Famous kids’ toy manufacturer Lego sent a cease and desist letter to gun company Culper Precision regarding its sale and marketing of Glock handguns. Culper Precision offered a Glock handgun with an aftermarket kit to transform the outside of the firearm with Lego bricks (a little tidbit, the plural of Lego is not Legos). Aside from what famous gun manufacturer Glock might have to say about its brand being used by Culper as a not so playful “Block19”, it was not a wise decision for Culper to adorn the outside of a Glock handgun with Lego bricks. The use of the Lego bricks makes the handgun look like a child’s toy and associates a kids toy company with firearms.
The term Lego derives from the Danish words that mean “play well”. Lego is a Danish company. I do not think Culper was playing well with others with this ill-conceived Lego kit. The term Lego is a famous brand for Lego bricks commonly found in homes across the world, particularly when you are walking barefoot in your home.
Lego likely has a claim of dilution by tarnishing under the Federal Trademark Dilution Act (FTDA) and/or the more commonly known Lanham Act. Dilution of a brand occurs when someone uses a famous mark (brand) that blurs or tarnishes the mark. Dilution differs from a typical trademark infringement claim as dilution does not hinge upon whether consumers would be confused. Traditional trademark law was designed to protect consumers from confusion. While dilution is designed to protect the famous brand from being diminished by properly identifying and distinguishing its good or services.
The FTDA in 2006 clarified that a mark is “famous” if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark’s owner, and it allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.
Here, Lego is clearly a famous mark. The false association of its Lego bricks on firearms would tarnish its brand and reputation for kid’s toys (including theme parks). Culper would be best served looking at the age difficulty on the Lego box before it tries to connect Legos with firearms.
For more information about dilution or other Intellectual Property issues, please contact Greg M. Popowitz, Esq.
The Fair Labor Standards Act (“FLSA”) is the federal law that establishes, among other things, that employees who are classified as “non-exempt” are entitled to be paid a minimum hourly wage and overtime pay when working more than 40 hours in any workweek. A person who brings a successful FLSA lawsuit is also entitled to attorney’s fees and liquidated damages. Generally, and conversely, “exempt” employees are those who are exempt from the minimum wage and overtime provisions of the FLSA. Exempt employees must be paid on a salary basis (and a minimum statutory required under the FLSA) and must perform certain duties. Exempt employees include executives, administrators, and professionals.
The question that we are considering now is this: when an employer fails to pay one or more weeks of pay to an exempt employee whose exempt status is not in dispute, does that render the employee non-exempt and, therefore, entitle such employee file a lawsuit for violation of the FLSA and, in so doing, recover the lucrative damages and other relief thereunder? The short answer is no.
The Southern District of Florida considered this very issue in the case of Tadili v. Ferber, 12-80216-CIV, 2013 WL 12101132, at *2 (S.D. Fla. Nov. 22, 2013). In that case, the plaintiff, an master dental technician (exempt as both a learned professional and a highly compensated employee), made the “convoluted argument” that since he did not receive his salary for five of the seven weeks he worked, he could not be considered an exempt employee. The court noted, “An employee who is either a learned professional or a highly paid employee who is not paid for work performed may have a breach of contract claim for nonpayment of wages, but such employee will not have an FLSA claim.” The fact that the employee was not paid did not allow him to claim he was entitled to a minimum wage as a non-exempt employee. Based on this reasoning, the court went on to grant the defendant’s motion for summary judgment.
Other cases holding that non-payment of wages to an otherwise exempt employee does not give rise to an FLSA claim include Nicholson v. World Bus. Network, Inc., 105 F.3d 1361 (11th Cir. 1997) (notingCongress’s intent in formulating the FLSA was to protect “poorer and powerless” workers, whereas the exemptions are carved out for those in higher employment positions who do not require such protections), and Orton v. Johnny’s Lunch Franchise, LLC, 668 F.3d 843 (6th Cir. 2012). See also Donovan v. Agnew, 712 F.2d 1509 (1st Cir. 1983).
