Posts Tagged ‘trademark’

A licensing agreement is generally a contract between an intellectual property owner (licensor) and another (licensee) desiring to use the rights owned by the intellectual property owner in exchange for a payment, or other form of consideration.  An intellectual property license is just one potential avenue for an intellectual property owner to profit from their intellectual property rights. Many different forms of intellectual property can be licensed, including patents, trademarks, copyrights, and technology licensing agreements. Additionally, different forms of intellectual property can be licensed within the same agreement. Due to the complex business and commercial considerations that typically accompany the licensing of intellectual property, the respective binding licensing agreements are rarely simplistic contracts. In fact, most licensing agreements include a plethora of terms, factors, and limitations that must be carefully considered when drafting or entering into an agreement.

WM Attorneys Who Practice Licensing

Litigation is the process of resolving disputes through the court system. Litigation involves drafting and filing lawsuits, engaging in discovery such as taking depositions, filing and responding to various motions, attending hearings, and ultimately conducting a trial.

Litigation can be costly and time-consuming, so at Widerman Malek, PL, our first priority is always to resolve client disputes without litigation.  We do this by negotiating on behalf of our clients, by conducting mediations and arbitrations, and by utilizing other alternative dispute resolution techniques.

When it is required, Widerman Malek, PL vigorously represents its clients’ interests. We are results-oriented and cost-conscious from the initial drafting of a complaint all the way through trial and any appeals. Our clients can contact us at any time and can depend on us to be there to answer their legal questions, to write letters or make calls on their behalf, or to respond to any legal actions asserted against them.

The attorneys at Widerman Malek, PL have years of experience in business and commercial, landlord-tenant, land use, and contractor/construction litigation, along with most other contract litigation. We practice in both state and federal court and also represent clients in front of various licensing boards and other departments of state and local government.

Please view the Litigation FAQ for more information.



Your business assets are valuable. You need to understand this when starting your own business. Not only are we talking about things like equipment and a building, but also the “intellectual assets”.

Situations arise that will necessitate the estimating the value of the company’s intellectual assets. Some of these include:

1. Whether it is time to sell part or maybe the entire business while the value is at its peak

2. Whether or not the company is earning a reasonable royalty for an asset

3. Whether or not a settlement is fair in dropping a lawsuit

4. Whether or not to buy another asset that the company needs

5. Whether or not the asset is about to outlive its usefulness and needs to be replaced

6. Whether or not to use the asset as collateral to borrow against

7. Whether tax implications favor the company

8. Whether or not the company is in compliance with all regulations

Here are the three models used when valuing assets:

Market Approach – the fair market value is determined by comparing what similar assets are selling for.

Cost Approach – the value is based upon how much money was used in creating, maintaining the asset.

Income Approach – the value is calculated by how much money is it bringing in or expected to bring in.

Valuing an asset is more of an accounting exercise than a legal one. Since the stakes are so high, and you do not want to get it wrong, hire a highly trained CPA to assist you in valuing you intellectual assets.




The answer to that question is “yes”. However it is a lot more complicated than moving in and staying there.

With the massive number of houses in foreclosure, many of them are sitting empty for long periods. There have been cases where people have gone into these homes and stayed in them for a few months and when the bank comes to kick them out, they claim to ve “in adverse possession” of the home.

In other words, they claim to be the owner because they set up residency there and nobody told them to get out, so now they own the place. Unfortunately it is not quite that simple.

Adverse possession laws state that the squatter must live there uninterrupted for seven years. In addition, he must be living there either without the owner’s permission and it be so obvious that the owner should have known he was there. So hiding out there is not good enough.

Also, the use must be in adverse to the owner’s use and be so that the owner can take an action to stop it, such as an eviction or trespass warrant.

So basically, you would have to move in, get the utilities switched into your name, pay the property taxes and stay there in plain sight of all the neighbors for seven consecutive years to even have a good case.

Even if you are able to meet all those requirements, if there is any doubt as to the squatter’s claim that the owner knew he was there and did nothing, the court must award the property to the owner. The “burden of proof” in this case is on the squatter.

The food news is, if you do meet all those requirements, the police are powerless to evict you. But id you just show up, change the locks on the door and move in without paying taxes and switching the utilities over, you are basically a trespasser and could face criminal charges.

So if you see an abandoned house, do yourself a favor and talk to an attorney before you move into the home.



1. What is a trademark?
2. What is a service mark?
3. When can I register my trademark?
4. Can the trademark office refuse to register a trademark?
5. When can I use the Federal Registration Symbol ®?
6. Should I use “TM” or “SM” next to my mark?
7. How long does it take for a mark to be registered?
8. How long does a trademark registration last?
9. If I receive something from a Trademark Monitoring Service, but it looks like it came from the Government, do I have to pay the fee?


1. What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods of one party from those of others.

2. What is a service mark?

A service mark is the same as a trademark except it identifies the source of a service.

3. When can I register my trademark?

A mark is eligible for federal registration after the mark has been used in interstate commerce, i.e. after the mark has been used between two states, in multiple states, or between the United States and a foreign country.

If the mark has not been used in interstate commerce, you may apply to register the mark based upon an intention to use the mark in commerce. If the application is based on intent to use, actual use must be shown within six months after approval. Extensions of time may be available to show actual use.

If the mark is only to be used within one state, the mark may be eligible for state trademark registration.

4. Can the trademark office refuse to register a trademark?

The trademark office may refuse registration for several reasons. Some reasons include the following:

  • The mark includes immoral, deceptive or scandalous matter.
  • The mark comprises a name, portrait or signature identifying a particular living individual (except that by that individual’s written consent).
  • The proposed mark resembles a mark already registered in the Patent and Trademark Office so that use of the mark would likely cause confusion, mistake or deception.
  • The mark is merely descriptive or deceptively misdescriptive of the applicant’s goods or services.
  • The mark is primarily geographically descriptive or deceptively geographically misdescriptive of the applicant’s goods or services.
  • The mark is merely a surname.
  • The mark as a whole is functional.
  • The mark is generic.

5. When can I use the Federal Registration Symbol ®?

The federal registration symbol ® may be used after the mark is registered with the U.S. Patent and Trademark Office. The registration symbol may not be used during pendency of the application.

6. Should I use “TM” or “SM” next to my mark?

These designations indicate that a party claims rights in the mark and may be used in the absence of federal registration. If an application for the mark is pending before the U.S. Patent and Trademark Office, you may consider identifying the mark with the “TM” of “SM” designation.

7. How long does it take for a mark to be registered?

Although there are no guarantees, generally, the examination process takes about six months.

8. How long does a trademark registration last?

Rights in a federally registered trademark can last indefinitely if the owner continues to use the mark and files the necessary documentation at the appropriate times. The applicant must file Affidavits of Continued Use or Excusable Nonuse as well as applications for renewal at the appropriate times.


9. If I receive something from a Trademark Monitoring Service, but it looks like it came from the Government, do I have to pay the fee?

There are many trademark scams out there.  These scams generally involve sending a trademark registrant a letter that looks like it came from an official entity. Most times, these are simple scams trying to extract money from trademark registrants. Send the letter to your attorney to find out for sure.

For more information on trademark scams, and what is being done about them, please see this article.



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