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Small Business Success Index 4

Index Score*   Grade
73 marginal
Capital Access 67
Marketing & Innovation 65
Workforce 76
Customer Service 88
Computer Technology 73
Compliance 92
*Index score is calculated on a 1-100 scale.

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Compliance Articles

Last-Minute Tax Tips

March 23rd, 2010 :: Thursday Bram

The due date for federal income tax returns is just around the corner. If you haven’t already gotten on top of your taxes, it’s time to do so. These last minute tax tips can help you meet that April 15th deadline without a problem with the IRS.

Estimate the Tax You’ll Owe

Ideally, you’ve been making quarterly estimated income payments and you have a clear idea of how much you’ll owe to the IRS. If, for any reason, you’re not going to get your tax paperwork done on time, you can easily file for an extension, as long as you’ve already paid however much tax you expect to owe on April 15th. It may not be a bad idea to overestimate, depending on the reason the rest of your paperwork won’t be ready — you can face penalties if you underestimated what you might owe.

Having an estimate can also make things easier if you will be on time with your tax return but just haven’t gotten around to it yet. You don’t want to be in the position that you need to make a payment and don’t have quite enough in your business checking account for any reason.

Get Organized

If you’re going to be asking your tax preparer for a rush job, you’ll have much better results if you aren’t handing over a shoebox of receipts or equally disorganized electronic files. There are tools out there that can scan and organize your receipts — Shoeboxed, for instance, just requires you to stick your receipts in an envelope and mail them off. There’s a fee for such services, of course, but if you aren’t going to get to it yourself, the fee is much lower than you might pay to your CPA for a similar service.

Check Your Resources

Trying to claim a particularly difficult tax deduction or credit? Check your professional associations or other resources for guides to doing just that. Many groups offer a regularly updated tax guide for those bumps in their industry, especially focusing on how to appropriately claim specialized deductions. For instance, if you are a building contractor, you may be claiming one of the various energy efficiency credits related to projects you’ve built over the last year. The paperwork can be complicated, but many local contractor organizations offer their own version of a guide to that particular tax credit.

Your personal resources can also make the process easier. If you work with the same tax preparer year after year, he may send you a simplified document to fill out about the changes in your business over the last year, rather than requiring you to fill out every form from scratch. You’ll still have to have all your paperwork but you can avoid having to calculate much more than what your bookkeeping software can already provide.

Image by flickr user alancleaver_2000

Putting Your Books in the Cloud: Your Options

March 16th, 2010 :: Thursday Bram

Keeping your books may not be the funnest part of running your own business, but it is one of the most important. If you don’t have a good grasp on your money, you can wind up without a business very quickly. But bookkeeping is getting easier. There are now many web-based tools that make the process easier to manage: not only can many tools available import information quickly but they take care of details like backing up your files and even emailing out notifications about late payments. Here are just a few of the options that are now available online.

  • Freshbooks: More than a million users rely on Freshbooks to keep their books. The web-based application handles everything from time tracking to invoicing, providing easy-to-use tools for creating estimates and managing contractors.It automates many steps of the bookkeeping process. Freshbooks’ plans range in price from $19 to $149 per month.
  • Outright: Not only can you handle all your bookkeeping tasks in Outright, you can have the application generate your tax forms based on your books and create reports for your CPA or tax preparer. Even better, Outright is entirely free to use. The site even offers forums where you can ask questions about taxes and other financial issues.
  • Blinksale: Focused first and foremost on invoices, Blinksale makes tracking payments easy. If you’re already using tools such as Basecamp, you can automatically import client data. You can even automatically create follow up emails for such tasks as reminding clients of invoices or thanking them for their payments. Blinksale’s monthly plans start at $6 and reach up to $24.
  • Harvest: One of the key features of Harvest is its ability to track time. Even if you aren’t at your computer, you can use Harvest’s smartphone apps to keep track of the time that you’re spending on specific projects. The web application can translate that information into invoices, budgets and the rest of your books. It can even export all that data into Quickbooks if your tax preparer is one of those folks who requests everything in a Quickbooks file.Harvests’ plans range from $12 to $90 per month.