It is not unusual for an employer to run into cash flow issues and be unable to meet their payroll obligations. When this occurs, employees may rush to hire legal counsel to sue, and savvy plaintiff’s attorneys know that the FLSA is the best and most lucrative basis for a collections claim. Additionally, the FLSA allows employees to personally sue business owners and managers as well if they come within the definition of “employer” under the statute. These lawsuits are often tough to defend (because liability is clear) and costly (because the statute provides for attorneys’ fees and liquidated damages). However, if the employee bringing the lawsuit is clearly exempt – based on their salary and their duties – the foregoing line of cases should knock the wind out of plaintiff’s counsel’s proverbial sails. No attorney can continue to litigate a claim in federal court unless the facts alleged are supported by the evidence and are warranted under existing law or a non-frivolous argument to modify the law.
As always, when faced with these issues or served with an FLSA lawsuit – or even a demand letter – the best practice is to always consult legal counsel. Whatever you do, do not ignore the threat of an FLSA lawsuit or actual claim.
According to New York University School of Law professors, Barton Beebe and Jeanne Fromer, the world is running out of trademarks.
This, in their opinion, is due to the consumption and clogging of trademarks, which has forced the use of marks concerned to be inferior in strength. In 2020, the number of applications for new trademarks increased approximately 200,000 from the previous year, 459,000 in 2019 to 659,000 in 2020. This one-third increase in new applications supports Beebe and Fromer’s opinion and is especially remarkable given the mediocre state of the U.S. economy in the wake of the pandemic. This increase in numbers also impacts whether a new applicant may obtain the mark they wanted or has to settle for second or third-runner up because the mark they truly wanted has already found an owner
This opinion is backed by the increasing surge in trademark applications over the years, with 2020’s applications increasing by one-third despite a pandemic that severely crumbled the U.S. economy, going from 459,000 in 2019 to 659,000..
The 2020 surge in applications can largely be attributed to two components. A vivacious U.S. economy filled with hope was the first component. Trademark applications are a useful economic indicator. The number of applications increases when companies feel optimistic about consumer desire for new goods and services and decrease when that optimism fades. The second component was the Chinese market. China-based applicants made up nearly two-thirds of the increase in applications from 2019. In 2020, China-based applicants made up one-fourth of the total applicants, a startling difference from the eleven percent that market represented in 2017.
A consequence of this increase in trademark applications is that the clearance process is becoming progressively more drawn-out and costly. Lawyers are forced to spend more time assessing the multiplying number of marks and face a more complex legal analysis than in years prior. After all the work, if a client’s choice in a mark proves unavailable then lawyers must begin the process all over again.
The USPTO has a free data search engine to help determine if a prior conflicting mark exists. However, many companies and law firms turn to commercial search firms to handle clearance searches since these firms are better equipped to find marks that could have any potential conflict with the chosen mark. These firms hire specially trained analysts to detect potential conflicts and more recently, incorporate artificial intelligence to lower costs and accelerate the process. But using AI presents some challenges: AI’s algorithms tend to miss the “play on words” and intentional misspellings that may still be considered confusingly similar to a trademark’s more traditional counterpart. These AI tools have also been employed to detect conflicts with visual logos. The tools used depend on image recognition to detect conflicts between desired logos and existing ones by locating and comparing shapes and characteristics resembling one another. But these tools are not yet reliable since a computer does not translate an image in the same manner as a human eye.
The clogging of trademarks is not as appalling as the number of applications in 2020 suggests. While there has been a surge of Chinese applications, the marks being sought are, for the most part, unappealing to U.S. applicants. Many marks are simply a random series of letters or unspeakable “coined terms” such as FCEDAUS. The USPTO has suggested that this surge in China-based applications is due to the Chinese government’s incentivization of U.S. applications, offering subsidies that often exceed the cost of filing. Many think that Chinese applicants file for financial gain alone. But this spike in China-based applications does make it difficult for the USPTO to plan their workload since submissions of applications are unpredictable.
