Courts deciding a trademark infringement action will mainly look at two issues in deciding an infringement action: 1) the similarity of the two marks, for example, are the marks identical or merely similar; and, 2) what goods or services are the marks associated with. The more similar the marks, and the more related the products or services of the two marks are, the more likely a court will find a likelihood of confusion and enjoin the offending party’s use of the mark.

Should your prevail in a trademark infringement action, you are entitled to some or all of the following remedies: 1) injunctive relief to enjoin the other party from using the mark; 2) profits the opposing party made as a result of its use of the infringing mark; 3) monetary damages you sustained as a result of the infringing party’s use of the mark; and, 4) the costs you incurred in bringing the infringement action. In addition, a court may award treble (triple) damages if there is a finding of bad faith on the part of the offending party.

Specifically, Maryland courts have held that the protection from liability that exists by virtue of the LLC’s formation can disintegrate if the LLC fails to observe certain corporate formalities. One of these formalities is the existence of a valid operating agreement. Having an operating agreement in place can protect the single member from liability when a third party attempts to sue the individual member in order to satisfy an obligation resulting from a debt of the LLC.

Without an operating agreement, it may prove more difficult for the sole member to avoid liability. Courts sometimes blur the line between a sole member LLC with its protection from liability for its individual owners, and a sole proprietorship where such protection does not exist. However, this line becomes more clear cut, and courts will as a result hesitate to “pierce the corporate veil” and hold an individual liable for the LLC’s debts, when corporate formalities like having an operating agreement are complied with.

http://mta.maryland.gov/business/advertisingwithmta/MBE%20Certification%20Power%20Point%20Presentation.pdf

Please contact me if you need assistance with your MBE certification.

The Maryland Department of Transportation’s (MDOT) Office of Minority Business Enterprise has two primary functions: Minority Business Enterprise (MBE)/Disadvantaged Business Enterprise (DBE) certification for the State of Maryland and the administration and coordination of the MBE and DBE programs within the MDOT administrations.

To ensure that only bona fide MBEs/DBEs participate in the programs, Maryland has a comprehensive certification program. Only those businesses determined to be owned and controlled by socially and economically disadvantaged individuals are certified. A firm designated as an MBE and/or DBE will have its name appear in the MBE/DBE Directory, a reference document made available on the Internet to all State departments/agencies, the contracting community and the general public.

Recognizing that the potential for MBE/DBE participation is dependent upon several variables, each MDOT administration examines its respective contracts/purchase orders and establishes specific goals on a contract-by-contract basis. Procedures are followed to assure that an award of a contract is not made until a prime contractor has met the MBE/DBE goal(s) or has demonstrated a good faith effort to meet the MBE/DBE goal(s).

After a contract has been awarded, MBE/DBE participation is closely monitored by key personnel within each administration. Monitoring includes a review of the subcontract financial transactions, and visits to the job-site to verify actual work being performed by the MBE/DBE firm. The standards for MBE/DBE compliance are spelled out in the MBE/DBE Program Manual. Any deviation from compliance standards is documented and if it is not corrected, sanctions may be applied against the contractor and subcontractor(s). The MBE/DBE Program Manual identifies the sanctions which may be instituted.

Periodically, MDOT revises the MBE/DBE Program Manual for improvements and to include any applicable changes in federal and/or State regulations or laws. Persons having an interest in the program may find this guide helpful in understanding MDOT’s MBE/DBE Program. Copies of the complete Program Manual are available online in Adobe PDF format or at the following address for a nominal fee:

Maryland Department of Transportation
Office of Minority Business Enterprise
7201 Corporate Center Drive
Hanover, MD 21076
410 865-1269 or 1-800-544-6056
TTY 410 865-1342

http://www.mdot.maryland.gov/

To view the Uniform Certification Application to get certified as a Maryland minority-owned businesses, click:

http://www.mdot.maryland.gov/MBE_Program/Documents/DEEO-50%20Uniform%20Certification%20Applic.pdf

To see what documents need to accompany the application, click the following if you are a corporation:

http://www.mdot.maryland.gov/MBE_Program/Documents/Checklist-CORP0710.pdf

Click the following if you are a limited liability company (LLC)

http://www.mdot.maryland.gov/MBE_Program/Documents/Checklist-LLC0710.pdf

If you need assistance with your MBE application, please contact me.

