< PreviousYour client wants to make money by selling a product or rendering some service – or maybe some new century combina- tion of both now commonly referred to as SAAS (“software as a service”). In any event, your client will want the relevant consuming public to be able to readily spot its product or service in our crowded, noisy 21st century marketplace. In other words, your cli- ent will want a brand (trademark) – a distinctive and protectible brand – for its products or services. How exactly does a client establish legally pro- tectible rights in a trademark? In the United States, there are two ways to initiate a claim to a trade- mark, but both ultimately require “use” of the mark before those rights are perfected. In the case of a trade- mark, such “use” means that the mark be placed on the goods (like JEEP on a vehicle), on containers for the goods (like KIBBLES ‘N BITS on a dog food bag), or on tags or labels affixed to the goods (like the LEVI’S tab sown onto the back pocket of your jeans). In the case of a service mark, where there is no physical product upon which to Trademark Rights – Where Do They Come From? Z. PETER SAWICKI AND JAMES L. YOUNG | Intellectual Property Z. PETER SAWICKIJAMES L. YOUNG Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and effective strate- gies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either psawicki@wck.com or jyoung@wck.com. place a mark, “use” means that the mark is used in connection with the rendering of the services (such as dis- playing XFINITY on the sides of ser- vice trucks or the use of UBER on the icon for an app and in the app itself). In addition, the rights in a mark ac- quired by such use are generally lim- ited to the goods and/or services sold under that mark. 1. COMMON LAW TRADEMARK RIGHTS The use of a mark as described above creates common law trademark rights for the user (like your client), without regard to whether the mark is registered. However, common law rights are limited to the geographical area in which your client has actually used the mark. Your client’s geograph- ical expansion of rights in that mark may be further limited if a third party, not knowing about your client’s mark, obtains a federal registration for the same mark or a confusingly similar mark. Once that third party’s registra- tion is granted, your client’s rights in its common law mark are confined to the geographical area where your cli- ent has actually used the mark as of the third party’s federal application filing date. As a result, use by your cli- ent beyond that defined geographical area may constitute infringement of that third party’s national trademark registration. 2. TRADEMARK REGISTRATION Before your client actually uses a mark as described above, it can stake a claim to that mark by filing a federal intent-to-use trademark application for its intended goods and/or servic- es. Your client’s rights will then start from that application’s filing date, al- though “use” of the mark (again, as described above) is required before a federal registration will be granted and those rights are perfected. In this case (for federal registration), that use must be in commerce that may be regulated by Congress (interstate or foreign commerce). While rights protecting the owner of a mark are available at common law (and even under state registration statutes), federal registration provides a number of important advantages, including: • Registration (on the Principal Reg- ister of the U.S. Patent and Trade- mark Office) provides constructive notice to all others, so that no sub- sequent user can adopt the mark in good faith. • Registration allows the owner to use the federal registration symbol ®. ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 3 10• Registration on the Principal Register of the Patent and Trademark Office is prima facie evidence of the registrant’s exclusive right to use the mark. • A mark becomes “incontestable” once registered on the Principal Register for five years (except if the mark is later abandoned, the registration was obtained by fraud, or the mark becomes generic). An “incontestable” mark is im- mune from most legal challenges to the validity of the mark. • A registered mark is recordable with U.S. Customs to ex- clude importation of goods bearing a mark that would in- fringe the registered mark. • Investors and bankers like to see that a company seeking funding (or for sale) has actively protected its intellectual property, including its brands, by federal registration. Fed- eral registration enhances the value of a client’s “intangible assets” on its balance sheet. • Registration allows listing of your client’s mark in the “Am- azon Brand Registry” program to better control the use of that mark in Amazon’s electronic marketplace. The takeaway here: if you know your client is already using a mark “in commerce,” encourage your client to seek federal registration for that mark. If your client has selected a mark but is not yet using it (once again, “use” as described above), your client should file a federal intent-to-use trademark ap- plication as soon as possible to begin to establish its rights in that mark.In January 2020, Robins Kaplan LLP welcomed four distinguished attorneys to its Minneapolis office: Robert Bennett, Katie Bennett, Andrew Noel and Marc Betinsky. Collectively, these civil rights and personal injury attorneys possess more than 75 years of experience representing clients in an array of matters and have secured in excess of $100 million on behalf of victims. They have triumphed in cases involving civil rights violations and police