In an article for the New York Times, John Herrman proposed that Amazon is the culprit behind many China-based applicants applying for these seemingly bogus marks. Herrman claimed that Chinese entities make up close to half of Amazon’s top U.S. sellers and noted that trademark registration was a prerequisite to utilize Amazon’s Brand Registry, generating motive for foreign vendors to apply. He also noted the online explosion of strange marks like NERTPOW, concluding that the intrinsic allure of a mark appeared immaterial to a China-based vendor’s triumph on Amazon. Also, embracing random, incoherent marks is a fast and effective way to gain U.S. registration because it reduces the likelihood that the mark is obstructed by a prior similar mark.
Numerous China-based applicants offering evidence of U.S. trademark use in commerce are undeniably fake, with one famous example being an application for INSTAMARKET retail stores using a photoshopped image of a Walmart as supporting evidence. Professors Beebe and Fromer found that falsified specimens made up about seventy percent of China-based applications in 2017, that the USPTO approved roughly sixty percent of those, and that close to forty percent ultimately registered. The pair determined that fourteen percent of all applications in 2017 were false and that this fact exacerbated the problems with trademark clogging. The USPTO subsequently established additional rigorous measures to uncover false claims of use.
Trademark’s issues with overcrowding and clogging is due in large part to past marks that are still registered but no longer in use. These marks, known as “deadwood,” block a new mark’s application for a similar mark despite the fact that the old one was abandoned. Fortunately, the U.S. has a “use it or lose it” system to prevent trademark owners from retaining rights ad infinitum. Trademark owners must maintenance their marks with the USPTO by filing proof of continued use of the mark by the sixth, tenth, and successive ten year anniversary of registration. However, a pilot audit program in 2012 uncovered that about fifty percent of audited registrations could not provide actual proof of their claims of use. This finding prompted the Office to create a permanent audit program in 2017, increasing the number of registrants audited and creating financial penalties for fixing errors made in maintenance filings. Despite these measures, audits continue to confirm that approximately fifty percent of applicants were not really using their marks.
The Trademark Modernization Act of 2020 gives mark owners more power to get rid of “deadwood” registrations as well as those prior registrations obtained fraudulently. Although not available until December 2021, the most powerful tool within this Act is the ability for ANYONE to challenge a registration on the basis of non-use. A party would be able to purse provided that the mark is registered for at least three years, on the basis that the mark has never been used in commerce for some or all of the identified goods and services. Additionally, re-examination proceedings will target registrants no older than five years old on the basis that the mark were not used for some or all of the identified goods as of specific important dates, particularly the filing date of an application asserting use in commerce. These new tools could facilitate the clearance of new trademarks, providing a quicker and more affordable method of determining that old marks are “deadwood,” removing them as barriers. These tools would only be helpful to those applicants that have more time versus those that need to select their new mark quickly since the proceedings could take some time.
(Then the article breaks down the 1000 most frequently used words in the English language as they relate to their use in trademarks and common words that are now being trademarked.)
In the past, the shortage of more traditional “.com” domain names also played a significant role in selecting a mark. But companies have found a way around that by coining new marks, combining words, and getting creative through various other methods. Thinking outside the box and influencing consumers to familiarize themselves with these new methods have opened the doors to what can be available as a mark. Instead of being clogged, such novel ideas will open up the doors for new trademarks.
This blog article was written by Assouline & Berlowe PA Law Clerk Eva Sarmiento, 3rd Year Law Student at Florida International University School of Law, and only edited by Assouline & Berlowe, P.A. attorneys.
The Department of Labor (“DOL”) has announced a plan to roll back the Trump administration’s rules for determining independent contractor and joint employment status. These rules were heavily criticized by pro-employee organizations for not affording adequate protections to workers and being too favorable to employers.
The proposed rule laid out a five-factor “economic reality” test to determine if an individual should be classified as an independent contractor or an employee: (1) the nature of the work and the degree of control the hiring entity has over the work performed; (2) the worker’s opportunity for profit or loss based on their own initiative and investment; (3) the skill required to perform the work; (4) the permanency of the working relationship between the worker and the hiring entity; and (5) whether the work being performed is integral to production.
