fi naming doug kim
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8/20/2019 FI Naming Doug Kim
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About Me
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A Few Companies
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Law Is About RiskThis is about the mitigation of risk. The Start Up will have advice
coming from all directions. Stick to your core business model (until
the pivot).
Trust, but Verify.
ITS ALL ABOUT RELATIONSHIPS.
The value of litigation is to avoid it.
Mitigation of Risk
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Top Legal Mistakes (Forbes)• Not Making Deal Clear With Founders (% equity, buy-sell, time commitment, terminatio
investments).
• Not complying with securities laws when issuing stock to angels/family/friends.
• Not stating the business a Corporation or a LLC.
•Not carefully considering intellectual property protection.
• Coming up with a name for the company that has trademark issues, domain name
problems, or other issues.
• Lack of employment documentation.
• Not taking into account important tax issues.
• Not coming up with a great standard form contract in favor of your company.
• Not having a good Terms of Use Agreement and Privacy Policy for your website.
• Not having the right legal counsel.
• Corporation, commercial, and securities law
• Contract law
• Employment law
• Intellectual property laws
• Real estate laws
• Tax laws
• Franchise laws
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What’s In A Name?
Trademark& Service
Mark
TradeName(d/b/a)
LegalName
Logo
DomainName
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What’s In A Name?
Service Mark and Logo
Bermuda Triangle
(Trade Name - Checks)
URL
scubagreenville.com
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What’s In A Name?
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What’s In A Name?
Service Mark
and Logo
URL
definitedefense.com
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USPTO Definition
• A TRADEMARK is generally a
word, phrase, symbol, or design, ora combination thereof, that
identifies and distinguishes the
source of the goods of one party
from those of others.
• A SERVICE MARK is the same asa trademark, except that it identifies
and distinguishes the source of a
service rather than goods.
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A Federal Registration
“Mark”
Shirts IC:025
Hotel Services IC:043
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Why?
• Helps the consumer identify with the particular product or service
• Representation of Quality, Reliability, etc.
• Emotional Response
• Assists in consistent Buying Habits
• Trademark Law To Protect Consumers
(not necessarily the Trademark Holder)
?
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Why?
Th C ti
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The Continuum
Fanciful
• Coined (made-up) words that have no relation to the goods being described (e.g., EXXON for petroproducts, PANAGERIES interior design).
Arbitrary
• Existing words that contribute no meaning to the goods being described (e.g., APPLE for computer,NOVA for gaming company).
Suggestive
• Words that suggest meaning or relation but that do not describe the goods themselves (e.g.,COPPERTONE for suntan lotion, PITA PIT restaurant services, LOCAL BREW bar services).
Descriptive
• Marks that describe either the goods or a characteristic of the goods. Often it is very difficult to enfo
trademark rights in a descriptive mark unless the mark has acquired a secondary meaning (e.g.,SHOELAND for a shoe store, EPIC BUFFET for restaurant services).
Generic
• Words that are the accepted and recognized description of a class of goods or services (e.g., compusoftware company, facial tissue, CHINA BUFFET restaurant services).
T d k / S i M k
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Trademark / Service Marks
Trademarks
MCDONALDS'
Certification Mark
Service Marks
T d k / S i M k WITH G d S i
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Trademark / Service Marks – WITH Goods or Service
RESTAURANT SERVICES (1948)
LEGAL SERVICES (1971)
BUILDING INSULATION (1958)
JETTMedical devices for use in cannulation or t
of traumatic bleeding, namely, tourniquets
Rights Come From USE!
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Rights Come From USE!
• IN USE: In an application based on use in commerce under §1(a) of the Trademark Act,
§1051(a), the applicant must use the mark in commerce on or in connection with all the
services listed in the application as of the application filing date. See 37 C.F.R. §2.34(a)(
• Generally Use means sales or providing of services.
• Use made merely to reserve a right in a mark will not meet this standard.
• The ordinary course of trade (on airplane a year vs. hundreds of cookies a day).
