So That’s Why It Says That

The Food and Drug Administration (along with the FTC and FCC) regulates the claims that dietary supplements can make for their products.  Dietary supplements are those things that people take to enhance their health but aren’t drugs.  If the substance is “intended for use in the diagnosis, cure, mitigation, treatment, or prevention of disease” or “to affect the structure or any function of the body of man or other animals,” it is considered a drug and is subject to considerably more regulation.  If a substance is not a drug, it can avoid a lot of expense, testing and regulation, but then it cannot make a lot of claims relating to the usefulness of the substance.

Dietary supplement labels may carry certain types of health-related claims. Manufacturers are permitted to say, for example, that a dietary supplement addresses a nutrient deficiency, supports health or is linked to a particular body function (like immunity or heart health). However, such a claim must be followed by the words, “This statement has not been evaluated by the Food and Drug Administration. This product is not intended to diagnose, treat, cure, or prevent any disease.”

The federal government can take legal action against a company or website that sells dietary supplements if and when the company makes false or deceptive statements about the products sold, if they promote them as treatments or cures for diseases or if their products are unsafe.

Also, once a dietary supplement is on the market, the government agencies monitor information on the product’s label and package insert to make sure that information about the supplement’s content is accurate and that any claims made for the product are truthful and not misleading.

So be very, very careful if you are making claims about helping treat or prevent any conditions unless you are ready to jump through the hoops of drug regulations.

Talking to Potted Plants

I have had a few people tell me lately that I am a “good networker” and ask what groups I am a part of and what events I go to.  I reeled off a few of them, but upon further reflection, I didn’t help those people by doing that.  I should have told them that they were asking the wrong questions.  If they want to build good networks, and hopefully due to that, more clients, they can’t just do what I did.  After all, they aren’t business and intellectual property attorneys.

Better questions to ask would have been: Why did I pick those type of activities? How did I choose those specific ones?  What else do I do to build or support those networks? Since they didn’t ask those questions, I’ll try to answer them now.

Why did I pick those type of activities? 

First, I am comfortable going to happy hours and events and talking to random people.  Other people are not.  If I wasn’t comfortable with it, I’d pick a different route.  Perhaps I’d focus more on different events or not events at all.  Jeff Glazer likes to write articles and be on committees.  If you find him at a happy hour, it will likely be in the corner people-watching.  I’ll be the one striking up a conversation with whoever looks my direction.  Or as I like to joke, the nearest potted plant.

I also am involved on non-profit boards.  I pick causes that I care about, not necessarily boards with names I recognize.  In fact, even better if I don’t know many people on the board.  I want to want to help and be an active board member.  On one hand, it is the reason I joined – I care about what is going on and want to make an impact.  On the other hand, it shows that I am trustworthy, hard-working, and hopefully, not dumb – exactly what I want potential clients and referral sources to see.

How did I choose those specific ones?

The most important thing is to identify your target market.  Who are you trying to meet?  Where are they going?  Get yourself in front of them.  Maybe that is a speaking event if that’s your thing, maybe it is a happy hour, or maybe it is an article in whatever it is your target market reads.

Partly, it is trial and error to get the right mix.  Go to an event.  If it stinks, don’t go back. Make sure it actually stinks and not sure you were just in a bad frame of mind.  This is a good one to ask others what they are doing, but make sure you are going for the same target market or they are a part of the target market.  Then re-evaluate every once in a while.  Are you still getting good return on that time investment?

What else do I do to build or support those networks? 

This isn’t a one time thing.  It isn’t “Here’s my card. Now let the benefits roll in!”  You have to keep in touch with those contacts.  Follow up with any card collected.  Connect on social media.  Set up a coffee date.  Recently, I was talking to someone about their awesome business card and how different people choose what their card is.  On the way home, I was listening to NPR.  Marketplace was talking about business cards, too.  So a follow up email was easy.  “On the way home last night, I heard this story about the evolution of business cards on NPR!  https://www.marketplace.org/2018/02/08/business/business-cards-are-getting-weirder”.

Yeah, networking is work.  It can be fun, but you get out what you put into it.  There is no magic potion other than elbow grease.

