Gift Tax, Trusts & Estate Planning Attorney

by Kira S. Masteller
May 15, 2013

A living trust is not the only vehicle that individuals need to consider when completing an estate plan. There are several other types of trusts and tools, some of which are equally as important as a living trust, necessary to accomplish and complete planning goals.

A well rounded estate plan must also consider potential income tax problems, estate and generation skipping transfer tax consequences, as well as planning trusts for minor children or protecting a child’s inheritance from his or her spouse or creditors.

In the first of a six part series on Gift Tax and Estate Planning blogs, I'll explore how Living Trusts can help protect and secure you and your family members for the future.

What is a Living Trust?

A living trust is a way of holding title to your assets so they will not be subject to Court Conservatorship or Probate Proceedings during your life or upon your death.

The trust governs what happens to your assets if you are incapacitated during your lifetime, as well as providing for the distribution of your assets when you die. You can change your living trust while you are living and you keep control of the assets you place in the trust.

Estate for Federal Estate Tax purposes includes:

A living trust also includes estate tax planning provisions so that your family will not pay estate tax unnecessarily.

Estate taxes are presently at a 40% rate (of the value of all of your assets when you die). Your assets include your:

• Real Estate
• Personal Property
• Business Interests  (Partnerships, LLCs, Corporations, Joint Ventures)
• Money
• Promissory Notes
• Deeds of Trust
• Investment Accounts
• Retirement Plans (such as IRAs and 401(k) plans)
• Life Insurance
• Annuities

If the total value of these assets exceeds $5,250,000 (Federal Estate Tax Exemption in 2013), there will be an estate tax when you die on the amount in excess of the exemption at the rate of 40 percent.

While leaving your assets to your spouse avoids the estate tax at your death, it compounds the estate tax at his or her death. Therefore, it is not always the best strategy to leave all your assets directly to your spouse in joint tenancy or payable upon death accounts.

Instead, there are ways of allowing your spouse to have control over the assets, while still avoiding death taxes on those assets upon his or her death.  A living trust will generally provide estate tax planning provisions for a married couple by allocating the deceased spouse’s estate tax exemption to an Exemption Trust upon his or her death, so that his or her estate tax exemption will be fully utilized, thereby reducing the value of the surviving spouse’s estate upon his or her death.

Though a living trust is a very important and basic estate and tax planning tool, it is not the only one.  My next blog in this series will discuss Life Insurance, and how you can use that vehicle in conjunction with an irrevocable trust.

Kira S. Masteller is a Gift Tax & Estate Planning Attorney in our Trusts and Estate Planning Practice Group. Contact her for more information via email: kmasteller@lewitthackman.com.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

San Fernando Valley Business Litigation Lawyer

by Nicholas Kanter
May 13, 2013

On America's Got Talent, Sharon Osbourne’s signature gesture to the audience was a heart symbol shaped by her hands. Now, a counterpart from the UK is attempting to register a similar hand symbol as a trademark.

Although not well-known in the US, Gareth Bale is one of the top soccer players in the English Premier League with the team Tottenham Hotspur. (One of the top players for the US Soccer team, Clint Dempsey, also plays for Tottenham).

©Andy HopperThis year Bale earned the Professional Footballers’ Association Player of the Year award due in part to scoring 20 goals (so far) in the 2012 – 2013 season. After scoring each goal, Bale celebrates by making a heart-shaped hand gesture.

Seeking to profit from the gesture, Bale applied to register the symbol for precious metals, jewelry, leather goods, bags, clothing, footwear and other goods in the UK. A drawing of the applied-for symbol is shown below (“11” is Bale’s number).

Bale is certainly not alone in making a unique gesture/celebration after scoring for his team. In the US, for example, Aaron Rogers of the Green Bay Packers celebrates touchdowns by making a motion as if he is putting an invisible championship belt on around his waist.

However, Bale’s attempt to secure rights in his gesture through a trademark registration will likely cause other athletes and media celebrities who use hand gestures when introduced on television shows (e.g., Blake Shelton with his finger pointing on The Voice) to do the same.