• INTENT TO USE: A party with a bona fide intention to use a specific mark in commerce i
specific goods or services may now file an application. However, before the mark will be
applicant must use the mark in commerce in connection with the specified goods or ser
specimens evidencing use and a verified allegation concerning that use.
The Process
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The Process
Search ApplicationProsecution
(OfficeAction)
Notice Of
Allowance
Statement
of Use
The Application Process
<5 Days <=2 Days <10 months (based upon
response time)
Optional
(Private)
Trademark
Office
Search
5-6 YearsEvery Ten Years
Thereafter
The Maintenance Process
<6 months to file
with possible 3.5
years extensions
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
N
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
N
Registration
®With Senior
Filing Date
(before youruse)
Common Law / State and Federal Protections
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Common Law / State and Federal Protections
N
Registration
®Without Senior
Filing Date
(your usepredates filing
date)
Existing
Area (a
Expans
Translations
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Translations
• "Nothing Sucks like an Electrolux.”
• Colgate introduces “Cue” (French porn magazine)
• GM Nova in Spanish “It Doesn’t Go”
• American Airlines “Vuela En Cuero” (Fly Naked)
• Africa:
And We Can’t Forget (1985) – brands matter
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And We Can t Forget (1985) brands matter
• 1980s - Coke Steadily losing market share to P
• Coke suspected that it was because Pepsi’s sw
(market studies confirmed).
• Introduction of NEW COKE spring 1986• Reaction was
– Negative and Hostile
– In the South another surrender to the Yankees
• 3 months later - Coca-Cola Classic
– Significant gain in sales (14% over same mo
• New Coke (now Coca-Cola II) discontinue
• Once a brand is established, it can be fra
Some Name Selection Practices
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• Determine Registrability with Search (www.uspto.gov)
– Stay Away from “close” names
• Head toward Arbitrary and not Generic
– “The Mobile App company”
• Name A Name that You Can Invest In
– Don’t bail, understanding your company and its message and pay
attention to the process and avoid names that are impractical for
various reasons (whitehouse.com, networx not networks)
• Pay attention to emotional response
– (Butcher Funeral Home, fTags, Doostang)
• Make Sure Your Employees can get behind the name
• Consider Registration (for many reasons)
We’re Here to Help
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We re Here to Help
Doug Kim heads the Intellectual Property Gro
and concentrates on counseling companies c
protection and enforcement of intellectual prope
Doug also assists in developing intellec(IP) protection strategies for new ventures
established international companies with
enhancing IP portfolios to increase compan
experience not only includes developing IP
strategies, but also management and protec
assisting in the development of IP protec
complement an IP portfolio. Doug combinesexperience and legal experience in patents
service marks, copyrights and trade secrets to a
a comprehensive and integrated IP protectio
build intellectual capital for his clients.
Douglas W. KimShareholder – Intellectual Property
864-271-4940 (office)
864-552-9370 (direct)dkim@mcnair.net
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Office Locations
Bluffton, SCThe Plaza at Belfair
Suite 200
4 Clarks Summit Drive
Bluffton, SC 29910
(843) 815-2171
Charleston, SC100 Calhoun Street
Suite 400
Charleston, SC 29401
(843) 723-7831
Columbia, SC1221 Main Street
Suite 1800
Columbia, SC 29201
(803) 799-9800
Greenville, SCPoinsett Plaza
Suite 700
104 South Main StreetGreenville, SC 29601
(864) 271-4940
Hilton Head Island, SCShelter Cove Executive Park
Suite 400
23-B Shelter Cove LaneHilton Head Island, SC 29928
(843) 235-4100
Myrtle Beach, SCFounders Centre
Suite 206
2411 Oak StreetMyrtle Beach, SC 29577
(843) 444-1107
Pawleys Island, SC11019 Ocean Highway
Pawleys Island, SC 29585
(843) 235-4100
Charlotte, NCTwo Wells Fargo Center
Suite 1615
301 South Tryon Street
Charlotte, NC 28282
(704) 347-1170
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