B is for Benefit

On November 27, 2017, Wisconsin started to allow businesses to be “benefit corporations” as a business entity thanks to the new corporate statutory Chapter 204.  A benefit corporation is a corporation formed in accordance with ch. 180 that states in its articles that it is a benefit corporation and has a purpose of creating general public benefit.  An existing business corporation may become a benefit corporation under this chapter by amending its articles so that they contain, in addition to the requirements of s. 180.0202, a statement that the corporation is a benefit corporation.

According to the statute, “general public benefit” means “a material positive impact on society and the environment by the operations of a benefit corporation taken as a whole, through activities that promote some combination of specific public benefits.”  The company can also specifically state what their specific public benefit shall be, but that does not limit the obligation of a benefit corporation to create general public benefit.

“Specific public benefit” includes all of the following:

  • Providing low-income or underserved individuals or communities with beneficial products or services.
  • Promoting economic opportunity for individuals or communities beyond the creation of jobs in the normal course of business.
  • Preserving the environment.
  • Improving human health.
  • Promoting the arts, sciences, or advancement of knowledge.
  • Increasing the flow of capital to entities with a public benefit purpose.
  • The accomplishment of any other particular benefit for society or the environment.

Directors and officers of a corporation have the duty to the corporation to make decisions in ways that he or she believes to be in the best interests of the corporation and its shareholders.  In addition to considering those, they may look at:

  1. The effects of the action on employees, suppliers and customers of the corporation.
  2. The effects of the action on communities in which the corporation operates.
  3. Any other factors that the director or officer considers pertinent.

But now, officers and directors of a benefit corporation, in considering the best interests of the benefit corporation, shall consider the effects of any action or inaction on all of the following:

  1. The shareholders of the benefit corporation.
  2. The employees and workforce of the benefit corporation and its subsidiaries and suppliers.
  3. The interests of customers as beneficiaries of the general public benefit or specific public benefit purposes of the benefit corporation.
  4. Community and societal factors, including those of any community in which offices or facilities of the benefit corporation or its subsidiaries or suppliers are located.
  5. The local and global environment.
  6. The short-term and long-term interests of the benefit corporation, including benefits that may accrue to the benefit corporation from its long-term plans and the possibility that these interests may be best served by the continued corporate independence of the benefit corporation.
  7. The ability of the benefit corporation to accomplish its general public benefit purpose and any specific public benefit purpose.

They may also consider any of the following:

  1. The resources, intent, and conduct of any person seeking to acquire control of the corporation.
  2. Any other pertinent factors or the interests of any other group that is deemed appropriate.

For those who haven’t taken Statute Reading 101, “shall” means they directors and officers are required to look at those items, but “may” means they have the option, but it isn’t necessary.

This does not mean the officers and directors in a benefit corporation should make decisions against or ignore profit and other financial considerations.  After all, benefit corporations remain for-profit business entities – not a non-profit or charity.

The board of directors of a benefit corporation also must have one director who shall be designated the “benefit director.” That benefit director should be given the duty to monitor compliance with the benefit corporation’s public benefit mission.  However, interestingly, the statute doesn’t actually seem to do so.  Instead, the statute says, “The articles or bylaws of a benefit corporation may prescribe additional qualifications of the benefit director not inconsistent with this subsection”, but it never says what the actual duties of the director are.

Finally, a benefit corporation shall annually provide its shareholders, within 30 days of the end of the benefit corporation’s fiscal year, with a statement as to the benefit corporation’s promotion of general public benefit or any specific public benefit identified in its articles. The statement shall include all of the following:

  1. The objectives the board of directors has established to promote general public benefit or any specific public benefit.
  2. The standards the board of directors has adopted to measure the corporation’s progress in promoting general public benefit or any specific public benefit.
  3. Objective, factual information based on the standards regarding the benefit corporation’s success in meeting the objectives in promoting its stated public benefits and interests.
  4. An assessment of the corporation’s success in meeting the objectives in promoting its stated general public benefit or any specific public benefit.

The short story, yes, you can be a benefit corporation, and you have some additional requirements if you want to show that you have a societal good in mind.  However, what exactly your benefits director should be doing seems to be up to you.

Happy New Year!