There are some drawbacks to keeping your books in the cloud. Before you choose any of these options, it’s important to make sure that the security measures meet your requirements. Depending on the type of business you run, you may want to take additional steps to ensure that your customers’ data is protected. It’s also important to make sure that the system you choose meshes well with the type of business you run. Some tools work perfectly for the way a consultant bills but may not be up to handling products. The opposite can be just as true, so take advantage of free trials to actually get in to a bookkeeping tool and see how it will work with your business.

Image by Flickr user edinburghcityofprint

10 Easy-to-Miss Business Deductions

March 11th, 2010 :: Thursday Bram

The deadline for completing your tax return is closing in. There are so many different tax deductions, though, it’s easy for a few to slip through the cracks. Make sure that you claim all the deductions that you’re eligible for.

  1. Going green: Did you take steps to make your office greener in the last year? If so, you may be able to write off the expense of doing so as a deduction. Depending on your industry, there are even some tax credits available.
  2. Payment processing fees: Using online payment processors, like PayPal, is becoming more common among small businesses, but there’s a price tag that goes along with doing so. The fees charged on each of your transactions are deductible.
  3. Travel to and from the airport: The fact that you can write off business travel on your taxes is common knowledge, but did you know that you can even write off the taxi trip to and from the airport, as long as you’re traveling for business purposes?
  4. Tax preparation: Considering the expense of getting a tax return prepared when you own a business, it’s a good thing that you can deduct your tax preparer’s fees. The same holds true if you have any help throughout the year with tax planning or other tax-related tasks.
  5. Blog posts: If you hire a writer to put together posts for your business’ blog, it’s a marketing expense and can be written off. The same holds true for other social media help.
  6. Hidden bank and credit card fees: If you have a bank account or credit card in your business’ name, go over the statements very carefully. Even if you can’t get hidden fees removed, they are still business expenses and can be written off on your taxes.
  7. Unpaid invoices: As long as you’re using the accrual method of accounting, rather than cash, your unpaid invoices can be written off on your taxes. However, this deduction can be tricky, making it particularly important that you talk to your accountant before claiming it.
  8. Employee benefits: Of course you can write off any benefits that you provide for your employees, but that term can cover a lot of ground. If you buy an employee a monthly bus pass as one of their benefits, that’s just as deductible as health insurance.
  9. Holiday parties: Do you have a get-together for your employees during the holidays? The expenses for that shindig can be written off, as can holiday cards to your clients.
  10. New employees: The expense of hiring a new employee, from putting out a job listing to printing up new business cards, is entirely tax deductible. Even paying for a prospective employee’s travel for an interview is deductible.

It’s important to note that every business’ tax situation is different and it’s impossible to address every situation in a blog post. In order to make sure that your taxes are in order, it’s crucial to talk to a tax professional who can walk you through determining your eligibility for these tax deductions.

Image by Flickr user AlanCleaver_2000

Compliance is Easy. If You Love Regulations.

March 9th, 2010 :: Steven Fisher
On February 16, Network Solutions and the Center for Excellence in Service at the University of Maryland’s Robert H. Smith School of Business released the findings of their Small Business Success Index survey.  The index is designed to track the competitive health of the small business sector over time, and the results are always interesting.  Scores in 6 categories are graded; compliance got an A-.
The area of compliance, including complying with laws and regulations, keeping customer information secure, and keeping up with laws and regulations. Small businesses are generally successful in this area and have been for the last 12 months the report has been done. This is not bad but there are still some things to address.

