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PTO Shortens Time of First OA

Insight April 06, 2010

On Thursday, June 4, 2009 the USPTO reduced its goal for “trademark pendency” to two months. “TM Pendency” determines how large of an inventory of unprocessed applications the USPTO should keep at any given time. The time frame discussed in relation to pendency is the time that it takes the PTO to issue a First Office Action (“OA”) from the application filing date.

The PTO TM Public Advisory Committee (“TPAC”) stated that the previous goal had been 2.5-3.5 months (for issuance of the initial OA). However, as a practicing trademark attorney, I’d say that OAs most commonly issue 3-4 months after the filing date.

I presume that most clients will be pleased with a shortened examination period, as most clients want their applications to issue as quickly as possible. The clients who will be negatively impacted by hastened examination are Intent to Use clients who sometimes have trouble brining their products and services to fruition as quickly as they initially hoped.

It will be interesting to see if the PTO meets its new goals and if so, how this effects the speed of the registration process overall.

 

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2009 LOHAS Forum

Insight March 30, 2010

On Thursday, June 4, 2009 the USPTO reduced its goal for “trademark pendency” to two months. “TM Pendency” determines how large of an inventory of unprocessed applications the USPTO should keep at any given time. The time frame discussed in relation to pendency is the time that it takes the PTO to issue a First Office Action (“OA”) from the application filing date.

The PTO TM Public Advisory Committee (“TPAC”) stated that the previous goal had been 2.5-3.5 months (for issuance of the initial OA). However, as a practicing trademark attorney, I’d say that OAs most commonly issue 3-4 months after the filing date.

I presume that most clients will be pleased with a shortened examination period, as most clients want their applications to issue as quickly as possible. The clients who will be negatively impacted by hastened examination are Intent to Use clients who sometimes have trouble brining their products and services to fruition as quickly as they initially hoped.

It will be interesting to see if the PTO meets its new goals and if so, how this effects the speed of the registration process overall.

 

 

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Kraft’s Advice to Law Firms

Insight Yaacov P. Silberman Yaacov P. Silberman · March 28, 2010

What does the General Counsel of a Fortune 100 company want from a law firm?  In the case of one former GC – Theodore Banks of Kraft Foods – the answer is printed in black and white.  The ABA’s 2004 publication, “Marketing Success Stories” edited by Weishar and Smiley begins with an essay by Mr. Banks titled What We Wish We Could Get from  a Law Firm, or, Hot to Make Us Fall in Love Again.

The advice propounded by Mr. Banks is entirely commonsensical.  But it is only in recent years, if not months, that “innovative” law firms are touting their adoption of the practices that in-house counsel has wanted all along.

Bypassing the more obvious (but still sage) recommendations, here’s a summary of what one General Counsel recommends to outside counsel trying to get his business.

Getting The Client

  • Firms need to distinguish themselves.  Oftentimes law firms cannot adequately answer the question, “Why should I hire you instead of someone else?”  Using vague generalities to answer this question is insufficient.  A firm must prove its capabilities for “high-quality, cost-effective service” in any relevant areas.  Rimon Law Group’s co-founder mused once that he found it odd when law firms tout that they are ranked third for this or that practice area.  As a General Counsel, my reply might be, “can you introduce me to numbers one and two?”
  • Ditch the Picasso. While adequate overhead is expected, a firm that spends a lot of money on glass buildings or fancy artwork might suggest the firm is padding its bills to pay for unnecessary overhead.  In-house counsel would rather their lawyer buy a tasteful poster and pass the savings on to them.
  • Do what you can to get in the door.  While a company might not be willing to try out a new firm on a billion dollar litigation, they might roll the dice on a smaller, more discrete matter.  Firms might offer new clients to work on a matter at a discounted rate, showing all along what it would cost at the usual rate, to gain a client’s trust and to expose them to the firm.

In these three categories, I’m proud that Rimon Law Group rises above the competition.  More than most, they understand what a real brand identity means to the firm.  In the case of Rimon, we place the focus on lawyers with greater experience operating in an ultra-efficient environment and an assurance of predictable fees to our clients.  We’ve also acted creatively to address new clients’ needs in order to expose them to our non-traditional way of doing business.  This often comes at a cost but we’re building durable relationships in the process.

Next week, I’ll discuss Mr. Banks’s advice for keeping existing clients and also do a self-evaluation of Rimon’s practices in the areas of Listening, Communication, Billing, Staffing and Fees.

Stay tuned.

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How to Maintain Corporations and LLCs

Insight Michael Moradzadeh Michael Moradzadeh · March 19, 2010

Forming an LLC or a corporation is an important first step to achieving tax benefits and protection from liability.  In order to preserve these important benefits, however,  it is very important that your company is maintained properly. Otherwise, you run the risk that the separate nature of your company will be ignored by the IRS or a court of law.   While there is no substitution for the sound advice of experienced counsel, a few simple steps will help ensure that you reap the benefits of your LLC or corporation for as long as they exist. The minimum requirements for maintaining corporations and LLCs is that they must:  1) maintain adequate capitalization; 2) keep clean financial and legal records; and 3) be treated as separate and distinct from its owners.

