Protecting one’s trademarks is an area that is often overlooked by business owners. This oversight can have significant financial consequences to the business. I have seen numerous instances where a company receives a cease and desist from a trademark owner for failing to conduct a thorough search before choosing a name or logo for their business. In addition, I have seen other companies move to expand into a new area, only to find a company already present with the same name for similar services. Much of this could be avoided by considering trademark protection at the outset and being knowledgeable with regard to the following items.

• What is a trademark? It is a word, phrase, symbol or design that identifies and distinguishes the source of the goods or services of one party from those of others.

• Must all marks be registered? No, it is not required. However, federal registration provides certain advantages to the trademark owner, namely notice of claim of ownership to others, the exclusive right to use the mark in conjunction with the goods or services or the legal presumption of ownership nationwide.

• What can happen if I decide to wait to register my mark? If someone else files for federal registration before you, then you may be limited to only the geographic area in which you currently sell your product or service, which may severely limit future growth under that name.

• When should I have a trademark attorney conduct a search of my name? Ideally, this should occur prior to the commencement of operations under that name. This is true even if you do not plan to register the name because you want to make sure that there is not another trademark out there for similar goods or services.

I oftentimes have clients that have been in business for more than five years before they consider protecting their name. Sometimes they are able to move forward with a trademark application at that point. However, other times they have lost the ability to file for federal registration because someone else beat them to the punch.

• When can I use the TM symbol or the ® symbol? The TM may be used next to your trademark to indicate you are claiming rights to the mark. This may be used without filing for trademark registration. The ®, on the other hand, may only be used when a Certificate of Registration has been issued by the U.S. Patent and Trademark Office (“USPTO”) for the trademark.

• Are there terms that cannot be protected under trademark law? Certainly, there are various marks that the USPTO will not register. These include, but are not limited to, generic marks, merely descriptive marks, immoral marks, marks that are merely a surname and marks that are confusingly similar to existing marks, to name a few.

• Should I file for protection for my name, my name in conjunction with my logo, or both? In a perfect world, I would say to file both. However, not all small business owners can afford two trademark applications out of the gate. If a company can only afford one, most trademark practitioners recommend that the word mark be filed for first and the logo at a later date. The word mark does offer a wider breadth of protection. If you file for the logo and not for the word mark, then a problem can arise later if you decide to change the logo.

Intellectual property is an intangible asset, which may be why so many business owners fail to recognize its value and take steps to protect it at the correct time in the life cycle of their business. Understanding some of the questions discussed above and speaking with an intellectual property attorney will go a long way toward avoiding costly problems down the road.

Many employers assume -often wrongly-that the intellectual property employees create for their companies is automatically owned by the employer. In fact, determining the owner of the intellectual property is a fact-driven analysis that will often depend upon the employer’s level of involvement in the creation of the intellectual property. Because of this, it is important for employers to take measures to ensure that it is clear who owns the intellectual property created for the company.

With regard to an employee that creates a work as part of his or her job, it is the employer who is the owner of the work under the work made for hire doctrine. Employers should be aware of the exceptions to this doctrine, however, because there are employee creations and inventions that are not the property of the employer. For example, inventions that are not created in the scope of employment are employee property. In order to fall out of the scope of employment, the invention must be created during the employee’s personal time and without use of the employer’s resources. In addition, prior inventions of the employee are also excluded from the employer’s portfolio, and are discussed more below. If the employer wishes to obtain rights to a work not made for hire, the parties can agree to sign an assignment agreement whereby the employee agrees to assign certain works to the employer.

The best practice from the employer’s perspective is to require employees to sign a written agreement upon hiring them. The employers may also have current employees sign, but courts have held they are not required to do so unless further consideration is given in the form of a raise or promotion. This agreement should include a provision whereby the employee states that all intellectual property shall be the property of the company, minus certain exceptions such as prior inventions. Prior inventions of the employee should be listed within this agreement- perhaps in an exhibit- (i) to avoid future disputes about what constitutes a prior invention of the employee, and (ii) to put the company on notice of prior inventions created for a prior employer so that the company is better able to avoid potential infringement situations.

Another method of avoiding disputes and preserving the employer’s intellectual property is to simply educate the employees about intellectual property in general and, more specifically, what is required of the employees with regard to the company’s intellectual property portfolio. This may be done during employee training and by adopting internal policies to serve as a guideline for the employees. The employer should notify the employees that if they are uncertain about something, then they should ask the employer first before disclosing information that might potentially be confidential. Let the employees know that ignorance is not an excuse.

The value of intellectual property assets continue to rise, and with this increase, it is essential that employers clearly indicate who owns particular intellectual property assets and what employee obligations are with respect to those assets. Utilizing some or all of the practices described above will go a long way toward decreasing disputes with employees claiming rights to the company intellectual property as their own, as well as hopefully reducing the instances of misappropriation and infringement by employees.

Come listen to CEO Jeff Gale discuss how he started TicketBiscuit in the summer of 2001 and grew it to a serious competitor in the world-wide ticketing industry. TicketBiscuit has introduced innovations such as client-controlled convenience fees, full integration with a client’s website, and branded call centers. This promises to be an interesting evening where you’ll get to know one of Birmingham’s rising companies!