Don’t Let the Man Get You Down

According to the SBSI report, even though compliance is not a problem area, 54 percent of owners feel that government regulation is becoming more burdensome. This sentiment has also grown in the past year, raising the question of why small businesses have these concerns. One possible explanation for the perception of increasing burdens may be the economy and how it affects the behavior of governments. Local, state and federal agencies may be becoming more stringent in the enforcement of fines and seeking new ways to tax small businesses in an effort to make up for their own revenue shortfall. One example is real estate assessments, an area where local governments are often accused of exaggerating values when they need to raise revenue.

Protect and Serve….Your Data

The other side of compliance is keeping customer information secure. This does tie into regulations that might apply to some data (HIPPA, Sarbanes-Oxley) but overall companies are up on the technology and have implemented systems to secure and protect data. Where they feel the pressure is the aforementioned burden of government regulation. Currently, small businesses feel they can comply but are concerned that any more regulation might cause them to incur infrastructure and personnel expenses that they are not able to support putting them out of business.

Download the SBSI Report Right Now

If you are reading this on the web site,, you should see a link to the report or if you don’t or a looking at this in a feed reader, you can get the report at

Contractor vs Employee – Getting Scrutiny

March 5th, 2010 :: Gary Honig

You may not have noticed in the news, but the issue of “independent contractors” is becoming a hot item. This is where a company will forego making payroll tax payments and just hope the individual will pay their own way.

Make no mistake, one way or the other, tax on hourly wages must get paid. Either the company deducts them from a paycheck and makes monthly 941 payroll tax payments or the individual needs to make self employment tax payments. The IRS has determined there are three criteria for consideration when deciding whether an individual is an employee or independent contractor.

  1. Behavioral – Does the individual decide where to be, when to be there and what to do when performing their duties?
  2. Financial – Is the individual completely responsible for tracking their finances, negotiating their rate, paying for their own expenses?
  3. Type of Relationship – Does the individual conduct all aspects of their part of the business relationship with regards to contracts, starting, leaving, paying taxes?

If the answers to all of the above is Yes, without any reservations, the individual may be considered an independent contractor. But any shades of gray will pull toward requiring the company to pay the payroll taxes. One rule of thumb would be, when looking at the operating financial statement for the business, the cost of payroll should be one of the bigger, if not the largest cost of doing business.

The reason this is timely has to do with the loss of revenues to both Federal and State budgets. In an effort to recoup shortfalls, agencies are taking a hard look at companies that try to avoid making their necessary tax payments. And here is the kicker, if a company is found to have avoided paying payroll taxes and is levied with past due amounts plus penalties and interest – that liability follows the company owner until it’s paid. Liquidating the company will not resolve unpaid payroll taxes.

How to Include Retirement in Your Business Planning

January 28th, 2010 :: Thursday Bram

As a business owner, retirement often seems like something that other people do. After all, you’ve got your own company — you’ve built it up from the ground, so why would you ever want to leave it? And, on the off chance that you decide to retire, you can always sell your business and retire on the proceeds. But the fact of the matter is that retirement planning can play an important role in your business planning. It can offer opportunities to minimize your tax burden, build additional assets and make sure that if you do find yourself ready to retire down the road, you’ll be in a comfortable position to do so, no matter what.

Adding Retirement to Your Business Planning

There are a wide variety of retirement accounts created by the government to encourage everyone to save for retirement, even if you don’t have an employer offering you a 401(k) plan. But it’s not always clear which plans are best for a business owner — there are all sorts of rules and regulations based on how much you earn, how much you want to contribute to your account and other factors. It’s worthwhile sitting down with someone who can walk you through your options. Rather than a financial planner, though, a CPA is probably your best option.

A CPA can tell you not only about how you can save money towards your retirement, but can also help you determine how you can best benefit your business with your retirement plan. For instance, if your tax burden is significant, opening a tax-advantaged retirement account can help you reduce the taxes you’ll need to pay come April 15th. Your CPA can also help you decide how much you want to save, from the point of view of your business. Because a retirement account is not nearly as liquid as other savings options, it is important to make sure that you have the necessary cash flow to keep your business healthy now, as well as plan for the future.

