fi naming doug kim

8/20/2019 FI Naming Doug Kim

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About Me



A Few Companies



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



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



What’s In A Name?

Trademark& Service

Mark

TradeName(d/b/a)

LegalName

Logo

DomainName



What’s In A Name?

Service Mark and Logo

Bermuda Triangle

(Trade Name - Checks)

URL

scubagreenville.com



What’s In A Name?



What’s In A Name?

Service Mark

and Logo

URL

definitedefense.com



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.



A Federal Registration

“Mark”

Shirts IC:025

Hotel Services IC:043



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)

?



Why?

Th C ti



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



Trademark / Service Marks

Trademarks

MCDONALDS'

Certification Mark

Service Marks

T d k / S i M k WITH G d S i



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!



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



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




N





N

Registration

®With Senior

Filing Date

(before youruse)





N

Registration

®Without Senior

Filing Date

(your usepredates filing

date)

Existing

Area (a

Expans

Translations



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



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



• 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



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)[email protected]



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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