 

 

We are excited to hear about your new adventures and help you reach your goals!  Need help setting those goals, see our past posts about strategic planning here: http://www.ogdenglazer.com/tag/strategic-planning/

Letter Full of Lemons

Oh, no! This company says we are infringing their trademark.  They say we need to stop by, wait, that date has already past.  They say they are going to sue!  Well, %#@$, now what?  First, take a deep breath.  Then, you can set a course of action (or inaction).

Whether it comes in an envelope, over email, or through in instant message, a cease and desist request or demand should not be ignored.  That doesn’t mean it needs to be complied with, but it isn’t an automatic delete.  It is tempting to bury your head in the sand and pretend you never got it.  But that could cause immediate harm if the letter is true, or it could just mean you didn’t take advantage of an opportunity to reach your customer better.

That means the first step is determining if this letter purporting infringement is correct. Are the two marks confusingly similar?Are the goods or services the same as or related to the services that you are providing?  If you sell dentures, and they are selling airplanes, the likelihood of confusion is likely pretty low.

Does the company actually have the rights they claim?  Look to see if they have a registration of the mark?  Is it the mark they claim they have registered? You’d be surprised how often the answer to both of these is “no.”

Are they using the mark in real life – not just a registration certificate?  If so, are they using it on the same goods and services they claimed?  Are they still the same as or related to the services that you are providing?  Are they using it in the same geographical locations you are?  Do they only have a brick and mortar store in Ione, California, and you only have one in Elkhorn, Wisconsin?  Then maybe there is little risk of customers visiting both.

Assuming that the marks, registrations, and goods all line up to look like you are in big trouble, you should start planning your new mark.  Yes, there is always the choice of rolling the dice and waiting for them to actually file the lawsuit, but you are already on their radar.  Even if you wait until the suit, having a plan ready to implement will help you be ready when the time comes.  But if your risk tolerance is as low as mine, then you will implement that plan much sooner than later.  You may choose to contact the mark owner and come up with a plan for transition, or you may not.  It depends on you, them, and your plan.

If it is a close call, but you aren’t sure, then you have the harder decision.  You can do nothing and see if they follow through with their threats and fight then.  You can contact them and see if you can work something out that mutually benefits both, or you can fold like a broken umbrella and move on.

Let’s say you fold, that doesn’t mean that you are a wimp.  Maybe you are, or maybe you realize your marketing dollars and energy are better spent on a non-troublesome brand.  And that brings me to the third scenario, you think that the other side is full of baloney.  That could mean you point and laugh at them and make it an internal joke.

But even better, take it as a chance to evaluate your marks and marketing.  If they sent it, it is bothering them.  You have to decide is it bothering them because 1) there is some confusion in some way, and better marketing on your part means that you aren’t losing sales to those yahoos; or 2) they are feeling your presence in the market, which means yay, you have a presence in the market!  It can be a great catalyst to make sure your marketing darts are hitting the correct dartboard and hopefully getting close to the bullseye.

Even if you do realize that you are an accidental infringer and need to change, at least you know that you are marketing in a way that gets you noticed.  Yes, that is a bit of lemonade out of lemons, but sometimes, lemonade is awfully refreshing.

Maybe Not A Text Message With Emojis

Last week, we talked generally about cease and desist letters.  But, when do you actually send them and how? By whom? The answer was hinted at last week, and it boils down to my two favorite words:  It depends.  So let’s go into what it depends upon.

When do you send one?  

First, you send it to someone who is using a mark that you believe is harming you because it is confusingly similar to your mark.  Instead of jumping straight into a lawsuit, you (or your lawyer) contact the other party saying that you believe you are being harmed because of their use, and they should stop that use.  That means A) You need to find the confusing use, and B) You need to figure out to whom to send it.

How do you find the confusing use?

Sometimes it is “easy” because your customers tell you or their customers tell you.  People are contacting you who are confusing you with someone else. For example, they are sending you their resume for a job opening that you don’t have or complaining about a job that you didn’t do. That’s a pretty good sign.  Or perhaps you did a Google search, and you are not the only search result for your mark and your goods or services.  If you are a believer of being proactive, you can also hire out searches to be performed on a consistent and regular schedule.

Then you do some detective work.  Often it is as easy as going to the Contact Us page on their website or Facebook page.  Other times, it involves a bit more digging.  Most of the time, though, it shouldn’t look like the most boring episode of CSI.