With the option to open retirement accounts online through many banks and brokers, you can often keep expenses to a minimum: you’re likely already working with a CPA who knows your business well, so you won’t need to find a financial planner in addition. Online account management tools bring the costs of operating a retirement plan to a minimum, as well.

It’s Not Just Your Retirement at Stake

If your business employees anyone, it may be worth looking into retirement options that you can help them with. Your CPA may be able to direct you to options that not only help out your employee, but offer you a benefit as well — offering a retirement plan can be an alternative to offering a raise or a bonus to that employee and may have a lower final price tag. You may also be able to minimize overall costs if you’re already opening a retirement account for yourself.

Photo — Chispita_666

Nine Things I Want in a Great Web-Based Accounting System

January 27th, 2010 :: Steven Fisher

I don’t know if it is me because I have a degree in accounting or am super picky about technology, but I gotta say that the web-based accounting systems on the market today have a ways to go to be great to use. When I was shopping for a new accounting package last fall I went looking at the software that you could install on the Mac and those that were web-based. I looked at the usual suspects, Quickbooks, Peachtree and their online counterparts QuickBooks for the Web and ePeachtree. I also looked at web-based solutions like Outright, Less Accounting and Freshbooks. Since Freshbooks was strictly invoicing software I took that out of the running. describes online accounting systems as “a basic service that generally includes double-entry general ledgers, invoicing, accounts payable, accounts receivable and financial reporting. Some applications also include time sheets and expense reports, as well as payroll, check writing, credit card and inventory features.”

Now I am not here to do a compare and contrast of those products because each small business has their own requirements and things that I call “deal breakers” which is a feature that they must have in the solution they choose. As I went through this selection process many had the basics and a few had some great functions but not all had the right mix that would make it the natural choice. So I thought about it and wanted to share what I thought should be in a web-based accounting system. I came up with nine things and here they are:

1.) Sync with major invoicing and payroll systems – We all need to send invoices and the fact that many of the online accounting systems have invoicing systems that stink on ice is an understatement. I use an invoicing system separately because I can customize it and sync with my web-based project management system.

2.) Automatically have a 2 user package – I have an accountant and the fact that many of the accounting packages have this only available as a premium is a bit of a stupid thing. Give me greater functionality and more reasons to upgrade and I will, not out of reluctance because I need to give access to my accountant.

3.) Real and Useful Mobile application – No I am not talking about a mobile web page version, a real app I can use on an iPhone, Android or Blackberry system. This is not just a browse and tell you stuff app but something that I can actually enter a transaction or track expenses.

4.) Online Sync with my Bank Account – Now I am not an international financier with 1oo’s of off-shore and complex accounts and what I really want is to be able to connect with my bank, download the transactions and then categorize them quickly. A few wanted you to download a QFX file and import it which is a pain and something my bank doesn’t offer anymore. I am not going to switch banks to fit my software, that is usually the other way around.

5.) Work with all the major business models – There was one package I loved but it wasn’t really designed for corporations but rather the product was for sole proprietorships and keeping it simple. I can respect that and the product is new so I hope they plan to increase the functionality for those of us that have LLC and S Corporations and would love to use that system.

6.) Time sheet entry for a bunch of employees – One thing that I didn’t understand is that for some of these web packages I had to pay for a license for access just so a person could do a time sheet entry. This almost seems like the feature that everyone says they have but no one seems to execute well. Here is the functionality – login, see time sheet, enter time matching with projects/tasks/department and click submit. Yeah, that is really all we need to give people access for and if you can give us unlimited or up to 25 or 50 contractors you would have people beating down your door.

7.) If not time entry then API connectivity to my project management system – Ok, so right now my setup is a web-based project management system, web-based invoicing system and installed accounting software. What I really want to do is keep my people submitting their time on the project management system and pull that into an accounting system to do invoicing. If those connections were available, you could have a ton of new customers.

