In Episode 41 of The Wendel Forum (originally aired on November 19, 2011 on Green 960 AM radio), show host Dick Lyons speaks with attorney Eugene Pak  about issues related to protecting trademarks and other types of intangible assets. Both Dick and Eugene are partners in Wendel Rosen’s Intellectual Property Practice group.

Photo of Eugene Pak

Eugene Pak, Intellectual Property attorney at Wendel Rosen

They explain the basic differences between patents, trademarks, copyrights and trade secrets and then dig into a deeper discussion regarding some of the issues that entrepreneurs should consider as they develop their young companies and new products.

What makes a good strong trademark? Gone are the days when the U. S. Patent and Trademark Office (USPTO) is readily willing to allowing marks that include “Green” “Eco” or “Solar” in the name. Those terms have become so commonly used within the green industry that they are now considered descriptive, rather than distinctive. Descriptive marks are extremely difficult to register. Dick and Eugene offer a little guidance on how to approach the selection of a name likely to be approved by the USPTO.

Even a trademark registration that goes undisputed will take nearly a year to file, so businesses should plan early for how to protect their company and product names. You won’t want to start over with your design, packaging, marketing and advertising materials if your mark is rejected or disputed, so it’s important to set out on the right path from the beginning.

Copyright issues, which can cover materials ranging from screenplays to software design, can be even more complex than many companies realize. Who owns the work product created by consultants and independent contractors? You might think you do, but don’t be too quick to assume. What about work for hire (WFH)? Just because you call something work for hire, doesn’t necessarily mean that you own it. The laws around this are tricky, so be careful. It’s best to have a contract that includes a clear assignment of rights. Who owns the work product and ideas of employees? That might not be so clear either.

What if you have a license to use software, technology or other work product created by a third-party? Is there such a thing as an implied license? Is your license exclusive, non-exclusive, assignable? The clearer that you can make these issues at the onset, the better chance you have of protecting the value of your company’s assets and avoiding costly negotiations or nasty litigation to protect your company’s future.

If you plan for your company to be wildly successful (and, let’s be honest, who wouldn’t), you’ll want to give proper attention to your intellectual property portfolio. How you handle these issues from the beginning can have a big impact on your ability to get funding from investors later. Being able to demonstrate clean ownership rights and clear marketplace value of your intangible assets will put your company in the best position possible.

Show Posts:

Listen to the discussion of Intellectual Property for Green Businesses: Episode 41 of The Wendel Forum(27:40 min, mp3)

Eugene Pak’s online profile: www.wendel.com/EPak

About Wendel Rosen’s Intellectual Property Practice: www.wendel.com/ip

United State Patent and Trademark Office website: http://www.uspto.gov/

Dick Lyons website bio: www.wendel.com/rlyons

Green 960 AM radio website: www.green960.com

In Episode 39 of The Wendel Forum (originally aired on November 5, 2011 on Green 960 AM radio), show host Dick Lyons speaks with Cynthia Ringo, Managing Partner of DBL Investors.  Cynthia was also on a panel at the California Cleantech Innovation Conference held in Oakland on November 2-3, which the firm sponsored. And on the heels of his recent trip to Korea, Dick presented at the conference discussing issues cleantech companies should consider when looking to expand in global markets.

DBL Investors is a San Francisco-based venture capital firm with a double bottom line investment strategy. They focus on companies that value their communities and the environment, in addition to favorable profits.  What kind of companies are in their portfolio?  A pretty wide range, many with names you’ve heard, representing a variety of aspects of the cleantech economy, including alternative energy, solar, green vehicles, bio materials and fuels, and lighting.

Cynthia and Dick discuss the types of companies that appeal to DBL.  They find themselves working with companies in almost a proprietary manner to develop social, environmental, and economic benefit in communities in which the companies operate.  Portfolio companies are generally looking to transform neighborhoods and communities. 