When: October 13th, 6-8p

Where: TicketBiscuit HQ

RSVP: http://beticketbiscuit.eventbrite.com/

Birmingham Entrepreneur invites you to attend the “Quickbooks  2012 Preview Workshop.”  Get a sneak peek of the newest version of Quickbooks and learn how to utilize the software for your business’s accounting needs.  Josh Bowen, of Abacus Information Technology Solutions will provide an in-depth tutorial and answer any questions you may have about how Quickbooks can help you run your business.

When:  October 5th, 2011 11:30 AM -1:00  PM

Where:  Innovation Depot Training Room

Cost:   $15.00

Registration Required:  http://bequickbooks.eventbrite.com/

Birmingham Entrepreneur proudly introducesGood People Brewing Company presented byRenesant Bank. Have you ever dreamed of quitting your day job and making beer for a living? Well, that’s exactly what the guys at Good People have done. Come hear them talk about how they created an amazing local microbrew and try samples of Good People beer. Appetizers and refreshments will be provided and Good People will have beer for sale!

When: August 11th, 2011 6p-8p

Where: Good People Brewing

Sponsored by: Renesant Bank

RSVP HERE

So that idea is still nagging you? Feeling ready to start a business? Before you risk your time, security & savings, there are some things to do first.

Either many entrepreneurs are cocky, or cocky people become entrepreneurs. Sure, a degree of self-assurance is required to be successful. Where things go awry is when you become so caught up in an idea, just knowing it’s going to work, that you don’t stop to find or seek out some social proof. An untested idea is a shot in the dark. But knowing that people really need and will use your product is incredibly validating & the first step to a successful venture.

I strongly encourage everyone that has an idea to pursue it. Jump right in & see what happens. What’s important is that pursuing it the right way can protect you from spending your savings or cold-quitting your job before you’ve validated the idea. What you think you want to do may not be what customers need. By trying it out, getting feedback & applying it, you may end up pivoting and morphing into something else (whether related or unrelated), and that “something else” could be wildly profitable.

To illustrate, a recent New York Times article, “The Dark Side of Opening a Store“, shows the downfall of blind assurance, albeit from a brick-and-mortar perspective. Here is an excerpt:

“In 2004, Ms. Schmidt moved from New York to Colorado Springs, Colo., to join her future husband. She became fascinated with local history and culture, but she was disappointed when she had trouble finding cowboy boots in colors other than brown and black. She started to contemplate opening a store where she would sell a greater variety of boots along with other high-end women’s western wear…

During the 2006 holiday season, she introduced Girl of the Golden West as a pushcart in a Colorado Springs mall. Sales were dismal, but Ms. Schmidt attributed them to a mismatch between her high-end merchandise and the lower-income customers the mall served. So, she moved to temporary space in a more upscale mall. And when permanent space became available she seized it, paying monthly rent of about $2,500 plus a percentage of the store’s still anemic sales. Then she began approaching banks and learned the hard truth that they generally don’t lend to start-ups. Nor was the Small Business Administration, which guarantees loans made by banks, the source of financing she had imagined. She even sought venture capital.

Despite these setbacks, Ms. Schmidt, who describes herself as an optimist, was undeterred. She had $500,000 from the sale of her Manhattan apartment and decided to sink all of it into the store. About $300,000 of that went toward renovating the new space at the mall. Ms. Schmidt, who had five employees at most times, still wasn’t covering her rent…

In a final effort to breathe life into the business, Ms. Schmidt left the mall, relocating in a pedestrian-friendly strip in Manitou Springs, a historic mountain community. She no longer had to hand over a percentage of sales to a mall or staff the store during off hours. But it didn’t help enough, and she finally decided to close last summer.

She lost her entire investment, owes back taxes on the store and has filed for bankruptcy. “My credit rating is ruined, and if I weren’t married, I’d be homeless,” she said.”

How can you avoid this? Test your idea before going “all-in”.

If you’re a brick-and-mortar venture:

Survey your friends and friends of friends. Study the competition, both locally & regionally. Distribute some flyers with your phone # or email address on them. Track how many calls or emails you get & what people want to know. Most importantly, think of ways to minimize your initial investment. For example, if you want to start a furniture store, don’t sign a three-year lease in Birmingham’s SoHo or another top-dollar commercial district right away. Rent a booth at a local antique marketplace or attend regional shows first. Start building a loyal customer base – people who love what you do & are excited about it. Leverage these people to help you spread the word. Before long, if you get a real sense of other people’s excitement and passion – these are your future customers.