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One Tribe Creative mktg tips from BALLE Conference

Insight March 09, 2010

I am in Denver, Colorado for the 7th Annual (yet my first) BALLE Conference. BALLE is the Business Alliance for Local Living Economies. BALLE’s Mission is to build Local Living Economies in North America that foster vibrant communities, a healthy natural environment, and prosperity for all. This is done through:

Catalyzing, strengthening, and connecting networks of locally owned independent businesses

Providing education and community economic development tools; and

Developing and promoting public policies that enable Local Living Economies to thrive

Paul Jensen from One Tribe Creative of Ft. Collins, CO offered a breakout session full of helpful tips for marketing local (and other) socially and environmentally responsible organizations and businesses. Of these, I found the following most helpful: (1) A brand really is others’ perception of your organization — it’s the relationship that your community has with you; and (2) branding is the way in which you tell your story, which you must do continually to thrive.

Paul used the Be Local Northern Colorado campaign that One Tribe worked on to demonstrate several ways in which an organization can brand themselves locally in order to showcase and increase the value they offer to their community. Gailmarie Kimmel, the Co-E.D. of Be Local Northern CO also shared her experiences with the branding of her BALLE network.

What a refreshing way to conclude a great conference!

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Is the Cold War Really Over . . .  Cold War Museum Inc. v. Cold War Air Museum Inc.

Insight March 02, 2010

Who would have thought that two museums would be battling out for the right to use THE COLD WAR MUSEUM? Although the Cold War ended in 1991, two museums currently are warring over who gets to use the term COLD WAR MUSEUM as their service mark.

The Cold War Museum endeavors to maintain a historically accurate record of the people, places and events of the Cold War.

Cold War Museum header

 

The Cold War Air Museum is a non-profit flying museum dedicated to the preservation of Cold War era aircraft.

Cold War Air Museum banner

 

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Tenants Beware!

Insight February 23, 2010

Investors and analysts complain that it is difficult to compare the financial positions of two entities with similar leases because financial statements often do not clearly show the effects of operating leases.  They claim that tenants under operating leases get a source of unrecognized financing.

A 2005 Security and Exchange Commission report criticized the accounting treatment of operating leases that permits over a trillion dollars of liabilities to remain “off-balance sheet” and called for the Financial Accounting Standards Board (the “FASB”) to work with the International Accounting Standards Board to revise accounting standards to “transparently and consistently” reflect the underlying economics of leases.  As a result, the FASB has proposed sweeping new real estate accounting standards.  If these changes take place, they will affect current operating leases, not just future transactions, and affect each tenant’s bottom line.

 

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An LLC Can be Treated as an S-Corporation for Tax Purposes

Insight Michael Moradzadeh Michael Moradzadeh · February 02, 2010

An LLC can be treated as an S-Corporation for tax purposes if it makes an S-Corporation election as long as the entity meets the IRS criteria to be taxed as an S-Corp, files an S-Corp election and gets approved by the IRS to be taxed as an S-Corporation. Without an S-Corporation election, single member LLCs default to be taxed as sole proprietors and a multi-member LLCs defaults to be taxes as partnership since they are considered “disregarded entities”. However, if a single or multiple member LLC agreement meets the IRS criteria to be classified as a small business corporation, the S-corporation election is filed and gets approved by the IRS, then for tax purposes, not legal purposes the entity is an S Corp not a LLC.

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The Criteria for Being Classified as an S-Corporation

Insight Michael Moradzadeh Michael Moradzadeh · February 01, 2010

In order to be classified as an S-Corporation, a company must: be domestic, have no more than 100 shareholders, have one class of stock, all shareholders must be individuals, decedents’ estates, bankruptcy estates, trusts or tax-exempt charitable organizations, or wholly owned by another S corporation, and all shareholders must be residents of the United States (as defined by the tax code not immigration laws). Shareholders of an S-Corporation can not be financial institutions that use a reserve method of accounting for bad debts, companies taxable as insurance companies, taxable mortgage pools, or domestic international sales corporations. So, if a business entity meets these criteria it can be considered an S corporation by the IRS and taxed as an S corporation as long as the S corporation election forms are properly filled-out and approved by the IRS. Many states including California automatically give business entities an S-corporations tax status if it was approved by the IRS.

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The tax benefits of making an S-Corporation Election?

Insight Michael Moradzadeh Michael Moradzadeh · January 31, 2010

Many small business owners incorporate their businesses not only for legal protection, but also to reduce owners’ payroll taxes through S-Corp tax election with the IRS. One advantage of an S-Corp is that it gives business owners the ability to reduce their self-employment taxes. Any small business owner who has not made an S-Corp election and uses Schedule C for their personal tax return for 2010 is subject to both employer and employee FICA and Medicare payroll taxes at 15.3% up to $106,800, 2.9% Medicare for Schedule C net income greater than $106,800, and California SDI for 1.1% up to 93,316. If a business owner pays himself/herself a “reasonable salary”, the rest of the net income is not subject to these payroll taxes.

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