Of course, DBL is an investment firm, so financials and returns are measured as one might expect.  But beyond that, twice a year DBL also issues a report to their investors on a number of qualitative and quantitative metrics that they employ to analyze the portfolio on factors such as the number of jobs created in low- to moderate-income areas, employee diversity and opportunity, and green initiatives.

The conversation explores the topic of international growth for cleantech companies.  Dick and Cynthia discuss issues related to when companies should start to consider the foreign market opportunities, as well as hurdles, including foreign certifications and entity ownership and partnership requirements imposed in some jurisdictions.  Many countries (such as China and Korea) require the company to form a joint venture with a party in that country, raising possible complications to protecting intellectual property, among other challenges. 

Cynthia mentions some of the cutting edge technology coming out of a few of the companies she works with, wich include Solar City, BrightSource Energy, Solaria, Tesla, OPX Bio, and Primus Power.

Take a listen and then drop us a line with your thoughts on impact investing and the market for cleantech innovation in the current economy.

 

SHOW NOTE:
Tune in at 11:30 a.m. on Saturday, November 12, 2011, to hear Dick’s conversation with the Chairman and Executive Editor of GreenBiz.com, Joel Makower.

 

Post Links:

Listen to the interview with Cynthia Ringo: Episode 39 of The Wendel Forum (27:43 min, mp3)

DBL Investors: http://www.dblinvestors.com/

California Cleantech Innovation Conference: http://www.grow-california.com/conferences/clean-tech-innovation/

Dick Lyons website bio: www.wendel.com/rlyons

Green 960 AM radio website: www.green960.com

In Episode 37 of The Wendel Forum(originally aired on Green 960 AM radio on October 22, 2011), show host Donald Simon talks with Randy Hawks of Claremont Creek Ventures to discuss current trends in the cleantech investment landscape. 

Claremont Creek Ventures is a venture capital firm investing in early stage information technology companies.  Their East Bay location allows them to work closely alongside many excellent research-driven “incubating institutions,” such as UC Berkeley, UC Davis and the Lawrence Livermore and Berkeley Laboratories.

According to Randy, the investment climate is actually seeing some positive moves, despite what you read in the papers.  He claims that there is a 12% uptick in 3rd quarter investing over 2nd quarter in the cleantech space this year.  And Northern California is a great place to be in this sector.  We still get 35 – 40% of the deals being done in the United States and about half of the total dollars.  While the early part of the year saw increased IPO activity, the overall venture capital investment climate is stronger now than it has been in the past couple of years.

Donald and Randy discuss the impact of the research and development funded by U.C. Berkeley and local labs.  Historically, these types of institutions have not been as nimble as some of the private schools and institutions when it comes to licensing the technology they develop.  Even so, the fundamental “game changing” research that they can inspire sets a great stage for technology to evolve into the marketplace.

Further, Randy shares his view on the market shift in the types of deals being done.  Previously bigger amounts of money went to fewer projects. More recently the trend has move toward smaller deals that look like early stage software technology deals.  The models of lean investing that have been previously used in the technology industry are becoming more popular in cleantech.  Deisgn, develop and deploy runs parallel to programs for customer engagement to speed the time to market and ensure a strong company launch.  While these tactics have been used for consumer internet companies for a number of years, other industries including cleantech and healthcare are adopting the tactics.

The two wrap up with a brief discussion of the common pitfalls that Randy has seen with early stage companies when they neglect some fundamental legal issues in their early development.  So often, young companies start out with a couple of friends and a handshake. That may be a fine way to start out, but ignoring issues regarding how the company will be structured and who owns what rights to innovation can lead to problems down the line.  As he says, “It matters if you’re successful.”  So what are the three key areas that deserve attention?  Randy suggests:

  1. Corporate Formation 
  2. Intellectual Property and Licensing
  3. Employment

If you’re interested in hearing more perspectives on the investment climate and meeting some of California’s “Game Changing” clean tech companies, check out the California Clean Tech Innovation Conference happening in Oakland on November 2-3.  Randy will be a panelist at the Energy Efficiency session.  Go to the conference website for more information or to register. 