If you’re a tech startup:

Don’t sink $20,000+ into a website or mobile application before you’ve done your homework. In fact, you should be able to validate your idea, test market trends, and get some initial traction for as little as $300 + with some basic technical know-how. First, choose & buy your domain. Then, create a landing page. Reveal what your site or product does (or will do), that it’s in private beta testing, and offer an email signup field. Use WordPress if you’re not a savvy coder. Next, add Google analytics then sign up for a Google AdWords account. Create a handful of ads, choose 5-10 applicable keywords per ad, then monitor impressions & click conversions over the next few weeks. Spread the word on Twitter & Facebook to your own friends. Track site hits & email signups, then start a conversation with your subscribers. Don’t just send out “newsletters” – survey their opinions, such as which features they want, how they’d use it, if they’ll be willing to pay, etc. This should be your starting point & will either validate or invalidate your idea.

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This post was contributed by Jonathan Robinson, a young entrepreneur living and working in Birmingham. Jonathan’s companies include FreeTextbooks.com (founded 2009) and theClubhouseLeader.com (founded 2010).

When: April 26th 5:30pm-7:30p

Where: Ted’s Restaurant

328 12th Street South
Birmingham, AL 35233

RSVP!

How do you turn your passion into a business?

What tools do you use to build your audience?

How do you create a memorable brand?

Ask Alison Lewis of Ingredients, Inc. Alison has built a successful business by strategic branding and creating her own “media” that has gained a national following.

Learn what was the right mix for her in building her online and offline persona.

]]> http://www.birminghamentrepreneur.com/featured/be-womens-series-april-event-recipe-for-success/feed/ 0 http://www.birminghamentrepreneur.com/blog/business-development/so-you-want-to-start-a-business/ http://www.birminghamentrepreneur.com/blog/business-development/so-you-want-to-start-a-business/#comments Thu, 14 Apr 2011 17:24:08 +0000 jrobinson http://www.birminghamentrepreneur.com/?p=375

Everyone has ideas. Ideas are sexy, fun to talk about and fun to dream about. It’s pretty intoxicating to consider that this little idea you have could change your market, provide a much-needed service, or secure a big paycheck. But, executing and building a company around your idea is a whole new animal.

When I started my first company three years ago, I was admittedly a little lost. I’d had no business classes in college and hadn’t yet had a post-graduation job. But, I knew my idea would deliver a valuable service, so I started down this road. There have been times when I couldn’t wait to move forward and keep building, but other times when I’ve just wanted to quit. Maybe for an hour or maybe for a day, but when the workdays drag on and the planning keeps you up at night, you want some relief. That relief comes in a big sale, a new contract, or a growing customer base. There are incredible highs and deep lows, but focusing and striving for those “winning” moments can push you right through.

That isn’t meant to discourage anyone from entrepreneurship. Sure, there are concerns & difficulties, but creating a product or service that people grow to rely on is one of the most rewarding feelings I’ve experienced. Customer by customer and dollar by dollar, building a business from nothing is something few care to take on, but those that succeed have complete control over not only their bottom line, but the kind of life they choose to pursue. That continues to be one of my biggest motivators and is the driving force behind many aspiring entrepreneurs.

I want to be very clear – it isn’t easy. Too many people get fed up with their current job and see the appeal in “working for yourself”, “setting your own hours”, or “having more free time”. There’s certainly a misconception of self-employment that goes something like: sleep in, work in my pajamas, do what I want (when I want), and somehow along the way, build a profitable business. If all you want to do is sell baseball cards on eBay, that might actually work.

Once you have an idea and start to move forward, you need all the self-confidence you can muster. You’ve got to be so confident (almost arrogantly so) that what you’re pursuing creates value for potential customers and that you can deliver.

If you’ve got an idea, want to move forward, and aren’t sure where to start, read Michael Gerber’s The E-Myth Revisited: Why Most Small Businesses Don’t Work and What to Do About It. Then, keep reading. Listen to podcasts. Subscribe to Inc. magazine. Find a mentor (or two). Follow the right people on Twitter. Talk about your idea to everyone that will listen. Get critical feedback from people you trust. Deconstruct your idea. Consider how you’ll build a business around it. Think through every aspect — creating a website, opening a store, keeping the books, finding customers, keeping customers, building value, studying the competition, developing a marketing plan… The list goes on forever.

I am not an expert on entrepreneurship or telling you how to cash in on your big idea. What I do have is first-hand experience of taking an idea and building a business around it. Sure, it’s a non-stop struggle to create something worthwhile, sustainable, and profitable. Entrepreneurship is a long, hard pursuit that affects every aspect and waking moment of your life. If you can (and want to) take that head-on, then let’s go. It’s an extraordinary ride.

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This post was contributed by Jonathan Robinson, a young entrepreneur living and working in Birmingham. Jonathan’s companies include FreeTextbooks.com (founded 2009) and theClubhouseLeader.com (founded 2010).

Hear from some of Birmingham’s leading women entrepreneurs on emerging technology trends and what roles they think women will play in creating more innovative tech start-ups. We’re very excited about this discussion.

Topic that will covered:
-So You Have An Idea, Now What?
-Bringing Your Idea to Market
-Emerging Technology Trends for 2011
-Do You Need Investors and How to Find The Right Investors

Serving on our panel are:
Tanveer Patel, Naia Corporation
Jen Barnett, The Microfit Group
Jennifer Skjellum, RunTime Computing

Meeting sponsored by Magic City Post

RSVP Now!