Making It Legal:

“I have the domain name. Doesn’t that count toward a trademark?”

“I did a search online and no one has the name. Why can’t I get a trademark?”

As Nina Yablok’s article, “Trademarks and Google,” touches on, Google isn’t the be-all and end-all when it comes to filing trademarks. That’s why, even in this high-tech, “AG” age, it’s still worth investing in the old-fashioned kind of searches done by real people who are trained to look for obstacles (Current retail price, approximately $600). As my namesake points out, the U.S. Patent and Trademark Office doesn’t look only at exact names or phrases in determining whether there’s a conflict. It also looks at whether a “mark” is sufficiently similar to another to be likely to cause confusion (Note, it doesn’t actually have to cause confusion–just be likely to).

Let’s take an example of two consulting companies–one in California and one in Virginia. Both consult with clients on marketing and PR skills to help hone their essential messages, elevator pitches, etc. The California company uses the phrase, The Spin Doctor. The Virginia company uses the phrase, The Pitch Doctor. The untrained researcher (that is, the entrepreneur looking to do this on the cheap) would probably not be able to come up with enough permutations to cover all the bases… but the people handling the searches can. And it’s likely that the trademark office would look at those two phrases and consider them too similar to allow them to co-exist. If you’re the second to file, it’s likely you’re the one who will have to cede your seat.

If you truly want your company name (or tagline) to become the next household name, realize that it will take time and money to invest in protecting it properly. There’s no point spending money to register the mark, build up the marketing, print the business cards and develop the website, only to have a larger company with a prior claim stomp all over those plans with a cease and desist letter. Invest in the planning and searching before you launch. A good IP attorney can guide you through the process.

You may have had these nasty tidbits enter your inbox: e-mails that seem to come from reputable companies (I got a host of them from “Citibank”) that tout the anti-hacking and identity-theft measures they’re taking. “In order to ensure your security, we need you to verify your contact information by clicking on the link below… etc.” The logo seems in order; it’s written in that “I want to be friendlybut I’m too stiff because my legal and compliance departments were-all over this letter” tone. You are (or at least think you were, at some point), a customer. Makes sense that you should receive it. So you click.

Sadly, all too many people and companies find that, upon doing so, they’ve been “phished.” “Phishing” (according to Webopedia) is a term that means “the act of sending an e-mail to a user falsely claiming to be an established legitimate enterprise in an attempt to scam the user into surrendering private information that will be used for identity theft.” The U.S. Senate has recognized the problem, and Sen. Olympia Snowe (R-ME) recently introduced legislation to provide the Federal Trade Commission with authority to enforce the prohibition against phishing (Of course, whether it authorizes the funding to pay for the enforcement is another matter). (See S. 2661 in the 110th Congress, 2nd session).

Highlights of the Anti-Phishing Consumer Protection Act of 2008 include:

• Prohibiting deceptive domain names (this means using a name like “Citidank” and posing as a banking institution);
• Prohibiting domain name registrars from interfering with efforts to discover the identity of “phishers” who have obtained deceptive domain names;
• Allowing all state attorneys general, aggrieved trademark holders and affected internet service providers to bring lawsuits against the culprits (note, though, individual lawsuits are not expressly permitted, and it would probably be too costly for an individual to investigate and bring a lawsuit against a “phisher”); and
• Restricting damages from exceeding $2 million (except in special circumstances).

The moral of the story: Don’t click on everything you see. Confirm all requests for private information by telephone–and do not use the number you see in that e-mail (it, too, could be a scam). Ask that the request be sent to you by “snail” mail.

The Associated Press reported yesterday that there was little sign (from its analysis) that former New York state Gov. Elliot Spitzer used taxpayer money or campaign funds to subsidize his visits with prostitutes. His state-issued credit card also showed no outward sign of having been abused for extracurricular pursuits.

I can’t say whether he used public funds or not, and federal investigators have yet to comment. But it started me on a stream-of-consciousness series of questions in a business context: How easy would it be to disguise (bury) those kinds of transactions? What if Spitzer were my employee? What kinds of safeguards would I want to have in place? Here’s what I came up with:

• Make sure that the person in your company writing the checks is not the person reconciling the statements (unless you, the business owner, are holding both positions).
• Restict the number of people who have company bank cards or company credit cards.
• Ask for receipts from employees for all business-related purchases.
• Always review bank statements (once reconciled) and financial statements–don’t abdicate that responsibility, even if you delegate the minutiae of it
• Hire outside advisors (such as accountants) who can direct a practiced (and objective) eye over your company’s financial condition.