California Cleantech Innovation Conferencecleantech conference icon
November 2-3, 2011
Kaiser Center Auditorium

At the Kaiser Center in Oakland CA, you will see California’s leading Clean-Tech policymakers… Hear from “Game Changing” Clean-Tech companies on Energy Efficiency, Water, Recycling & Environmental issues along with renewables such as Solar, Water, & Wind & Green transportation. Also speaking will be Clean-Tech experts from California’s leading Universities & Federal Labs, as well as numerous Angel Investors, Venture Capitalists & Private Equity Funds. Grow-California brings all the influencers together at one Clean-Tech Conference.  http://www.grow-california.com/conferences/clean-tech-innovation/

Post Links:

Interview with Randy Hawks of Claremont Creek: Episode 37 of The Wendel Forum (27:35 mins; mp3)

California Cleantech Innovation Conference website: http://www.grow-california.com/conferences/clean-tech-innovation/

Claremont Creek Ventures website: http://claremontcreek.com/view.cfm/3/Home

Green 960 AM radio website: http://www.green960.com/main.html

Donald Simon website bio: www.wendel.com/dsimon

In Episode 36 of The Wendel Forum (originally aired on Green 960 AM radio on October 15, 2011), Wendel Rosen green business partners Bill Acevedo and Donald Simon sit down together to discuss the recent passage of AB 361, the new Benefit Corporation legislation signed into law by California Governor Jerry Brown on October 9, 2011.   The legislation becomes effective January 1, 2012. 

Green Business attorney Donald Simon

Wendel Rosen's Donald Simon helped draft and promote new Benefit Corporation legislation (AB 361)

The legislation was originally advanced by B Lab, a non-profit based out of Pennsylvania and New York that has been promoting a private certification label for companies called “B Corp.”  So, what are B Corporations?  They are companies that choose to publicly measure themselves against metrics that include social and environmental missions.  (By the way, Wendel Rosen is a certified B Corporation).  Last November, B Lab tapped an elite team of lawyers in California, Donald along with Jonathan Storper and John Montgomery, to form the working legal group to craft and promote the legislation, which became known as AB 361.   Assembly Bill 361 (Huffman)  creates a new corporate structure available to companies that want to build social and environmental values into their core mission.  

Adopting the Benefit Corporation form of entity will protect corporate officers (and hold them accountable) for socially- and environmentally-driven decision making.   It requires transparency and verification from those companies choosing to take its form.  Donald and Bill explain how this legislation will help to differentiate genuine core corporate values from great marketing hype in the sustainable business marketplace and the steps companies can take to switch to this new corporate form.

Erik Trojian, Director of Policy for B Lab, joins the conversation to help explain what’s happening nationally to introduce Benefit Corporation.  For example, in New York, similar legislation is currently awaiting the governor’s signature.  There are several other states that have already enacted these types of laws.  With the passage of these bills across the country, it increases the opportunities for new purpose-driven investment dollars to support innovative businesses.  

States that have passed B Corp legislation: 

  • California
  • Hawaii
  • Virginia
  • Maryland
  • Vermont
  • New Jersey

Forthcoming legislation: 

  • Colorado
  • New York
  • North Carolina
  • Pennsylvania
  • Michigan 

We invite you to learn more about this new form of corporate entity and what it might mean for your green business by listening to the interview.  Then tell us what you think.
Will your company consider this form of entity? 