Finally, because trademark rights are acquired based on using the mark on or with a particular good and/or service as a source identifier – athletes and celebrities looking to trademark particular hand gestures will first have to use the image created by the gesture to identify the source of a particular good, e.g., jewelry, clothing etc., as Bale intends to do with precious metals, footwear and bags – in order to exploit and acquire protectable rights in the symbol. 

Thus, simply making a hand gesture after scoring a goal or when introduced on a television show alone will not likely create any protectable trademark rights.

Nicholas Kanter is a Trademark Litigation Attorney at our Firm. Contact him via email: nkanter@lewitthackman.com.  

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Keith Todd Zimmet, Managing Shareholder

by Lewitt Hackman
May 9, 2013

Recognizing 15 years of continued volunteer service, Viewpoint School in Calabasas, California gave special recognition to our Firm's Managing Shareholder, Keith T. Zimmet, and his wife Robyn, on Saturday, May 4, 2013.

Only a few individuals have received the Lifetime Achievement Award in the School's 50 year history, which:

"Honors and recognizes an individual who has performed extraordinary service for Viewpoint School and its community over an extended period of time."

Held at the Four Seasons Hotel in Westlake Village, the event was attended by nearly 500 people, with headliner comedian Alonzo Bodden providing the entertainment. Jeff Sutphen of Nickelodeon was Master of Ceremonies.

The Mayor of Calabasas, Fred Gaines, presented Keith and Robyn with a Commendation from the City.

Keith T. Zimmet is the Managing Shareholder of our Firm, Chair of the Commercial Finance Practice Group, and member of both the Real Estate and Corporate Practice Groups. Contact him via email: kzimmet@lewitthackman.com.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

San Fernando Valley Business Attorneyby Robert A. Hull
May 7, 2013

One of the most sweeping changes to the California law governing limited liability companies is set to go into effect January 1, 2014, when California’s Revised Uniform Limited Liability Company Act (“RULLCA”) will displace the provisions of the Beverly-Killea Limited Liability Company Act (the “Beverly Act”), which presently governs California LLCs. RULLCA is based on revisions to the Uniform Limited Liability Company Act (the “Revised Uniform Act”), which was adopted by the National Conference of Commissions on Uniform State Laws. RULLCA contains some modifications to the Revised Uniform Act to include some existing California law.

RULLCA applies to LLCs (both domestic and registered foreign LLCs) in California starting January 1, 2014. It applies to all actions of members/managers commencing on that date, though the Beverly Act still applies to such actions prior to that date.

Presently-existing LLCs will not have to file any additional documents in order to comply with RULLCA. RULLCA, in its present form, does not address Series LLCs.

LLC members and managers should have an understanding of RULLCA’s impact.

Some notable provisions of RULLCA:

• The Operating Agreement will prevail over provisions of the Articles of Organization as to members, dissociated members, transferees and managers (though the Articles prevail as to other persons to the extent those persons reasonably rely on the Articles).


• RULLCA’s provisions regarding non-liquidating distributions generally conform to the provisions of the Uniform Limited Partnership Act of 2008 and largely follow the Beverly Act, with certain exceptions. For example, if the Operating Agreement does not otherwise provide, such distributions under RULLCA are made based on the value of the LLC contributions of the LLC members while the Beverly Act looks to the members’ capital contributions and the allocation of profits.


•  New language is added concerning which provisions can be overridden by the Operating Agreement, and which provisions cannot be. Provisions an Operating Agreement cannot vary are set forth in Sections 17701.10(c) and (d) of RULLCA.


• RULLCA limits how Operating Agreements may change the fiduciary duties of members or managers. In addition, RULLCA establishes limits for LLCs regarding the indemnification of members and managers from liability for money damages arising from breaches of certain duties.


• Most of the Beverly Act’s liability protection from the claims of third parties from LLC activities remains intact.


• RULLCA provides specific provisions on notices, quorums, actions and consents, in the event these are not addressed by the Operating Agreement.


• Expect more explicitly defined consequences to an LLC member who chooses to dissociate from the LLC.

All members and managers of LLCs will want to consult counsel to determine whether amendment of their present Operating Agreement is advisable to avoid unexpected or unwanted consequences.