misconduct, police shootings, and prison neglect and abuse. In 2019, they achieved the largest ever settlement of a fatal police shooting case nationwide with the landmark settlement of $20 million with the City of Minneapolis on behalf of the family of Justine Ruszczyk, who was shot by a Minneapolis police officer in July 2017. A TT ORNEY OF THE MONTH ROBERT BENNETT Strength in the Face of Injustice BY H. K. WILSON ANDREW NOEL, KATIE BENNETT, ROBERT BENNETT AND MARC BETINSKY ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 3 12ROBERT BENNETT Strength in the Face of Injustice BY H. K. WILSON Peter Schmit is chair of Robins Kaplan’s national personal injury and medical malpractice group. He says he is thrilled to add lawyers of such fine quality to the firm. “Their mission of helping people who have been wronged matches our department’s perfectly. We believe their 1983 civil rights work is important, and we look forward to advancing it further. We are proud to have one of the best groups in the country at Robins Kaplan.” After Bennett and his team collaborated with attorneys at Robins Kaplan to help secure more than $54 million on behalf of victims of the Minneapolis 35W bridge collapse, he says a merger seemed inevitable. “Over the years, we talked about joining forces one way or another,” Bennett says. “It makes perfect sense when you think about it. We’re a great fit and have a tremendous amount of synergy with the team here. It’s like putting the fifth finger in the glove. We’re excited about adding civil rights 1983 police conduct work to the Robin’s portfolio.” A civil trial specialist certified by the National Board of Trial Advocacy and Minnesota State Bar Association since 1989, Bennett has not only righted the wrongs done to his clients, he has helped shape policies that will protect the civil liberties of generations to come. “I started out in my career trying regular car accidents. Whether the light was red or green does not have so much societal significance as this work does. This is what gets me going and keeps me going in terms of thinking I’m doing the right thing for myself, my kids and the people in my town. There’s extra juice that comes with this kind of work.” Looking back, Bennett says the two cases that give him the greatest satisfaction are those involving Abbey Taylor and Justine Ruszczyk. In 2008, 6-year-old Abbey Taylor died from injuries she received from an improperly maintained wading pool drain. In each case, a portion of settlement funds were donated to charitable causes committed to preventing future tragedies. “It’s bigger than just the families involved,” Bennett says. “These are big cases monetarily, but they are also big on a societal basis. There are so many people who did great work, including the Taylor family who created Abbey’s Hope, and John Ruszczyk who contributed a large sum to the city where his daughter was shot. It’s an act of grace when something like that is done.” Referencing the Ruszczyk case, Bennett recalls, “The things that happened at that trial demonstrated that the police were essentially more concerned about themselves than the poor woman who was dying in alleyway. The whole process showed ROBERT BENNETT WITH DAUGHTER, KATIE BENNETT “We’re here to seek justice for people who need help getting it, right the wrongs and get fair compensation for their injuries and damages.” AttorneyAtLawMagazine.com 13AT A GLANCE ROBINS KAPLAN LLP 800 LaSalle Avenue, Suite 2800 Minneapolis, MN 55402 (612) 349-8500 robinskaplan.com PRACTICE AREAS Civil Rights Mass Tort Personal Injury EDUCATION Juris Doctor, University of Minnesota Bachelor of Arts, University of Notre Dame HONORS Civil Trial Specialist, National Board of Trial Advocacy, 1989-Present Civil Trial Specialist, Minnesota State Bar Association, 1989-Present Attorney of the Year, Minnesota Lawyer, 2007, 2008, 2013, 2014, 2016, 2017 Fellow, American College of Trial Lawyers, 2005-Present American Board of Trial Advocates, 2008-Present what lengths they were willing to go to in order to protect the accused officer and proved without a doubt that the blue wall of silence is alive and well in Minnesota. Hopefully, the police got the message that now they can get convicted of murder and face the consequences. Cases like this should prevent these things from happening in the future.” With seasoned attorneys in eight key cities from coast to coast, Robins Kaplan represents clients in cases across the spectrum of medical malpractice and personal injury matters, and onboarding Bennett is an opportunity for the firm to extend its expertise to police misconduct cases. “We are looking to expand this not just in Minnesota, but in other areas where we have offices,” Schmit says. “Bob and others on his team are going out to offices in New York, California and Boston in the next 60 to 90 days, and we are optimistic that once they are exposed to his group’s level of expertise, this will be a growth area for us.” Bennett and his team will also enhance Robins Kaplan’s already extensive work in the area of medical malpractice by expanding its representation of cases relating to the quality of medical care provided to people who are in jails and prisons throughout the country. “We’ve handled some one-offs where the care rendered was just horrendous — and these were not people who were in for a life sentence,” Schmit continues. “They were just in jail waiting for some determination. With the lack of resources, the terrible results are foreseeable. This is another area where Bob’s team has been successful and where we’ve had success. We will continue to look at