- a corporate law attorney specializing in employment, contracts, intellectual property, litigation and other corporate issues;

- a CPA for your business accounting and tax services;

- an insurance broker for your business liability, E&O, and other insurance needs;

- a banker with whom you have a personal relationship with;

- a financial advisor for your 401K, retirement and other accounts;

- an IT services firm to be on call for your computer networking needs;

- a payroll company to handle weekly payroll and taxes for your employees; and

- a company to develop your website, and then focus on your internet advertising, search engine optimization, and other advertising needs in order to properly publicize your business over the internet.

Please don’t hesitate to contact me should you need referrals in any of the above areas.

Limited Liability

Limited liability companies (“LLCs”) have become increasingly popular over the past several years as alternatives to corporations because they legally enjoy the same limited liability advantages as corporations, while also providing certain tax benefits that not all corporations do. LLCs, corporations, and most partnerships shield their owners from liability for the actions of the entity. So regardless of the corporate form, owners of these entities will rarely be held liable for the debts and other actions taken by the corporation.

The reason that LLC’s have increased in popularity is because members of an LLC garner pass-through tax advantages similar to what partners receive in a partnership. While owners of a corporation face “double-taxation,” first at the net income of the corporation and second at the individual shareholder level on the dividends the shareholders receive, LLC members are taxed only once, at the individual level on the profits they receive. With all else being equal, this tax savings is the main reason that a start-up entity will choose to go the LLC route as opposed to the corporation route.

In most other respects, LLCs are similar in nature to corporations. An LLC is suitable for one or several owners, called “members.” As a partnership agreement governs the partners’ relationship and a shareholders’ agreement governs the shareholders in a corporation, a properly drafted LLC operating agreement sets out the rights, duties, obligations and remedies of the LLC’s members.

A managing member, designated in the operating agreement, runs the day to day operations of the LLC, and there can be more than one managing member if desired by the members. LLCs may, but are not required to, appoint officers of the LLC. Members of an LLC may consist of individuals, corporations, other LLCs, or a mixture of each.

Persons desiring to form an LLC in Maryland can search the Maryland SDAT website for name availability at www.sdatcert3.resiusa.org/ucc-charter.

After determining whether a name is available, forms for an LLC’s Articles of Organization can be found at www.dat.state.md.us/sdatweb/sdatforms.html#entity.

Just remember to consult an experienced Maryland business attorney before you get started.

Need an Attorney to help your Maryland or DC business? Contact Raymond McKenzie at 301-330-6790 or ray@mckenzie-legal.com

Most business clients who come to me with trademark questions believe that filing a trademark is a complex and expensive process. Nothing could be further from the truth. While it is true that the entire trademark registration process usually takes 12-18 months, the actual filing of a trademark application can be done in a few hours. Once filed, the trademark application works its way through the U.S. Patent and Trademark Office (“USPTO”) with little work needing to be done. The filing fee paid to the USPTO is a mere $325.00. So for a couple hours of work by you or your business attorney along with a $325.00 fee, your business is entitled to have exclusive ownership of a mark, in your business’s line of products or services, across the United States.

What exactly is a trademark? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  Words that you may trademark are the name which your business operates under and holds itself out to the public as (think ”McDonald’s” or “Microsoft”).  A phrase you may trademark are words that identify or distinguish the source of your product or service (think Nike’s “Just Do It” or Gatorade’s “Is It In You?”).  A symbol or design may also identify or distinguish your business from another (think Apple’s “apple” found on every Iphone, MAC and Ipod, as well as the symbols found on nearly every luxury car like the Lexis, BMW or Mercedes.)

How would your business benefit by obtaining a federal trademark registration? While you are not required to register for trademark protection, doing so provides server advantages, including notice to the public of your claim of ownership of the mark, a legal presumption that you own the mark nationwide, and the exclusive right for you to use the mark on or in connection with the goods or services set forth in your registration.  In other words, you may advertise your name, logo, phrase, symbol or design that identifies your business’s product or services withour fear that someone else could come along and steal those identifiers from you.

You can search the trademark database to check on a trademark’s availability by going to www.uspto.gov.

A trademark registration remains valid for 10 years, provided you file an affidavit that you are continuing to use the mark between the fifth and sixth years following registration.

With all of the above in mind, isn’t it worth it to have the name you do business under, along with any slogan, design or logo your business uses, registered to your business nationwide in the category of goods or services you provide? To me, the answer is a no-brainer.

Visit the USPTO website, as it is a very useful and informative site. It contains a list of frequently asked questions at http://www.uspto.gov/web/offices/tac/tmfaq.htm#Basic001, as well as the basics of what you need to know about trademarks at http://www.uspto.gov/web/offices/tac/doc/basic.

Need an Attorney to help your Maryland or DC business? Contact Raymond McKenzie at 301-330-6790 or ray@mckenzie-legal.com