St. Patrick’s Day is no stranger to legal controversy. Gay Irish groups in New York and Boston have had protracted (and unsuccessful) fights with city leaders over the right to march in the parades. And this year, there’s an unsual legal issue (albeit an ecclesiastical one). According to CNN online, for the first time since 1940, St. Patrick’s Day will fall during Holy Week, the sacred seven days preceding Easter. Liturgical rules say you can’t say Mass. And what do you do about the parade? Read the CNN report to find out how cities (and clerics) around the country are dealing with it.

From the department of “what part of ‘don’t contact me’ do you not understand?” comes a recent New York case, People v. Fernino [2008 WL 382348 (N.Y.City Crim.Ct. February 13, 2008), for those of you who want the citation]. Thanks to Evan Brown and his Internet Cases blog for pointing it out.

Here’s the history: A New York family court issued an order of protection against Melissa Fernino, which prohibited her from having any contact with Sandra Delgrosso and her two underage daughters. [Apparently, Delgrosso had had a romantic liaison with Fernino's father--one can only wonder how badly that went south to end up in restraining orders!]. Fernino then added Delgrosso as a “friend” on MySpace.

The court was not amused. Even though Delgrosso could have denied the request, that wasn’t the point. The point is that Fernino made contact–even if indirectly.

In many of these social networking sites, it’s thought that “the one with the most friends wins.” But what’s the real quality of those friendships?

Is the rise of Web 2.0 the beginning of the end for personal privacy? While only time will tell, there are plenty of pundits crying “the sky is falling!” …and perhaps with good reason. Never before has it been so easy to circulate private information. Never before have the intimate details of so many people’s lives been vunerable to a single keystroke.

So when a group of online experts meets–as it did at the Legal Futures Conference at Stanford University in Palo Alto, California–to evaluate the ways that Web 2.0 and new technology are making us more vulnerable to privacy intrusions, it’s worth hearing how they’re thinking.

Jennifer Granick, civil liberties director at the Electronic Frontier Foundation, acknowledged that she finds the location-based technology in her iPhone very convenient when she’s trying to avoid traffic congestion, but she doesn’t want the government to be able to use that technology to track her down.

Can we have the technology but prevent some uses of it and not others?

This week, I received a frantic call from “Rosie,” who had been referred by a colleague of mine. She plunked down a huge chunk of change (well into the five figures) to buy a day spa from the current owner. The seller told her he wanted to get out of the business because he wanted to retire. Of course it generated more than enough to meet its expenses, he cooed. It’s a great business, terrific location. The seller didn’t want to get lawyers involved: “They always complicate matters.” Rosie wanted to do the deal without laywers, too– it’s cheaper that way. So she bought it–the business… and the seller’s lines about the health of the company.

Turns out, there was very little the seller told her that was true, smooth operator that he was. And Rosie fell for it, hook, line and sinker. What didn’t she do?

• She didn’t ask to see the financials to verify his rosy (no pun intended) reports.
• She didn’t ask to see the lease for the premises to verify arrangements with the landlord.
• She didn’t ask to see the corporate documentation, verifying the seller’s ownership of the company.

Rosie wants out, but getting her out of this deal now is like trying to get milk out of the coffee when you realize you should have had cream. She can’t afford proper legal help because she sank her money into the deposit and on shoring up the ailing business.

As Twilight Zone creator Rod Serling would say: “Offered for your consideration.” Rosie rushed into the deal without guidance from an attorney or any other professional advisor. For whatever her reasons, she had to have this particular business now. For want of spending a few thousand dollars to make sure she got good advice and had seasoned experts watching her back, Rosie is now facing the possible loss of tens of thousands of dollars (that is, a perfectly good down payment that could have been put to better use), additional tens of thousands to get the business up and running (which should already have been up and running), and tens of thousands in possible litigation fees (to either sue the seller or be sued by the seller should she choose to walk away).

So I ask you: When you do the math, is it worth it not to get lawyers involved?

If I could find a word to sum up the best way to deal with employees, I think the word would be consistency. It’s a lack of consistency that often gets employers in trouble with discrimination laws, even if they didn’t intend to discriminate.

Picture this: Aybeesee Company hires its first employee (Jim, a 22-year-old college graduate) and, because they’re so excited about the new hire, the owners generously give him four weeks of vacation… although they later realize how costly it is to be paying for an employee who’s not there to work. So the company decides to give less vacation time to any other incoming employees. Six months later, business picks up, and they hire Natishia (a 42-year-old African-American returning veteran). Given the lessons learned with Jim, they offer Natishia two weeks’ vacation. Jim and Natishia are shooting the breeze at the water cooler… and guess what Natishia learns? Things just get uglier from there.

Similarly, as Melissa Nicefaro’s article, “Sex in the Workplace,” points out, consistency is also key in dealing with dress code issues, gender issues and office romances. Be sure to check with counsel in your area to make sure your employee policies don’t run afoul of local laws.