that, especially as for-profit organizations are running a lot of prisons and making money while providing inadequately for inmates.” Katie Bennett is a graduate of William Mitchell College of Law and was named Attorney of the Year by Minnesota Lawyer in 2014. She is also Robert Bennett’s daughter and a key member of his legal team. She says that the high degree of substance abuse and mental illness among inmates combined with inadequate medical care on the inside is a deadly combination. “Unfortunately, we’re seeing an increase in jail suicide cases that could have been stopped,” she says. “Often, people are dealing with mental health issues by self-medicating with drugs on the outside. Once they get sober, their mental health issues end horribly for them. Medical care is a Constitutional right to people who are incarcerated. In Minnesota, there are private correctional companies that are running prisons as a business and violating the rights of the inmates they house.” Known as “Bob” to his friends and colleagues, Bennett is enthusiastic about how working with Robins Kaplan will amplify the call to justice. “Having more resources means we don’t have to feel pressured to settle cases; we can be patient and righteous, and use our shared tenacity and determination to accomplish the best result. I feel confident that as we expand our practice to Boston and wherever we have enthusiastic partners, we will do big things.” It’s not often that two legal titans like Robins Kaplan and Robert Bennett join forces. There can be no doubt that this phenomenon is a good thing for the cause of justice. “We’re here to seek justice for people who need help getting it, right the wrongs and get fair compensation for their injuries and damages,” Bennett says. “When we can influence and change the system, we do that too.” Robert BennettAttorneyAtLawMagazine.com 15EVENT SPOTLIGHT On February 27, the Minnesota Association of Black Lawyers hosted its General Meeting and Legacy Dinner at Dorsey & Whitney. MINNESOTA ASSOCIATION OF BLACK LAWYERS LEGACY DINNERAssociation of Corporate Counsel Minnesota Chapter Save the Date CASINO ROYALE 6TH ANNUAL CELEBRATION GALA 0044..2255..22002200 66 PPMM -- 1111 PPMM || SSAATTUURRDDAAYY JJWW MMAARRRRIIOOTTTT MMAALLLL OOFF AAMMEERRIICCAA TTaabbllee ssppoonnssoorrsshhiipp iiss jjuusstt $$22,,550000 Support the Children's Law Center of Minnesota Email lluksan@accglobal.com for gala infoIn December 2013, I was thriving as a business litigator in private practice when I fell and broke my leg in 10 places. I worked hard to fully recover. The incident forced me to ex- amine the pace at which I sped through life. In 2019, I left the practice of law to follow my passions of nutrition, fitness and wellness. Now, as a Functional Nutritional Therapy Practitioner, I help busy profession- als make lifestyle changes to become more energetic, avoid burnout and enjoy greater health. If you are confused about what to do to improve your health, you’re not alone. We are consistently bombarded with conflicting messages about what and when to eat, and how and when to workout. Here are 3 quick tips that you can implement to efficiently and effectively lose body fat, gain lean muscle tissue, increase your energy, improve your sleep and stabilize your mood. 1. Eat Fewer Carbohydrates . If you are like most people, you are eating too many carbs. An overconsumption of carbs is likely the cause of your afternoon drowsiness, erratic blood sugar and poor sleep. Download a food tracking app like Cronometer or MyFitness- Pal and track all of the food that you eat for 1 week. Pay attention to your carb consumption and reduce it. 2. Strength Train. If you want to feel better, look better and perform better, then strength training is a must! Lean muscle tissue is a key indicator of health, longevity, metabolic flexibility and cardiovascu- lar fitness (yes, strength training provides cardiovascular benefits). Schedule an appointment with a trainer and commit to strength training just twice per week for two months. Enjoy your increased energy! 3. Meditate Daily. Daily meditation can change your life. Practicing law is an extremely stressful profession, so it is imperative that law- yers take time each day to destress. Download a meditation app and start each morning with 10 minutes of mediation. Try Calm, Head- space or Insight Timer. Work doesn’t have to run your life or ruin your health. By eating fewer carbs, strength training regularly and meditating daily, you can actually run your life instead of letting your life run you. KRISTIN ROWELL IS A LAWYER, AND THE FOUNDER AND CEO OF ENERGETICALLY EFFICIENT. SHE COACHES MEN AND WOMEN IN EFFICIENTLY PRIORITIZING THEIR HEALTH AND WELLNESS TO IMPROVE THEIR PROFESSIONAL SUCCESS. 651-646-5590 . 866-525-6466 . help@mnlcl.org 24-Hour Helpline: 888-243-5744 3 Quick Health Tips That Deliver Big Results for Busy Attorneys BY KRISTIN ROWELL ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 3 18UPCOMING EVENTS To View All Events or Submit an Event, Visit AttorneyAtLawMagazine.com/ Legal-Events/ 31 Mar 24 Apr Legal-Themed Trivia Night MINNESOTA STATE BAR ASSOCIATION 2020 MWL Conference for Women in the Law Minnesota Women Lawyers 26 Mar Judges’ Dinner 2020 RAMSEY COUNTY BAR ASSOCIATION 18 Mar Minority Judges Reception VARIOUS MINNESOTA BAR ASSOCIATIONS 2 Apr 2020 Speed Networking and Happy Hour HENNEPIN COUNTY BAR FOUNDATION 2 Apr Impact of Child Protection Matters CLE MINNESOTA WOMEN LAWYERS 19 Apr Women’s Committee Brunch & Podcast Discussion MINNESOTA ASIAN PACIFIC AMERICAN BAR ASSOCIATION AttorneyAtLawMagazine.com 19Next >