Post Links:

Interview discussion regarding AB 361 Benefit Corporation legislation: Episode 36 of The Wendel Forum (27.35 minutes, mp3)

B Corporations / B Lab website: http://bcorporation.net/

Green 960 AM radio website: http://www.green960.com/main.html

Wendel Rosen’s B Corp Listing: http://www.bcorporation.net/wendelrosen

Around the Capital legislation tracking website: http://www.aroundthecapitol.com/Bills/AB_361/20112012/

Tracking B Corp Legislation Around the Country: http://www.bcorporation.net/publicpolicy

Benefit Corporation Legal Provisions and FAQ from B Lab: http://www.bcorporation.net/resources/bcorp/documents/Benefit%20Corporation%20-%20Legal%20Provisions%20and%20FAQ.pdf

Donald Simon website bio: www.wendel.com/dsimon

Bill Acevedo website bio: www.wendel.com/wacevedo

In Episode 29 of The Wendel Forum(originally aired on August 27, 2011 on Green 960 AM radio), show host Dick Lyons sits down to chat with Nick Flores, Director of Investment and Entrepreneur Services for Investors’ Circle.

Investors’ Circle (IC) is a network of more than 150 angel investors, professional venture capitalists, foundations and family offices that are using private capital to promote the transition to a sustainable economy. Since 1992, Investors’ Circle has facilitated the flow of $146 million into 225 companies and small funds addressing social and environmental issues.

Of note, Investors’ Circle and SJF Institute announced a merger effective July 1, 2011.

In his conversation with Dick, Nick discusses the investment network and some of the many opportunities they have for sustainable businesses to obtain exposure to investors.

Companies in the portfolio are generally not start-ups, but are operational having started with friends and family investors. The investors who participate in IC want to know that the business founder has some skin in the game. Once the company is ready to raise its Series A round of stock, it’s time to submit to IC.

Of the types of companies that IC serves, there are six primary sectors. They are identified as:

  • Cleantech, Energy & Environmental solutions
  • Sustainable Consumer Products
  • Education (focused on K-12)
  • Health, Biotech & Wellness
  • Community and Economic Development
  • Social Media and Software

IC has a number of opportunities throughout the year for companies to showcase their business to the investor community. Currently, they are promoting both an Online Venture Fair (September 14) as well as their Fall 2011 Venture Fair in Philadelphia.

Show Note:

Tune in to Green 960 AM radio on Saturday, September 3, 2011 at 11:30 a.m. for an interview with Rory Bakke, President of Sustainable Concepts Studio and Director of Sustainability at GreenBiz. She’s been working with Underwriters Lab to develop the environmental health and sustainability standards for companies. While there are many forms of product certification, this comprehensive set of standards is meant for the enterprise or organizational level.  Should be an interesting discussion.

Post Links:

Listen to the interview with Nick Flores: Episode 29 of The Wendel Forum (mp3)

Investors’ Circle website: http://www.investorscircle.net/

Press release re Investors’ Circle and SJF Institute merger: http://investorscircle.net/accelsite/media/2796/IC%20SJF%20Merger.pdf

SJF Institute website: www.sjfinstitute.org

Dick Lyons website bio: www.wendel.com/rlyons

Green 960 AM radio website: www.green960.com

In Episode 28 of The Wendel Forum(originally aired on August 20, 2011, on Green 960 AM radio), guest Thomas Simone, President and CEO of Simone & Associates,  shares with show host Dick Lyons  his perspective on the investment landscape for health and natural products.  He’s got a long history in the business, having work with companies including United Natural Foods (distributor for Whole Foods) and Spectrum Organics (oils and supplements), among many others.  His early involvement in this industry started around 20 years ago, after watching his daughter’s interest in natural products.

Tom Simone of Simone & Associates

Tom Simone, CEO of Simone & Associates

Over the years, he’s seen this industry as one of the highest growth areas in the economy.  What common denominators for success does he see?  The successful companies all start with a great team. Products don’t build a company, the people do.  An operating action plan is critical.  Tom is able to bring infrastructure and practical advice to start up company teams to help them turn their visions into sustainable enterprises.