By whom?

Much like the contents of the letter, it depends on who is receiving it and the tone you want to send.  A business person reaching out to another business person often goes a long way.  However, an attorney’s letterhead sent via certified mail is not ignored as easily as an email.  That means each situation needs to be addressed as the unique set of facts and people that they are.

How?

Just like by whom, it depends on the recipient and the tone.  An email or Facebook message may easily be deleted and ignored. Whereas a hard copy letter that needs to be signed for shows some serious intentions.  However, that fancy letter can also get some hackles up really quickly.  So we need to look at who is doing what and how we think we can best influence them to stop.  Perhaps a quick note saying, “Hey, dude. Let’s stop confusing our customers and work out a solution” is the way to go, or maybe a formal letter is needed to knock some sense into them.  Or maybe you hire an actor to read parchment.  It all depends on the message you want to send beyond the words written.

In any case, there is no correct answer for all situations – just the best approach for this particular set of facts.  But it will cost you extra if you require a top hat to be involved.

 

Stop Laughing and Listen

Cease and desist letters are no fun.  They are no fun to send, and they are certainly no fun to receive.  They are usually the first shot across the bow when a trademark owner believes that someone is using a mark that is just a little too close for comfort.  Instead of jumping straight into a lawsuit, the trademark owner reaches out the other party and says – depending on style – stop using our mark.

The traditional cease and desist letter looks something like this:

It starts off with who is writing the letter, and gets down to brass tacks pretty quickly:

  • What’s the owners mark
  • What’s the infringing mark
  • Claims of priority or ownership (especially if there is a federal trademark)
  • Why does the owner think this is a problem
  • What the owner wants to happen
  • Deadline for action.

It isn’t fancy, but it gets the point across.  Sometimes they are a bit more forceful, sometimes nice.  However, it is pretty clear that there is a problem and what the writer wants to happen.

However, there has been a new trend as of late from some trademark owners.  They have been taking a more lighthearted approach including writing in different styles or even a personal reading of the letter.  Why?  Well, hopefully, it is better received and, thus, better compliance.  And with the Bud Light demand, there is clearly a strong marketing angle.  I am sure it wasn’t accidental someone was there to record the whole thing.

So how do you know which approach to take?  First, it depends on your business.  If you are a straight-laced business, then you probably want to stay with that approach. If you are a bit zany, well, then you may want to carry that through.  However, it depends on who you are sending it to.  If you are sending it to another irreverent company, then it may go a long way.  If they seem pretty stuffy, then your “fun” letter may be disregarded, and that is the last thing you want.  You are trying to get them to comply.  If all they do is look at it cross-eyed and throw it away thinking it a joke, then you have not met your ultimate goal: Getting them to stop.  So be silly only after seriously weighing the risks and rewards.

Then have others read it before it goes out.  One person’s funny joke is another’s insulting comment.  You may want it to go viral, but not for being an insensitive jerk.

Building an Ecosystem

I’ve been doing some research into how to build an entrepreneurial ecosystem – something I have been tasked with for one of the many projects I seem to have stumbled into. I came across this great list of values that should be embedded into an ecosystem. But, as I read the values, it really seems like these are good values just for life in general. But, that makes sense, doesn’t it? We’re all creating our own personal ecosystems and if we want them to work and be successful, well, we need an ecosystem built on good values.

from the Kauffman Foundation’s, Entrepreneurial Ecosystem Building Playbook (seems like a rather obvious title, doesn’t it?)

Note: also published at Jeff’s personal blog

You’ll See Things You Never Did Before

Whenever I am talking to someone about their trademark, the topic of using a TM or ® comes up.  First, which should one use?  Second, when should they use it?  The first question is easy.  If you have a federally registered trademark on the mark being used, then the ® is for you.  Everyone else gets to use the TM.  State registration = TM; no registration = TM; federal registration differs from mark used = TM.