Robert A. Hull is a corporate attorney, and trusts and estate lawyer at our firm. Contact him via email: rhull@lewitthackman.com, for more information regarding RULLCA.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

by Nicole Kamm
May 1, 2013

Google+

In the first holding of its kind, an Oklahoma court ruled a former employee’s Facebook posts did not violate non-solicitation agreement with prior employer.

Pre-Paid Legal Services, Inc. (PPLSI) recently received a partial denial from a federal court in response to PPLSI's request for a preliminary injunction. PPLSI alleged a former sales manager’s posts to Facebook and Twitter put the employee in breach of his non-solicitation agreement.

What did the employee do, exactly, to prompt PPLSI to seek an injunction?

• As a new employee at PPLSI, the employee signed an agreement that prohibited him from soliciting other PPLSI employees for two years after his departure or termination from the company.


• While working for PPLSI, he was promoted to regional sales manager. The employee created incentive programs to reward & encourage members of his sales team – he also created Facebook pages specific to these programs.


• When he took a job with another company, the employee used those social media pages to announce his transition.


• The sales manager also posted messages on his personal social media pages regarding his new employer.


• The employee further requested PPLSI's employees to follow him on Twitter, after he made the transition to his new company.

PPLSI claimed the former employee's posts to Facebook and Twitter put him in breach of the non-solicitation agreement. The company sought the preliminary injunction to keep the sales manager from “soliciting” current PPLSI employees using those social media sites.

The court found the employee’s Tweets and Facebook posts did not constitute direct solicitation of PPLSI employees.  Rather, they were merely general posts about job opportunities not specifically targeted to the employee’s former coworkers.  

The court looked to a case involving solicitation via Facebook, where the employee’s new employer posted an announcement about the employee’s new position and the employee then “Friended” several of his former employer’s clients on Facebook.  In that case, the former employer’s injunction request was also denied absent evidence the posts resulted in any actual departures from the former employer to the new employer.

Be advised: California employers should note the law on employee non-solicitation agreements remains unsettled.  If you have questions about such agreements or how this case may impact you, please let us know.

Nicole Kamm is an employment defense attorney dedicated to protecting employers from employee claims. Contact her via email: nkamm@lewitthackman.com for more information about employment agreements and protecting your company's assets.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

San Fernando Valley Business Litigation

A political organization recently learned the hard way that possession, including possession of intellectual property, is nine-tenths of the law.

In January, after helping President Obama win reelection, Obama for America announced it was switching focus to a grass-roots organization and changing its name to Organizing for Action. The announcement was made before OFA registered the domain, www.organizingforaction.net.

On the day of the announcement, an individual named Derek Bovard registered www.organizingforaction.net.  Initially, Mr. Bovard reportedly set the domain to redirect to the National Rifle Association’s website. Currently, the OFA website redirects to Dr. Benjamin Carson’s speech at the National Prayer Breakfast.

OFA filed a complaint with the National Arbitration Forum [the complaint was filed in accordance with Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain Name Dispute Resolution Policy] seeking an order transferring the domain name from Mr. Bovard to OFA.  In support of its complaint, OFA alleged:

1. It owned trademark rights in the name Organizing for Action;


2. Mr. Bovard’s www.organizingforaction.net is confusingly similar to OFA’s trademark;


3. Mr. Bovard has no legitimate right or interest in the trademark; and


4. Mr. Bovard registered the domain name in bad faith.

The arbitration panel found in favor of Mr. Bovard, concluding that OFA did not prove that it established trademark rights in its name prior to Mr. Bovard’s registration of the domain.

This makes sense as trademark rights are based on use, and OFA apparently did not use the Organizing for Action name before Mr. Bovard’s domain was registered. In fact, Mr. Bovard argued that he registered the domain at 5:46 a.m. on January 18, 2013, approximately nine hours before OFA legally become a group. Accordingly, the panel denied OFA’s request to transfer the domain name.

What should OFA have done differently? Clearly, before announcing the name change, OFA should have registered the domain. Unfortunately, OFA learned that conceptualizing a name is not the same as securing property rights in the name.

