppy-breeding manager for the Royal Guide Dog Association (RGDA) of Australia. A request came in from a woman seeking a seeing-eye dog that did not shed, since her husband was allergic to dog hair. Conron originally thought it would be easy – just train a standard poodle to be a seeing-eye dog as standard poodles were traditional working dogs and they don’t shed much.

The problem was that apparently standard poodles don’t make good seeing-eye dogs. So over the span of three years, Conron tried to train 33 dogs and they all failed. Eventually, he had an idea of cross-breeding a Labrador retriever (which make very good guide dogs) with the standard poodle (which don’t shed). The result was three puppies. However, Conron had a new challenge: He needed foster homes for the pups to live in until they were ready to start training. To his surprise, he couldn’t place the dogs because everybody wanted a purebred dog.

So Conron had the association’s PR team announce that they invented a new dog – the labradoodle. The response to the rebranding was astounding; not only did they immediately place the pups, but the organization was inundated with interest from people all over the world.

While the concept of crossing a Labrador with a poodle is not protectable under patent law or any other theory in intellectual property, the term labradoodle when it was first introduced was certainly trademarkable. Trademarking the term, combined with proper enforcement, could have prevented a lot of the subsequent ills that Conron regrets such as unethical breeding practices and false claims that “doodles” are hypo-allergenic.

While anyone could have crossed Labradors with poodles, they would not have been able to market them under the labradoodle name. Enforcing the trademark would have allowed RGDA to determine which breeders could use the trademark and establish guidelines, quality rules and dog placement guidelines for breeders wishing to sell their crossbreeds as labradoodles.

The lack of such structure and enforcement of the brand has led to serious issues regarding the health of many dogs and potential safety concerns regarding the temperament of dogs bred by unscrupulous breeders.

Additionally, the requirement that breeders be licensed to sell their dogs as labradoodles or face a lawsuit would have dissuaded a lot of the unscrupulous breeders from getting into the market for this lucrative pseudo-breed. Instead, anybody and everybody started breeding labradoodles, often because they could charge exorbitant prices. The use of the term labradoodle is now so widespread that it is a generic term and not entitled to legal protection.

The labradoodle is a wonderful example of the power of trademarks to create amazing commercial value for a product for which exclusivity is not protectable under other areas of law. However, it also shows the downside when a business fails to protect and enforce those trademarks.

By | June 23rd, 2015|BLOGGING|Comments Off on The rise and fall of the labradoodle

Law Firm Leyendecker & Lemire Announces Client Trademarks, Patent

 

T-E-B-S, Accusteam and WELLDIRECT receive approval

June 3, 2015

GREENWOOD VILLAGE, Colo. — Leyendecker & Lemire, LLC, a law firm providing intellectual property (IP) and business-related legal services to entrepreneurs, individual inventors and businesses of all sizes, announces two new trademarks and one patent represented by the firm and recently registered with the U.S. Patent and Trademark Office.

On March 24, Centennial-based Center for Error Management received a trademark for T-E-B-S. According to filing documents, the mark is used for printed educational materials the firm uses to train organizations in process error management. Co-Founder and Senior Partner Larry Tew can be reached at tewcons@aol.com.

Also on March 24, Dan Hutchinson of Denver’s Steam Testing Solutions received patent approval for Accusteam, a steam quality and flow rate measurement system for an enhanced oil recovery (EOR) system. Hutchinson’s invention uses a nozzle and spacer that can be adapted to measure the impedance of a two-phase steam to determine steam quality and reduce pressure loss, according to the patent filing. All EOR systems involve a steam distribution system that is important in the engineering, management and economics of steamflood EOR, as it helps to monitor or predict the multi-phase conditions for wet steam flowing in a steam-distributing network. Contact Dan Hutchinson of Steam Testing Solutions at dan@steantestingsolutions.com.

Meanwhile, On March 31, Terracosm Software of Denver won a trademark for WELLDIRECT. Terracosm uses the name on its geology-related computer software used for the operation and control of drilling machinery.

“It is always very rewarding to help entrepreneurs and inventors through the patent and trademark process,” says Leyendecker & Lemire Founding Partner Peter Lemire. “We take great pride in knowing we help businesses and individuals in a variety of industries secure the protections that they deserve, which helps them confidently go forward in their business ventures.”

For further information about trademarks and Leyendecker & Lemire, LLC Law Firm, contact Peter Lemire directly at 303.768.0641 or peter@coloradoiplaw.com. Learn more about Leyendecker & Lemire, LLC at www.coloradoiplaw.com.

 

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By | June 2nd, 2015|FIRM NEWS|Comments Off on Law Firm Leyendecker & Lemire Announces Client Trademarks, Patent

It’s all in a name (or not)

Where would Amazon be if it had been called “An Online Bookstore”?