In its notice to rescind this rule, the DOL stated that this test has not been supported by prior court decisions or used by the DOL, that it misconstrued the law, and that it disproportionately benefited employers.
The DOL also announced its intention to rescind the final rule outlining the test for joint-employer status though this rule, from its inception, had faced strong opposition from states’ attorneys general. The rule established a four-factor balancing test to determine if Company #2 could be considered a joint employer of Company #1’s employee: does Company #2 (1) hire or fire Company #1’s employees, (2) supervise and control work schedules or conditions of employment of Company #1’s employees, (3) determine the rates and methods of payment of Company #1’s employees, and (4) maintain the employment records for Company #1’s employees?
The DOL wanted further analysis as the proposed rule differs “from the analyses and tests applied by every court to have considered joint employer questions.”
The DOL has invited public comment on the withdrawal of these rules but has yet to announce any proposed new rules. Suffice it to say the Biden administration will be more employee-friendly in any upcoming labor and employment-related lawmaking.
For any questions about the above changes, please contact Ellen below:
On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed two powerfully articulated petitions with the USPTO’s Trademark Trial and Appeal Board (TTAB). In both of the petitions, Peloton claimed that, for years, an innumerable amount of fitness industry participants, including Peloton, have received unfounded cease and desist letters from their competitor, Mad Dogg Athletics (Mad Dogg) and its lawyers, threatening them with pricy litigation if the use of the terms SPIN and SPINNING continued. Peloton further accused Mad Dogg of using phony, coercive tactics to preserve what Peloton perceives to be an unfair monopoly over a generic term, stating: “Enough is enough. It is time to put a stop to Mad Dogg’s tactic of profiting by threatening competitors, marketplaces, and even journalists with enforcement of generic trademarks.”
The Peloton case is quickly becoming one of the most highly observed cases by intellectual property lawyers around the country, bringing to light the “genericide” legal concept, as well as the dangers of aggressive enforcement of trademarks.
So, what exactly is “Genericide”? Genericide is when a trademark that starts off as “valid and protectable” loses its distinctiveness when “a majority of the relevant public appropriates the trademark as the name of a product.” Genericide usually occurs when one of two things occur: either the trademark owner fails to police its own brand, resulting in extensive use by its competitors; or the mark becomes so generic in nature that there is no other way to refer to similar products other than by the trademarked name. Often, the use of the brand as an adjective or noun is telling as to whether a mark has become generic. For example, the famous brand Xerox is currently battling genericide. Do you Xerox a piece of paper, or do you make a Xerox copy of the paper? The former shows how the terms has become generic, whereas the later shows the use of the term Xerox as a brand. Xerox has developed an in-depth advertising campaign in an attempt to fight genericide Some brands that are in the trademark graveyard include thermos, yo-yo, and escalator.
A trademark application may be refused or challenged based on the ground of its genericness. See 15 U.S.C. §1064(3). There is one vital issue used to determine whether a mark is generic: “whether members of the relevant public use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986). The genericide determination requires a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Id. at 990.
Aggressive enforcement of trademarks, or trademark bullying (as its often referred to), is a practice in which the trademark owner, who has significant resources, uses overly aggressive tactics “to enforce its trademark beyond what the law allows, is an effort to bully a smaller target entity without the financial means to respond.” Hard Rock Café Int’l United States Inc., v. Rockstar Hotels, Inc., 2018. U.S. Dist. Lexis 227013 (S.D. Fla. June 13, 2018). According to Peloton’s petition, Mad Dogg’s founder, John Baudhuin, has publically admitted that his company spends “hundreds of thousands of dollars a year” policing its trademark and tracking down infringers, which Peloton describes as doubling down on “its poor choice of names by expending significant time and money securing trademark registrations for the generic SPIN and SPINNING terms,” which are now the subject of Peloton’s TTAB’s petitions for cancellation proceedings.
Mad Dogg Athletics has held the trademark registration for the marks SPIN and SPINNING since July 1998 and October 1996 respectively.  Despite the terms being generic, Mad Dogg has held a strong grasp on the trademarks, that is, until they messed with the wrong company.