8.) Synchronization with the offline installed software version – I know this might be asking much but it would be fantastic if I could connect to a central stored database that held my accounting system it would allow me to go between installed software and web versions. I know this is a stretch, but I do want it.

9.) Integration with my e-commerce system and merchant account – All of the installed software versions have this in some fashion but this is something that should really be a big focus for the development roadmap. Many people, including me, have small accounting needs but much of our business is driven by online sales. Trying to reconcile that is challenging.

Remember, this is just a wish list

I am sure that over time many of these products will continue to mature and some of these functions will be added and they will improve. My only hope is that a few product managers will read this and become inspired.

What things do you want in a great web-based accounting system?

So was this list good? A good start? What did I miss? What has frustrated you when you have been evaluating these packages? We would love to hear from you so leave a comment.

Winding Up the 2009 Tax Year

January 21st, 2010 :: Thursday Bram

Income taxWe’ve all got big goals for 2010 — but before we can get to them, we have to get 2009 off our plates. That means not only closing the books on last year, but getting them ready for tax season. For some of us, it can take right up to April 15th to be done with 2009, but the sooner you can wind up the 2009 tax year, the better shape you’ll be in for 2010.

Get Your CPA on the Phone

If you can schedule a time to talk to your CPA or tax preparer before handing him your shoebox full of receipts from last year, he can make it worth your while. Most importantly — at least from your tax preparer’s point of view — he can go over exactly what documentation you need to bring in so that your tax return can be prepared. While you may have a good idea what to bring from doing your 2008 taxes, if anything changed in the last year (like you hired an employee, you started carrying more inventory or you changed your business’ structure), you may need to bring in some more documentation.

On top of that, though, your CPA may be able to give you some last minute advice on minimizing your business’ tax burden. While 2009 is over, you can still take a few steps: for instance, if you have a retirement account set up, you may still be able to contribute towards the 2009 limit. Since you’re there already, you should take to your CPA about planning for 2010 as well. Go beyond tax planning: your CPA can talk to you about ways to minimize payroll costs, improve cash flow for your business and generally meet your goals for the next year.

Get Your Books in Order

While we all have just made resolutions to keep up with the paperwork in 2010, there may still be some 2009 items sitting in your inbox. It’s time to get those dealt with so that you can close the books, back them up and send them off to the tax preparer — the sooner, the better if your CPA is one of the many whose prices go up on tax returns when March rolls around.

If you worked with contractors during 2009, you have only about a month left to get your Form 1099s prepared and sent off to both your contractors and the IRS. If you paid payroll taxes for employees, it’s also time to get your Form W-2s sent out. You have until the end of January to send them to employees and until the end of February to send them to the IRS. For both forms, you can face some penalties if you don’t get them mailed off in time. It’s worth talking to your CPA about these forms, as well — some will prepare these additional forms, as well as provide bookkeeping services to make sure that your books for 2009 are done correctly.

Photo — AlanCleaver_2000

Social Message Control – Is It Possible?

December 9th, 2009 :: Tobias Bray

For many businesses, social media has become an indispensable tool. With its low cost of implementation and ability to drive prospects into the sales funnel, businesses continue to turn to it as a means of more effectively managing and measuring marketing dollar spend. For all it is, it remains somewhat untested in the legal system. It begs the question “What liability if any does a business take on when employees create blog entries, post on Facebook, tweet or use geolocation apps”?

Many businesses are required by law to review external communications before they are made public while others believe a review of external communications is prudent. There are a number of reasons for review and in this article we will address employee / contributor based blog entries. Twitter and facebook are a different matter and we will address them in a future post. Note: Those in the financial & insurance professions should consult FINRA guidelines before venturing into any social communication platform as messages conveyed may be construed as or considered advertising or advice.

Setting up a simple blogging process is easy and we have outlined the ix best practice steps below. While there are other questions the business might ask when it comes to blogging, the steps that follow focus on controlling the risks of publishing.

