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Expand Your Brand

 

TM So you want to apply for a federal trademark to protect your brand. How does it work?  Does it cover all use of the brand?  These are a sampling of the questions I receive from entrepreneur’s and business owners looking to protect their brands.  Securing a federal trademark is a complicated but worthwhile process.  The Intellectual Property attorneys at Assouline & Berlowe take the time to explain the process to the brand owner so they understand what to expect and how to maximize their protection.

When applying for a federal trademark, you must pick the class of goods/services that your brand covers based on your existing use, or expected use, of the brand in commerce. For example, you own and operate a retail space where apparel is sold and you want to protect the brand name of the retail space (the name of the store).  You may want to seek protection in a services based trademark class for the bran associated with the retail space.  If the apparel sold at the retail space, the products, use the same brand, you may want to seek protection in a second product based class for the applicable apparel.  You can seek federal trademark protection in multiple classes of goods/services in the same application.  Generally, the scope of your federal protection is limited to the class of good/services in your federal trademark registration. Common law rights are handled differently.

In a recently released opinion, the Eleventh Circuit Court of Appeals held that a federal trademark registrant’s services based brand had extended protection related to goods. Savannah College of Art & Design, Inc. v Sportswear, Inc., 2017 U.S. App. LEXIS 19168 (11th Cir. Oct. 3, 2017).  The Court relied on a prior trademark case that extended protection of federally registered service marks to goods, despite little rational as to the basis for the expansion.  The Sportswear case stated that a federal registered service mark does not have to register that mark for goods to “establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing of that mark on goods.” Id. at *15.  The registrant still needs to show the alleged infringer’s use of its brand is creating consumer confusion as to the source or origin of the brand. Notably, the Court did not discuss the “natural zone of expansion” doctrine, which can be used be extend a trademark owner’s rights into a new product line that is a natural expansion of their prior use.

While the Sportswear case helps trademark owners for services assert their rights for related goods, the optimal method of protection is registering the brand in the class from the outset.  As a trademark applicant, you can seek registration based on your actual use of the brand in a services field, while also applying for the same brand in a goods classes based upon your bona intent to use the brand in business in the future.  A well thought out branding strategy may include preserving your rights in a field that you plan to expand into.  While the trademark cannot register until you begin use of the brand in the applicable class, you can effectively preserve your place in line for up to three years (extending use in 6 month intervals) while you are preparing to use the brand in commerce.  Utilizing a trademark attorney helps you develop a branding strategy to maximize your protection now and for the future.  Don’t forget, a trademark is an asset and can have immense value. Just ask Apple and Google, whose brands are estimated to be worth $170B and $101B by Forbes, respectively.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.  Follow him on Twitter @InventionAtty.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Crowdfunding: A New Way to Invest in Florida

Assouline & Berlowe - Business Law Firm - Crowdfunding

How do 4th grade entrepreneurs make their classroom solar-powered?  In today’s day and age they set up a Crowdfunding campaign.  Hoping for $800, the students raised more than $5,000 by Crowdfunding support across America and around the world.

Money is a scare commodity; and it takes effort to have investors part with it. While subjectively attractive to the project sponsor, the business thesis may not be to a potential investor. Some potential investors may not be interested in the particular business or industry sector. Others may have limited funds that are better deployed elsewhere. And yet for others, the potential project may not meet their investment criteria. For example, generally, investors target emerging growth companies over startups and mature over emerging growth companies. That universe of potential investors has been further constrained through federal and state securities regulations that forbid general solicitation of investors and require the sponsor expend substantial, and often prohibitive, transaction costs.

For the entrepreneur taking concept through to IPO, or for a businessperson expanding operations with a merger or acquisition, financing is always an issue; money is a scare commodity. Personal or retirement savings may insufficient; bank loans (with or without personal or other guarantees) could be unavailable; and family, friends, and so-called Angel investors may not be interested or able to provide project support. What is needed is a larger universe of potential financiers….Enter Crowdfunding!

“Crowdfunding is a new and evolving method to raise money using the Internet. Crowdfunding serves as an alternative source of capital to support a wide range of ideas and ventures.  An entity or individual raising funds through crowdfunding typically seeks small individual contributions from a large number of people. “

A crowdfunding campaign generally has a specified target amount for funds to be raised, or goal, and an identified use of those funds. Individuals interested in the crowdfunding campaign—members of the “crowd”—may share information about the project, cause, idea or business with each other and use the information to decide whether or not to fund the campaign based on the collective “wisdom of the crowd.”

The venture life-cycle moves from Concept to Business Plan to Startup to Sales Ramp-up to Emerging Growth Company to Exit (Buyout or IPO). Maturing businesses grow organically or through mergers and acquisitions. Each step in the process requires more capital and capital and transaction costs. The critical factor: adequate financing!

Governor Scott is expected to sign the Florida Intrastate Crowd Finance Act; amending the Florida Securities and Investor Protection Act Effective October 1, 2015, Florida-based entrepreneurs, small business owners, and others can use web-based Crowdfunding platforms as intermediaries for their intra-state funding campaigns. The Act amends Florida’s securities transactions law. A Florida entrepreneur or business person will no longer be limited to soliciting financing support from Florida “accredited” or a high net worth individual. Florida joins a growing list of states allowing the general solicitation of in-state investors through crowdfunding internet platforms.