The group “Mocha Spin Docs” first uploaded their video to the Peloton YouTube channel on August 27th, 2020, self-described as a “sisterhood of black women physicians” who loved their Peloton bike experience. According to Peloton’s petition, Mad Dogg caught wind of the YouTube video and objected, demanding that Peloton remove it on the sole basis of the use of the word SPIN, prompting Peloton to seek cancellation of Mad Dogg’s trademark registration.
Peloton’s petitions, one seeking cancellation and the other partial cancellation of the trademarks, list several compelling facts. Among those facts is the definition of Spin bikes, which Peloton defines as “a type of indoor exercise cycle that closely mimics the ride of an actual bike, including the ability to stand up on pedals (like on a real bike).” They further define spin classes as “typically held at a gym or workout studio, where multiple spin bikes are placed in a room, usually close together, with an instructor in front. The class usually involves loud music, energetic instructions and a community atmosphere of encouragement and competition.” A Google search also lists a variety of different companies such as Peloton, SoulCycle, Flywheel, NordicTrack, among others, in reviews by various publications.
To add to the list of compelling reasons to terminate Mad Dogg’s registrations of their Spin marks, Peloton states that “five minutes of simple Google searching” . . . makes it easy to see that “everyone in the world, other than Mad Dogg, believes that ‘spin’ and ‘spinning’ are generic terms to describe a form of exercise bike and in-studio class.” Peloton then aggressively proceeds to make their point by adding a fully-charged list of examples from their Google search. Peloton’s search includes Wikipedia and Urban Dictionary as well articles, which include some from publications such as The New York Times, The Washington Post, Bloomberg, and TeenVogue, to name a few. In a piece by the online outlet TechDirt, it reported on the “spin” and “spinning” phenomenon best whenit reported that, “Much like other types of workout classes, nobody sees spinning as a source identifier. . .Nobody thinks of Mad Dogg Athletics. Hell, most people haven’t even heard of MDA. . .The term spinning is generic. It just is.”
With all the examples and evidence raised by Peloton, it appears that their prayer for relief that the registrations may be cancelled, whether in full or in part, may, pursuant to 15 U.S.C. §1064(3), be granted in their favor.
A competitor using your brand to sell the same or similar products/services can be devastating to your business. That is what trademark law is designed to protect, confusion in the marketplace. But what if a company uses your brand in the metadata that directs where their ads show up, while your brand is never shown in the outward facing public part of the ad? Is that allowed? You might be surprised.
Let’s start with what exactly is metadata. Metadata is defined as a set of data that describes and gives information about other data. Clear as mud? A good example is when you take pictures with your cell phone while on vacation. The time, date, and location information of when/where you took the picture is saved within the picture itself. You may not see it, but the image file contains that information, which is called metadata.
The question of whether a person or entity can use another’s registered trademark as a search term on an Internet search engine and in ads on a search results page is an issue the courts have addressed on various occasions. On August 13, 2020, the United States Court of Appeals for the Fourth Circuit decided that it is allowed so long as there is no likelihood of confusion under 15 U.S.C.S. §1114.
In Passport Health, LLC. v. Avance Health Sys., 823 Fed. Appx. 141 (4th Cir. 2020), the court stated that a defendant’s use of a plaintiff’s federally registered mark in its ads were dispelled by the content of the defendant’s site. The Court also looked at the intent of the defendant with regards to its use of the plaintiff’s federally registered mark. Additionally, it was determined that the plaintiff and defendant’s marks were dissimilar, lessening any potential likelihood of confusion.
Prior cases, such as Lamparello v. Farwell, 420 F.3d 309 (4th Cir. 2005), the court held that the doctrine holds a competitor liable under trademark law if the competitor “lures potential customers away . . . by initially passing off its goods as those of the producers, even if confusion as to the source of the goods is dispelled by the time the goods are consummated.” In Lamparello, Reverend Jerry Falwell contended that the use of the defendant’s domain name, www.fallwell.com, infringed his marks and caused confusion since some of his followers often misspelled his name and might go to that site under the assumption that it was his. Because the content of the site was so different from Falwell’s actual site, the Court determined that any likelihood of confusion would be dispelled immediately upon entering the site.