The second is a little harder.  The easy answer is use it whenever you use the mark to be seen by consumers in connection with your goods and services.  The point is to let others know, “Hey, this is my trademark!  Whenever you see it, you know it is coming from me.”  So using it liberally makes sense.  It lets customers know what they should look for when trying to buy your stuff, and it lets your competitors know that you are claiming rights in the mark.  After all, it is difficult for someone to say, “But I didn’t realize they thought of it as their trademark” if it has a TM or ® next to it.  But using it 100% of the time may not be desirable.

Perhaps it messes with your meticulous design, or it is against industry standard. Or maybe it is just plain ugly.  What to do?  I always give the same piece of homework to start, and this is where I am about to change how you look at the world.  Spend a day or so and actually look at all of the products and services that you come into contact with throughout your day.  Check out your coffee cup, magazine (both the covers and all that is inside), wallet, and so forth, right down to your shoes and car floor mats.  How often do you see a TM or ®?  Now compare that to how often you noticed them before this assignment. For example, look at the beer glass above.  See that little red ® on the left next to the little red bike? Yeah, they are everywhere.

All of the sudden, the theories regarding “but it messes with the design” often dissipate.  It lets you see the forest of TMs and ®s instead of your one little tree. If you notice, however, no one in your industry uses it in certain ways (e.g. it is often not seen on catalog front covers), then maybe it is OK to let it go.

Each time you decide if you should designate your trademark, think about the purpose of informing others of your claim to the mark.  Then, weigh that against the reason you don’t want it on there.  If your reason for leaving it off is stronger than informing customers or competitors about your ownership of the mark in that particular place, then leave it off.  If, however, you want to make sure those “others” know this is your mark for these goods and services, then put it on and console yourself with the fact that, in spite of what Mom said, sometimes it is OK to do what everyone else is doing.

You’re Not From Around Here, Are You?

If you do business outside of the state in which you are organized (e.g., you are a Wisconsin LLC, but do business in Illinios), you have to tell that other state that you are doing business there.  That is, you register as a foreign company.  Yup, it is as you always suspected, those Illinois people are foreigners.  A foreign  company may not transact business in this state until it obtains a certificate of registration from the Wisconsin Department of Financial Institutions.  Most states have statutes saying the same thing.  Some have even more restrictions whether or not a company can do business within their state.  For example, California doesn’t allow LLC’s do certain types of business in the state.

Because each state is a bit different, let’s look at Wisconsin’s requirements for foreign companies.  First, it assumes a company is doing business unless it fits an exception.  Activities that do not constitute transacting business in Wisconsin include but are not limited to:

  • Maintaining, defending or settling any civil, criminal, administrative or investigatory proceeding.
  • Holding meetings of its members or managers or carrying on any other activities concerning its internal affairs.
  • Maintaining financial institution accounts.
  • Maintaining offices or agencies for the transfer, exchange and registration of the foreign limited liability company’s own securities or interests or maintaining trustees or depositories with respect to those securities or interests.
  • Selling through independent contractors.
  • Soliciting or obtaining orders, by mail or through employees or agents or otherwise, if the orders require acceptance outside this state before they become contracts.
  • Lending money or creating or acquiring indebtedness, mortgages, and security interests in property.
  • Securing or collecting debts or enforcing mortgages and security interests in property securing the debts.
  • Owning, without more, property.
  • Conducting an isolated transaction that is completed within 30 days and that is not one in the course of repeated transactions of a like nature.
  • Transacting business in interstate commerce.
  • Owning a controlling interest in a company that is transacting business in this state.
  • Being a limited partner of a limited partnership that is transacting business in this state.

To register in Wisconsin is actually pretty simple.  For a LLC, they simply need to file a Foreign Limited Liability Company Application for Certificate of Registration.  To do so, they can file online with the following information:

 

  • Name of Foreign Limited Liability Company, plus fictitious name if required.
  • State or country under whose law they are organized and original date of organization
  • Name of Registered Agent in Wisconsin
  • Street Address for Registered Agent in Wisconsin
  • Street Address of Principal Office
  • Email Required
  • Contact information, for this filing, including email address so DFI may send the Certificate of Registration
  • Payment of Filing Fee: $100 (plus additional penalty for late registration if applicable)

What does this mean for you?  Well, if you are doing business in another state, you will want to know if you need to register there (or even can do business there!).  The small fee up front could save you quite a bit of problems later if you are not registered (see the comments above about additional penalties not to mention liabilities).