Florida’s Office of Financial Regulation will administer the Crowdfunding Law. The Office, reporting to the Financial Services Commission, provides oversight for the State’s financial service providers. Its mission is “to protect the citizens of Florida, promote a safe and sound financial marketplace, and contribute to the growth of Florida’s economy with smart, efficient and effective regulation of the financial services industry.” The Agency’s work is divided among the Division of Consumer Finance, Division of Financial Institutions, and Bureau of Financial Investigations.

To ensure compliance with the rules and regulations of the Florida Securities and Investor Protection Act, the Division of Securities and Finance’s, Bureau of Securities Regulation examines securities dealers, investment advisers, their respective offices, and associated persons who conduct securities business in, to or from Florida. The Bureau of Financial Investigations is a criminal justice agency. It is generally responsible for conducting securities and mortgage fraud investigations.

Florida’s Crowdfunding law exempts certain “issuers” (entrepreneurs, business persons, and others) and their intermediaries (Crowdfunding Internet Platforms) from registration requirements relating to the offer and sale of certain securities. Among other things,

a. An issuer must be a for-profit business entity formed under the laws of the State, be registered with the Secretary of State, maintained its principal place of business in the State, and derive its revenue is primarily from operations in State;

b. The securities offering must be made through a registered dealer or intermediary (the Crowdfunding Internet Platform).

c. The issuer must not be company with an undefined business operation, a company that lacks business plan, a company that lacks a stated investment goal for the funds being race, or company that plans to engage in a merger or acquisition with an unspecified business entity.

d. Unless otherwise exempted by certain mitigating factors, the issuer will be disqualified from using the Crowdfunding exemption if a director, officer, person occupying a similar status or performing a similar function, or person holding more than 20% of the shares of the issuer is a so-called “Bad Actor.” That is, that person cannot have been convicted of a felony in the last 15 years or a misdemeanor in the last 5 years of crimes involving registration as a dealer, investment adviser, issuer of securities, or associated person or the application for such registration or involving moral turpitude or fraudulent or dishonest dealing.”

e. The issuer must execute an escrow agreement with the federally insured financial institution authorized to do business in Florida for the deposit of investor funds. Under the Agreement, offering proceeds will be released to the issuer only when the aggregate capital raise from all investors is equal to the target offering amount.

f. Investors can cancel an investment commitment within 3 business days before the offering deadline. This must be stated in the disclosure statement, and the issuer is required to refund to all investors if the target offering amount is not reached by the offering deadline.

g. The issuer must file a written or electronic notice of the offering with the Office of Financial Regulation that includes

i. the intermediary’s website address where the issuer’s securities will be offered;
ii. The target offering amount;
iii. A nonrefundable $200 filing fee.

h. The issuer must provide to investors and the dealer or intermediary, along with a copy to the office at the time the notice is filed, and make available to the potential investors through the dealer or intermediary, a disclosure statement containing certain material information about the issuer, the offering, and the potential risks to purchasers of the securities including a description of the Company’s physical condition.

i. For offerings, in combination with all other offerings of the issuer 12 month period, having target offering amounts of $100,000 or less, the descriptions must include the most recent income tax return filed by the insurer, if any, and a financial statement that must be certified by the principal executive officer of the issuer true and complete in all material respects.

ii. For offerings, in combination with all other offerings of the issuer within the preceding 12 month period, have target offering amounts of more than $100,000, but not more than $500,000, the description must include financial statements prepared in accordance with generally accepted accounting principles and by an independent CPA using professional standards and procedures for such review the standards and procedures established by the office, by rule, for such purpose.

iii. For offerings, in combination with the other offerings and of the issuer within the preceding 12 month period, have target offering amounts of more than $500,000, the description must include audited financial statements prepared in GAAP by an independent CPA and other requirements as the Commission may establish by rule.

Although the Florida Crowdfunding has a strict intrastate limitation, issuers will shortly have the opportunity to make their offerings nationwide. In 2012, Congress enacted the Jumpstart Our Business Startups Act (the “JOBS Act”). The Jobs Act makes it easier for an entrepreneur or company to find investors and raise capital. By easing various securities regulations, it encourages small businesses funding. Securities and Exchange Commission (SEC) has promulgated Rules under Title II (Access to Capital for Job Creators) removing the prohibition on general solicitation or general advertising for securities offerings relying on Rule 506 (considered a “Safe Harbor” for the private offering exemption of Section 4(a)(2) of the Securities Act of 1933) provided that sales are limited to accredited investors and an issuer takes reasonable steps to verify that all purchasers of the securities are accredited investors. The SEC is expected to finalize its November 5, 2013 proposed Title III (Crowdfunding) Rule this October. Until that Rule is finalized and promulgated, nationwide general solicitation is illegal.

For more information on this or other Venture Capital or Private Equity matter, please contact:

Carl H. Perdue, JD, LLM
Senior Counsel and Partner
Business and Finance

The above material is for information purposes only; and is not to be considered legal or financial advice.

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main:  (561) 361-6566

Fax: (561) 361-6466

Email: CHP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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