“Having a legal team I can trust provides a great sense of security. I know where to turn, I know how they work, I know they are upfront and honest with their billing, and I value their advice. I appreciate having Revision Legal on our side.”
— Chris Martinez, Phalanx Athletics CEO
Phalanx Athletics was facing two legal problems that created a roadblock in their plans
First, it hired another attorney to pursue federal trademark registration, but its applications were denied by the USPTO.
Second, it had key employees and contractors that it wanted to keep happy and connected to the business.
Here’s how Revision Legal Helped
Reviving Trademark Applications
Phalanx Athletics filed trademark applications for the character mark PHALANX in association with hats, hoodies, rash guards, shorts, t-shirts, and tights. After a trademark application is filed, it is assigned to an Examining Attorney within the United States Patent and Trademark Office (USPTO). The Examining Attorney reviews the application for substantive and procedural compliance with trademark law. The Examining Attorney will issue an “Office Action” if a problem is found.
In this case, the Examining Attorney found a problem. Specifically, the Examining Attorney issued an Office Action refusing to register the mark based on a “likelihood of confusion” with another registered mark, namely, a different PHALANX in association with sandals, shirts, shorts, and wakeboards. We will call this the “Office Action” mark.
At this point, Phalanx Athletics turned to Revision Legal. We investigated the “Office Action” mark that was blocking the way. And with the help of the good people at Phalanx Athletics, we were able to find evidence that the company behind the “Office Action” mark had gone out of business. The continued use of a trademark is required in order to maintain a trademark registration.
Armed with evidence that the “Office Action” mark had been abandoned, Revision Legal filed a cancellation proceeding with the Trademark Trial and Appeal Board, arguing that the registration for the “Office Action” mark should be cancelled because it had been abandoned.
The owners of the “Office Action” mark never defended the case and the registration for the “Office Action” mark was cancelled, which opened up the path to registration for Phalanx Athletics’ PHALANX mark. The registration was finalized months later.
Phantom Stock Plan for Valued Team Members
At the same time, Phalanx Athletics wanted to find a way to keep valued team members motivated and, most importantly, committed to the team. To do so, Revision Legal came up with a plan to give team members real skin in the game, without giving up any voting control.
Revision Legal drafted and advised on implementing a phantom stock plan. These are plans that grant a contractual interest in the business overall that is exercised on certain conditions. For example, some companies decide to grant certain interests that become exercised upon the sale of the business, or what we call a “change in control event.” Others decide to grant interests based on years of service to the company or hitting certain milestones or goals in employment.
The details of the Phalanx Athletics plan aren’t important. But what is important is that Phalanx Athletics was able to keep its team members happy while retaining complete control of the company, while also creating a predictable tax environment for all people involved.
- Phalanx Athletics successfully obtains trademark registration.
- Phalanx Athletics implements phantom stock plan to meet sustainability and growth needs.
To read more about our service offerings relevant to this case study, visit the following areas:
About Phalanx Athletics
Phalanx provides high quality compression and athletic wear to the modern combat athlete.