Nicholas Kanter is a Shareholder in our Business Litigation Practice Group. You may reach him via email: nkanter@lewitthackman.com. 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Franchise and Business Litigation Attorney

by David Gurnick
April 2, 2013

By year’s end more than 750,000 franchised outlets will be operating in the United States, employing more than 8.2 million people, generating over $800 billion in sales and comprising 3.4 percent of United States Gross Domestic Product, according to the International Franchise Association.

Why is franchising such a huge part of the American economy?  Here are some of the reasons:

1. Confidence: People want to own a business, but fear the risk of starting their own business. They feel more confidence in starting a business that is part of an established, successful system.

2. Brand Recognition: Consumers and the public feel more confident buying goods and services from a recognized brand. Franchising creates this brand recognition.

3. Synergy:  A system of franchisor and franchisees can research and develop better products and services, and better operating systems than an equal number of unaffiliated individual businesses.

4. Market Power: Participants in franchise systems can negotiate better supply arrangements, better leases, and in other respects, keep their costs down. This lets them lower prices to the public.

5. Better Advertising: Likewise, a system of franchisor and franchisees can market and advertise more effectively than an equal number of unaffiliated individual businesses.

6. Competition: New franchise concepts and brands, and franchises providing new categories of goods and services are created all the time. Others seek to duplicate and improve on pre-existing successful concepts, offering the public something a little different, a little better. This form of competition results in more variety and options for the public, and more franchised outlets offering goods and services.

7. Seemingly Limitless Growth Potential: A feature of franchising is that it permits seemingly limitless growth. In the large United States economy, and economies of the rest of the world, there is vast room for the establishment of ever more franchised outlets, both within a single brand, and including any number of competitive brands.

8. Multi-brand Channels: Many successful franchisors create or acquire multiple brands.  Think of Yum with its KFC, Pizza Hut and Taco Bell brands. Companies that get a formula right for their franchise program can apply their success to multiple brands and grow them all.            

9. Local Variation: Independent ownership allows businesses with nationwide reach to adjust to local standards. A franchisee in a small town in one part of the country, and another in a big city, can each adjust to the culture and customs of their own geography.

10. Motivation and Hard Work:  Franchisors and franchisees are entrepreneurs, motivated to work hard, deliver quality products and services and generate profit. Each franchise outlet is independently owned and operated. Each owner has an individual profit motive. People in franchising work hard to make their businesses succeed.

David Gurnick is a Certified Specialist in Franchising and Distribution Law, (State Bar of California Board of Legal Specialization). Contact him via email: dgurnick@lewitthackman.com.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

by Sue M. Bendavid
March 22, 2013

Google+

Interns. Remember the good old days when as an employer, you could expect them to arrive punctually, help out in the day-to-day operations of your business, and be asked for little in return but job training (which used to be considered invaluable for those trying to break into the biz) and a glowing reference?

Those days may be long gone, if trends in employment litigation are any indication – and these trends aren't just in individual claims. Class actions are being brought against several very high profile employers.

In February 2012, a former Harper's Bazaar intern filed suit against the Hearst Corporation, claiming 40-55 hour work weeks without compensation. A New York Court later granted class certification – meaning approximately 3,000 former interns were joined in the suit against the media mogul.

Last summer, two interns working on the film, Black Swan, expanded their wage and hour claim to include all unpaid interns working for Fox Entertainment Group over the last two years. In December, talk show host Charlie Rose agreed to a six figure settlement for 190 unpaid interns who worked for The Charlie Rose Show between 2006 and 2012.

Also in December, a former assistant football coach initiated a class action claim against Hamilton College, alleging the school misclassified him and other plaintiffs as interns, paid them sums that didn't meet minimum wage, failed to pay overtime, and failed to pay split shift pay.

The above suits were all filed in New York, but given this increase in litigation initiated by interns, it may be time to discuss what an internship is in the legal sense, and how California employers can reduce the risk of claims.