By Kurt Leyendecker

Driving into the office recently, I heard a commercial for a local small business broadcast over the radio.  A well-known local radio personality and pitchman explained the business was changing its name to one that better reflected the fact that the business offered its services for a flat fee.  I had heard this commercial probably a couple of dozen times over the previous months.  Clearly, this business was spending a lot of money on its radio campaign.

Presumably, the business sought to associate itself with the descriptive content in its new name so that potential clients and customers looking for this particular attribute would more easily find it.  I yelled at the radio, “No, bad idea!” No one heard me. Descriptive names and trademarks might boost exposure and even revenues in the short term, but in the long term, the business risks anonymity as others adopt similar names or, more likely, use a similar phrase to describe their similar services.

An example is in order, and I will use my firm as the example, rather than identify the shortsighted business.  “Leyendecker & Lemire” has been my Firm’s name since inception.  Our name, which also serves as our trademark, does not reveal anything about the services we provide.  Let’s say I convince my business partner, Pete, that we should change the name to “Colorado Flat Fee Patent and Trademark Legal Services.” To promote our new name and the fact that we provide flat fee legal services, we embark on an extensive and expensive marketing campaign.

Initially, the increased revenues in the first few months after the change almost equal the additional expense of the name change marketing campaign.  We project that these higher revenues will continue even as we wind down the campaign. Pete and I discuss hiring new associates to handle the increased workload. The future looks so bright, I buy some shades.

Seeing our success with the flat-fee pricing model, a couple of our competitors change their websites to proclaim that they offer flat fee intellectual property legal services as well. They also starting running Google ads with headlines like “Patent drafting for a flat fee” or “Flat Fee Trademark Application Filing.”  Potential clients who heard our radio ad and type our new name into Google to find our contact information are presented with several law firms all professing to offer similar flat fee services. Some of our competitors are even using headlines very similar to our name and confuse our potential clients.  We begin to lose business to our competitors.  The marketing campaign has been wildly successful, just not in driving clients to us but rather in promoting the availability of flat free intellectual property legal services generally.

We consider suing our competitors for trademark infringement. There is no question that their headlines and services descriptions are causing confusion with our name to our detriment.  However, as astute trademark attorneys, we realize we are likely to lose any lawsuit we file.  We know descriptive trademarks do not possess broad rights and we wonder if a court would recognize our name as a valid trademark.  We also know we cannot use trademark law to prevent competitors from using certain generic and necessary terms and phrases to advertise their services, such as “flat fee.”

In the end, we are forced to shutter the firm as the liabilities associated with the advertising contracts far exceeded our revenues. It isn’t all bad, however, as I finally get the opportunity to pursue my long held dream of chucking it all and becoming a dive instructor (albeit an aging one) on Key West.

What should we and the local small business have done? Companies should pick names that are more fanciful or arbitrary instead of descriptive when compared with the services offered by the business. The purpose of a marketing campaign is to associate the type of services you provide with the unique name so that when a potential customer or client seeks to find a flat fee provider, your trademark name pops into their heads, so that when the potential client performs a Google search to get your contact information, she types your name into the box and not a descriptor of what you do.  If a competitor tries to trade off of your unique name, you send it a cease and desist letter, and if that does not work, you sue it for trademark infringement and damages.

Still not sure?  Ponder these parting questions: Where would Amazon be today if it was named “An Online Bookstore” at its beginning?  Would Google have become the wildly successful company it is today if it began life as “A Search Engine”?

By | June 2nd, 2015|BLOGGING|Comments Off on It’s all in a name (or not)

Client Profile: Ti Training

The Problem

Around the world, law enforcement officers are put in dangerous situations every day. How they handle those situations and make split-second decisions can often be the difference between life and death. But no amount of studying from a book or even time at a gun range can adequately train the officers for what to expect in those dangerous scenarios. They need practice and training that’s as close to real life as possible.

The Solution

Recognizing the need for effective training, Greg Otte and six of his then-co-workers left another simulation provider to launch Golden-based Ti Training in 2006 and created The Training Lab. The Training Lab is a high-tech, industry-leading use-of-force simulator. The simulator allows users to practice using a range of force options, including TASERs, batons and commonly used firearms. The system is pre-loaded with more than 500 scenarios and gives users the ability to customize them to their own specifications. The system can be used by up to 18 participants and includes low-light simulation.

Recognizing that they had created a valuable product, the founders of Ti Training sought to trademark their company and product names. Ti Training has relied on the expertise of attorneys at Leyendecker & Lemire for the successful issue of seven trademarks with another pending and Otte describes the experience as “fantastic.”

L&L has also filed two patents that are pending for Ti Training. The intellectual property protection that L&L has helped Ti Training receive has helped the company sell its product to law enforcement agencies worldwide with confidence of knowing their intellectual property is secure.

Learn more about how Leyendecker & Lemire can help with your trademark and patent needs.

By | May 20th, 2015|CLIENT PROFILES|Comments Off on Client Profile: Ti Training