  1. Establish an editorial policy – What information or topics can and can not be published.
  2. Appoint at least two editors who have the final word – In some cases one of them may be your legal team.
  3. Map out the work flow – On a single sheet of paper trace the steps a blog entry must take in order to get published.
  4. Install a work flow plug-in – If you are serious about managing content and want to reduce publishing costs, a plug-in forces review and controls who has access to the publish button.
  5. Create an editorial schedule across the business. Let everyone know what is happening and when so they can plan to create entries that augment activities.
  6. Invite anyone to publish (now that you have controls in place).

With the first four steps in place, a well-meaning employee will not hit the publish button by accident and unleash a post that creates tension in the ranks or exposes the business to risk and liability.

In our next post we will talk about what steps your buiness can take to increase the success rate of marketing and sales efforts.

Protecting Your Small Business Brand with Trademarks – A #GrowSmartBiz Interview with Brian Winterfeldt of Steptoe and Johnson

November 25th, 2009 :: Steven Fisher

646steptoe_logo (blue) copyI first met Brian Winterfeldt when he came to Network Solutions last year to give a great presentation on trademarks and IP for small business when he was with a previous firm. He joined Steptoe and Johnson earlier this year as a Partner in the Intellectual Property (IP) Group. Steptoe and Johnson is a general practice law firm with offices around the world. Brian is based out of the Washington, DC office and the IP Group is focused on identifying, registering and protecting a company’s IP. His focus within that group is as trademark attorney and helps companies of all sizes create, protect and enforce their brand assets. I recently had the opportunity to sit down with him and discuss how and why small business should work hard on a brand and protect it as a critical company asset. Here is a transcript of that interview:

Steve: As a self-proclaimed Global Brand Enforcer (cape not included) what is the overall process for small business to trademark their business?

BBrian Winterfeldtrian: Trademark protection should be a priority for any business, large or small.  Ideally, the process should begin even before the business name and brand names are selected: potential trademark owners should conduct trademark clearance searches for the marks they may wish to register.  At a minimum, US searches should be conducted, but if the business’s goods and/or services are likely to be marketed internationally, the business may wish to conduct searches in other countries or global searches as well.  These searches, when conducted by experienced trademark attorneys, will indicate whether each mark should be registrable in each jurisdiction or whether there are any potential obstacles (for example, if another party has already registered the same or a very similar mark). The business may wish to select several potential marks and conduct searches for all of them to improve the chance that at least one will be cleared.

Once the desired marks are cleared, the business should proceed with filing trademark applications in the desired jurisdictions.  Potential trademark owners should keep in mind that in the US, they will only be able to obtain trademark registrations if they are able to show use of each mark in interstate commerce, although they can initially file on an intent-to-use basis.  After each application is filed, it will undergo an examination process, during which time the applicant may be required to revise the application and/or submit arguments justifying why the mark should be registered.  Once the application has been approved by the examiner, it will proceed to publication, and if no oppositions are filed during a 30-day window, will then proceed to registration for use-based applications.

In addition to filing applications and pursuing trademark registrations, a business should also develop an enforcement strategy.  Enforcement of trademarks – that is, putting a stop to infringing uses of a mark – is extremely important as a mark can be significantly weakened if its owner fails to enforce it – or in extreme cases rights can be lost entirely.  Enforcement essentially involves determining which marks and elements of marks are most important to the business, monitoring the marketplace for potentially infringing uses, and then addressing these uses as they arise.  A business’s trademark counsel can assist with all of these elements of enforcement.

The company should review its trademark portfolio periodically to ensure that the marks being protected and enforced remain in use and/or remain of value to the company.

Steve: What are the components or types of trademarks? How long does the process take to get a trademark?

Brian: The two basic types of trademarks are word marks, which protect only the verbal form of the mark, and design marks, which protect a graphic representation of a mark.  Design marks may or may not be in color.  Occasionally, businesses may wish to file for protection for non-traditional marks, such as colors, three-dimensional shapes, and sounds.  However, small businesses that are just beginning to develop their trademark portfolios will likely want to focus on the word marks for their major brands and possibly design applications for their logos.