How to Avoid Wage and Hour Claims by Unpaid Interns

What is an internship? Ideally, it's an educational experience, particularly if it's an unpaid internship. The United States Department of Labor's Wage and Hour Division (WHD) has very specific guidelines regarding hiring interns and offering internships on an unpaid basis.

Whether you're running a for-profit business or a not-for-profit organization and are thinking about getting an intern to help, you should consider what you're offering vs. what you'll be getting in return. The WHD provides a six point test to help employers decide if they need to compensate interns or not.

 Ask yourself these questions:

1. Will you provide training similar to that provided in an educational environment? You should provide a learning environment, not a work environment.


2. Is the internship you're offering a benefit to the intern? Will the student gain valuable "real job" experience, or will they be doing the "busy work" no one else wants to do?


3. Will the intern displace a regular employee? If yes, you should compensate the intern. Otherwise, make sure the student is working under close supervision of your staff.


4. Will you as an employer, be gaining any advantages from bringing in an intern? If yes, you may need to pay your intern. If your work is actually impeded by the presence of the intern, chances are better that you'll be providing more of the educational environment the WHD recommends.


5. Will the student be entitled to a job at the end of the internship? If your answer is yes, that actually encourages the intern to work, rather than learn, which could lead to potential wage and hour claims.


6. Does the intern understand that s/he is not entitled to wages? You should make clear up front, whether or not you will be compensating the intern for her/his time.

The six elements satisfy federal criteria. Not long ago, The California Division of Labor Standards Enforcement, or DLSE (commonly known as the Labor Board), adopted these six criteria as well (and disavowed certain other factors previously used by the DLSE).

This was according to a DLSE opinion letter handed down April 7, 2010:

The DLSE has consistently applied federal interpretations of statutes, regulations, and case law under the FLSA [Fair Labor Standards Act] where there is no inconsistency with State laws…Since DOL's [Department of Labor's] 6-point formulation is derived from the early U.S. Supreme Court's opinion in [the] Portland Terminal case and has been applied (with varying degrees of deference) by the federal appellate courts, it is reasonable and appropriate for the DLSE to look to the factors used by the DOL in determining the exemption for purposes of coverage of State minimum wage coverage for trainees/interns in the absence of a State statute or regulation on the matter.

It's important for employers to correctly classify their employees, independent contractors and interns. Misclassification can leave you open to claims for unpaid wages – including a failure to pay minimum wage and unpaid overtime, waiting time penalties (for not paying wages on a timely basis), and other penalties and tax claims. .

When all is said and done, remember that the person who should most benefit from an unpaid internship is the student. That means you are offering real educational opportunities, and not just taking advantage of getting some extra tasks done, or of lightening the work loads of your regular employees.

Sue M. Bendavid is a Wage and Hour Attorney who protects and defends employers from employee claims. For more information about wage and hour issues and avoiding employment litigation risks, contact Ms. Bendavid via email: sbendavid@lewitthackman.com.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

by Sue M. Bendavid & Nicole Kamm
March 14, 2013

Editor's Note: A new I-9 manual has been released, which provides information for employers regarding the more obscure procedures involved in completing the updated Employment Eligibility Verification form. Click: I-9 Manual for the pdf version, available on the U.S. Citizenship and Immigration Service website.

The U.S. Citizenship and Immigration Services (USCIS) published a revised Employment Eligibility Verification Form I-9 for use. All employers are required to complete a Form I-9 for each employee hired in the United States.

Improvements to Form I-9 include new fields, reformatting to reduce errors, and clearer instructions to both employees and employers.

Effective 03/08/13:

• Employers should begin using the newly revised Form I-9 (Rev. 03/08/13)N for all new hires and reverifications. 


• Employers may continue to use previously accepted revisions (Rev.02/02/09)N and (Rev. 08/07/09) Y until May 7, 2013. 


• After May 7, 2013, employers must only use Form I-9 (Rev. 03/08/13)N.

English and Spanish versions of the new I-9 form are available on the USCIS website. However, the Spanish version is only for reference; Spanish-speaking employees must still complete the English version of the form.

As a reminder, employers generally must inspect original documents submitted by the employee within three days of hire. It is recommended that copies of the documents and the completed Form I-9 be filed together in a location separate from the employee's personnel file. The I-9 should be retained for three years after termination.