He discusses the triple bottom line and its impact on investment decisions. He offers insight into how investors might go about valuing a business, how profits and prospects affect the valuation, and what kind of return investors might expect out of a business opportunity.

This is a man who knows the natural food and product landscape; in fact he’s been instrumental in shaping it.  We hope you enjoy what he has to say.  

SHOW NOTES:

Tune in to Green 960 AM radio tomorrow at 11:30 a.m. (Pacific) to hear an interview with Nick Flores of Investor’s Circle. 

 

Post Links:

Listen to the interview with Tom Simone:  Episode 28 of The Wendel Forum  (mp3, 27 min 48 sec)

About show host Dick Lyons: www.wendel.com/rlyons

Green 960 AM radio website: www.green960.com

 

Jose Corona of Inner City Advisors

Jose Corona of Inner City Advisors

In Episode 27 of The Wendel Forum(originally aired on Green 960 AM radio on August 13, 2011), Jose Corona, Cheif Executive Officer of Inner City Advisors (ICA), shares with show host Dick Lyons how the organization promotes the competitive advantages of locating a business in an inner city neighborhood.

Founded in 1996 in Oakland, the nonprofit group was born out of a Harvard Business School initiative.  Its mission is to help both companies and communities by promoting the advantages of locating in inner city neighborhoods and by providing companies with the advice and resources to grow their businesses.

Currently, they use a three-pronged approach:

1) They offer portfolio companies a network of experienced advisors that can provide both strategic and tactical, real-world advice to address the company’s business problems.

2) They provide an advanced entrepreneur program, modeled after a Stanford business course, to provide company leaders with the education they need.

3) They are developing a network of capital sources, including an ICA fund, to help portfolio companies grow when they’re ready.

Among their portfolio are several familiar names in the green community.  Who have they helped?  Well, here are a few names that you may recognize:

ICA is doing some great work.  And the proof is in the numbers.  Jose shares some inspiring statistics in his interview.  The companies in their portfolio are creating jobs and infusing wages and wealth into inner city neighborhoods. 

Let us know what other innovative business growth programs you see out there!

SHOW NOTE: Tune in to The Wendel Forum on Green 960 AM radio tomorrow, August 20, at 11:30 a.m. for an interview with health and natural product investment expert Thomas Simone.

Post Links:

Listen to interview with Jose Corona: Episode 27 of The Wendel Forum (mp3, 27.47 min.)

Inner City Advisors website: http://innercityadvisors.org/

ICA Case Study about Premier Organics: http://innercityadvisors.org/companies/portfolio/premier-organics/

Dick Lyons bio: www.wendel.com/rlyons

Green 960 AM radio website: www.green960.com

In the second part of our two part series, show host Dick Lyons chats with three more finalist companies from this year’s San Francisco Business Times Cleantech & Sustainability Awards, held on June 16, 2011.  In Episode 22 of The Wendel Forum (originally aired on Green 960 AM radio on July 2, 2011), Dick learns more about the following companies:
 

Winner: Cleaire (interview with Brad Edgar, President and CTO, and Gale Plummer, CEO)
Category: Transportation

Description: Based in San Leandro, Cleaire designs and manufactures diesel engine filtration systems that could be used to remove particulate matter from exhaust in one million diesel engines in California –- and an estimated potential universe of 40-50 million vehicles already in service world wide.  They distribute and service the technology through a qualified dealer network whose customers include fleets of buses, construction equipment and trucks.

Winner: Solazyme (interview with Harrison Dillon, Co-Founder, President and Chief Technology Officer)
Category: Sustainable Fuels/Chemicals

Description: Solazyme makes oil – all kinds.  Their renewable oils are used in applications ranging from jet fuel to food products.  Dillon and his partner, CEO Jonathan Wolfson, started the company eight years ago in a garage in Palo Alto (where have we heard a story like that before?), originally setting  out  to make a diesel oil substitute from algae.  Since then, they’ve expanded to be able to custom design oils that can be used in a multitude of products.  Their oil can even be found in natural products carried by retailers such as Whole Foods and GNC.  By putting these healthy oils into food products, they are able to take out the saturated fat and keep the products both low fat and satisfying.