In the US, and in most international jurisdictions, applicants can file for their marks in one or more of 45 classes, depending upon the goods and services for each mark.  The applicant will need to pay an additional fee for each class applied for in most jurisdictions.

The time needed to proceed from initial application to registration varies greatly, but can take anywhere from about one year to several years.  The time will depend upon whether the mark is already in use, whether any amendments are required to the application, and whether the application is opposed after publication.

Steve: Since trademarks are just a US think what other things should companies do if they are international or want to protect their brand on an international level now and for the future?

Brian: Trademarks are actually not exclusive to the US! Most countries allow brand owners to apply for registration and protection of marks.

Once again, if a brand owner is considering selling its goods and services internationally, I recommend starting with a trademark search in the desired markets or globally to ensure that the desired mark is likely to be registrable in each of the desired markets.  The company should also determine its major current and potential markets and should consider filing for trademarks in those countries.  Companies that have a market presence in Europe should keep in mind that the European Community offers something called a Community Trademark (CTM), which allows for protection in each of the 27 EU member countries.

As companies, especially small businesses, are likely to need assistance with navigating the intricacies of the trademark application process in each international jurisdiction, they should work with the company’s US trademark attorney to coordinate with international counsel in each jurisdiction.  Value is provided by experience working with the various international jurisdictions, in combination with knowing your company well and its goals.

Finally, companies filing for international applications should expand their enforcement efforts to include those jurisdictions as well, especially in key markets.  International counsel can also assist with monitoring those marketplaces and addressing instances of potential infringement.

Steve: For a small business who always has many things that it needs to select in which to spend its limited budget on, what is the level of importance they should place on trademarks?

Brian: A company’s trademarks are among its most valuable business assets, and thus any budget should allow for some degree of expenditures on trademark protection.  Each budget should have room for applications relating to the company’s core brands in its major markets or for maintaining existing registrations for such marks.  If possible, the budget should also include a provision for some enforcement efforts to ensure that incidences of direct infringement can be discovered and addressed.

The company’s trademark counsel should be able to work within its budgetary constraints in order to develop an efficient portfolio management program that will meet the company’s protection and enforcement goals.

Steve: To wrap up I always like to ask a “five things” questions. So for you, what are five things a small business should look for in a trademark attorney

Brian: First, a small business should look for an attorney who is specifically experienced in trademark portfolio management, and who can point to successes in this area.  The business should not hesitate to ask for references from the attorney’s current or past clients who have successfully obtained and maintained trademark registrations.

Similarly, the business should look for an attorney who is experienced with both prosecution (filing applications and obtaining registrations) and enforcement, with notable successes in the enforcement realm (which may include executed settlement agreements, abandonment of infringing marks, or favorable decisions in litigation).

In addition, a business should seek out an attorney who has a network of strong relationships within the trademark community.  Even if the practice is limited to the US, attorneys usually need to work with outside investigators and search vendors, and those who have strong relationships with these vendors are more likely to provide quality, efficient, and cost-effective work.  Also, businesses that are considering any international applications will want to ensure that their attorneys have strong relationships with international counsel.

As the landscape of the trademark field is changing rapidly these days, especially with the growth of the Internet, businesses should look for attorneys who are active in the trademark community, particularly through membership and leadership in the International Trademark Association (INTA) or other intellectual property organizations.  Evidence of recent speaking engagements or publications in the field also demonstrates the attorney’s commitment to staying on top of cutting-edge developments in the field.

Finally, a business should look for an attorney who provides excellent customer service, who will treat a small business’s trademarks and portfolio with as much attention and care as that of a Fortune 500 company.  Again, references from existing and past clients can provide useful information regarding the attorney’s commitment to service, as can evidence of pro bono trademark work for community organizations.