Sue M. Bendavid and Nicole Kamm of our Employment Practice Group represent employers in matters of compliance and employee claims. Contact them via email: sbendavid@lewitthackman.com, or nkamm@lewitthackman.com, for more information.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

by Nicholas Kanter & Tal Grinblat
March 13, 2013

A trademark is a word, phrase, design, logo, sound or color used to identify the source of a party’s goods or services. For many companies, their trademark can be their most valuable asset because of the association consumers have with the products or services bearing the particular mark.

For example, when a person sees a computer bearing Apple’s iconic logo, that person associates the image with a company known for manufacturing high quality computers, phones and tablets with certain user-friendly functions and qualities for which Apple is known.  This association is the result of Apple’s extensive advertising, promotion and sales of its Apple-branded products.

Before adopting a trademark and developing goodwill in the mark, it is important to research whether there are any significant obstacles that may prevent using the mark in the future. If after conducting the search you determine to move forward, it is equally important to protect your mark to prevent others from using or adopting your mark without permission.

How to Develop and Protect Your Trademark

1. Perform a Trademark Search:

In the U.S., trademark rights are acquired based on use. With certain exceptions, the first person to adopt and use a particular trademark generally obtains superior rights to use that mark over all other junior users.

Before adopting a mark, it is a good idea to order a comprehensive trademark search report. A search report will tell you about others that may already be using your desired trademark (or similar trademark). Knowing who else may be using your desired mark can help you assess the risks of moving forward with the mark, or prompt you to come up with another trademark.

2. Register Your Trademark:

If the trademark search report does not reveal any significant obstacles to the use of your desired trademark, you should apply to register your mark with the United States Patent and Trademark Office (USPTO). Although trademark rights are based on use, a federal registration on the Principal Register of the USPTO has many significant benefits, including a legal presumption that you own the registered mark and your exclusive right to use the registered mark for the goods/services for which your mark is registered nationwide.

If you sell or plan to sell products or services under your trademark outside the U.S., you can protect your mark by registering it with the appropriate trademark agency in each applicable country. This can be done by filing a trademark application in each desired country, or by filing a single application via the Madrid Protocol, and then seeking to extend the protection granted to the other countries selected. 

3. Use and Promote Your Trademark:

The primary purpose of a trademark is to identify the source of the goods/services you’re selling. Therefore, it is important to use and promote your trademark so that the public associates the mark with you, and the goods/services you sell.

Non-use can lead to the cancellation of your registration.  Moreover, the strength of your mark, and your right to exclude others from using your mark, will increase with greater public recognition.

4. Make All Required and Optional Post Registration Filings:

To maintain the trademark registration, you must make certain required filings. In the U.S., the owner of a registration must file a “Declaration of Continued Use” between the 5^th and 6^th year of the registration. At the same time, the registrant can file a “Declaration of Incontestability” to make the trademark registration “Incontestable.”  In addition, a trademark registration must be renewed every 10 years by filing a renewal application between the 9^th and 10^th years of registration.  

5. Police and Enforce Your Rights in Your Trademark:

As the owner of a trademark, you have the obligation to police your mark to prevent unauthorized third parties from using it. Failure to do so can lead to losing the exclusive right to use your mark.

If someone else is using your mark without authorization, you can send a “cease and desist” demanding that the person cease using your mark. If the unauthorized user applied to register your mark, you can oppose the registration of the mark by filing an “Opposition” with the Trademark Trial and Appeal Board. Finally, you can file a lawsuit for trademark infringement if the unauthorized user refuses to stop using your mark.

Nicholas Kanter is a Business Litigation Attorney experienced in intellectual property enforcement and defense litigation. Contact him via email: nkanter@lewitthackman.com for more information regarding intellectual property enforcement.

Tal Grinblat is a Trademark Attorney and Certified Specialist in Franchise and Distribution Law (California State Bar Board of Legal Specialization). Email: tgrinblat@lewitthackman.com for further details on establishing trademarks and franchises, and protecting trade secrets.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.