Winner: Driptech (interview with Peter Frykman, CEO)
Category: Water

Description:  Driptech makes affordable drip irrigation systems that allow small-plot famers in developing countries to have access to the same water-efficient irrigation that large plot farmers have used for decades.   The key to the technology (which includes some nifty precision laser manufacturing technology) is distributed local manufacturing.  Amazing what a class project at Stanford might turn into!

Coming up this week:

Tune in Saturday morning (July 9) to hear from a company that gives collective buying power to individual employees in organizations for home energy improvements (such as solar panels, insulation and water heaters).   If you’re out of radio signal range, remember you can always click the “Listen Live” button on the station’s website at www.green960.com

Post Links:

Listen to the Interviews: Episode 22 of The Wendel Forum(22.17 mins)

Cleaire website: http://www.cleaire.com

Solazyme website: http://www.solazyme.com/

Driptech website: http://driptech.com/

Green 960 AM radio website: www.green960.com

About show host Dick Lyons: www.wendel.com/rlyons

In the first part of a two part series, show host Dick Lyons chats with several of the top executives from finalist companies at this year’s San Francisco Business Times Cleantech & Sustainability Awards, held on June 16, 2011.  In Episode 21 of The Wendel Forum (originally aired on Green 960 AM radio on June 25, 2011), Dick learns more about the following companies:

Winner:   InterContinental San Francisco (interview with Peter Koehler, General Manager)
Category: Best Practices, Large Company
Description: This 33-story, 550- room, luxury hotel recently earned LEED Gold certification.

Finalist: Propel Fuels (interview with Matt Horton, CEO)
Category: Transportation
Description: This company brings consumers flexible fueling stations (ethanol and biodiesel), largely by installing green pump stations in existing gas stations across California. They hope to become the leading provider of clean fuel in the country.

Winner: Primus Power Corp. (interview with Tom Stepien, CEO)
Category: Energy Storage
Description: This development-stage company builds large-scale batteries that will enable us to warehouse electricity from variable renewable energy sources, leveling transmission peaks and valleys and making the delivery of renewable energy more reliable.

Winner: Numi Organic Tea (interview with Tisha Winters, Public Relations and Social Media Coordinator)
Category: Best Practices, Small Company
Description: In addition to selling an organic product, this Oakland-based company has instituted a number of environmentally-friendly measures, from green packaging to product weight reduction that results in lower transportation costs. 

We’ll share more interviews with award finalists on the July 2 episode of The Wendel Forum.  Tune in Saturday morning at 11:30 a.m. on Green 960 AM radio to hear the broadcast.  And if you’re out of signal range, you can click the “Listen Live” button on the station’s website at www.green960.com.  We’ll talk to folks from winning companies Solazyme, Cleaire and Driptech.

So which green companies would you choose to honor, if you were in charge of giving an award?  Tell us about the unsung heroes in green business! 

Post Links:

 Listen to the Interviews: Episode 21 of The Wendel Forum(27.28 mins)

Green 960 AM radio website: www.green960.com

About show host Dick Lyons: www.wendel.com/rlyons

In Episode 6 of The Wendel Forum (originally aired on Saturday, March 12, 2011, on Green 960 AM radio), Dick Lyons discusses the opportunities and consequences of issuing Series A stock, or a first round of convertible preferred stock, as a means of raising money for our fictional company GreenCo.

Usually issued at some point after the company has raised its initial capital from founders, family and friends, the Series A stock can infuse the company with much needed capital for growth. Along with Series A, come “redemption rights,” which allow investors to demand the company repurchase their shares after a set period of time.  What might this mean for our fictional company GreenCo? 

Listen to Episode 6: wendel_forum_6.