In USA Nutraceuticals Grp., the United States District Court for the Southern District of Florida stated that initial interest confusion occurs when “a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated.” The court further stated that although other courts, including the Second, Seventh and Ninth Circuits, have held that this form of confusion is actionable under the Lanham Act, the Eleventh Circuit has not adopted this standard and finds it unconvincing. USA Nutraceuticals Grp., Inc. v. BPI Sports, LLC, 165 F. Supp. 3d 1256, 1265-66.
When determining whether using another’s registered trademark as a search term on an internet search engine and in ads on a search results page, the courts use 9 factors to determine whether or not the use is infringing on the plaintiff’s registered mark, although the factors used vary depending on the case. Those factors are: (1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the holder or the marks; (5) the similarity of advertising used by the holder of the marks; (6) the defendant’s intent; (7) actual confusion; (8) the quality of the defendant’s product; and (9) the sophistication of the consuming public. Passport, 823 Fed. Appx., at 148. Actual confusion is the most significant factor. Id at 153.
Another case to consider is Rosetta Stone Ltd. v. Google, Inc., 676 F.3d (4th Cir. 2012). In this case, the Court considered Rosetta Stone’s allegation that Google’s AdWords policy infringed on its trademark. Google’s policy allowed third parties to use Rosetta Stone’s trademark as an AdWord and in their resulting ads. But under the Rosetta Stone scenario, the Court considered the similarity of the marks of little value since nominative fair use was used as an affirmative defense to infringement. Also, the defendants claimed the use was not meant to pass off their product as that of the plaintiff’s. The Court instead analyzed and considered evidence of consumers that were confused by the results of the search. The Court also considered evidence of consumers that remained confused even after they reached the third party’s site and received the third party’s product.
The main issue with using keywords deals with the initial interest confusion doctrine. This doctrine is mentioned in the case of Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009). There, the First Circuit developed a list of factors that would be used to determine the likelihood of confusion. Those factors are: (1) the similarity of the marks; (2) the similarity of the goods; (3) relationship between channels of trade; (4) relationship between advertising; (5) classes of prospective consumers; (6) evidence of actual confusion (of internet) consumers; (7) defendant’s subjective intent in using the mark; and (7) overall strength of the mark. Additional likelihood of confusion factors for the internet include: (1) mechanics of web browsing and internet navigation (ability to reverse course); (2) mechanics of the specific consumer search at issue; (3) content of the search results webpage that was displayed, including content of the sponsored link itself; (4) downstream content on the defendant’s linked website likely to compound any confusion; (5) how web-savvy and sophisticated the plaintiff’s potential consumers are; (6) specific context of a consumer who has deliberately searched mark only to find sponsored link of another; and (7) in light of the above factors (1-6), the duration of the resulting confusion. The factors and considerations taken by the of Hearts on Fire Courtare very similar to those of Rosetta Stone.
The answer to whether keywords that infringe on another’s registered trademark can be used to by another to direct consumer traffic to a comparable, related product is that “it depends”. The courts have varying views and outcomes when it comes to this issue and there does not seem to be any new ruling that provides a bright line as to what conduct is allowable and what conduct is not.
This blog article was written by Eva Sarmiento, legal intern at Assouline & Berlowe and JD candidate 2021 at Nova Southeastern University Law School, (reviewed by Greg M. Popowitz, Esq.)
Moving on from 2020 does not mean we have moved on from the scourge that is COVID-19. However, the COVID vaccine is finally here! Though distribution has been slow, employers are planning ahead and wondering if they can require employees to get a vaccine as a condition to returning to work. The short answer is yes, but there are some important factors to take into consideration to avoid potential risks, such as compliance with the Americans with Disabilities Act (ADA), Title VII of the Civil Rights Act of 1964 (Title VII), and other state and federal employment laws.
According to newly published EEOC guidance, employers, in general, can require employees to be vaccinated against COVID-19 and have determined that administration of a vaccine is not a medical examination under the ADA. “If a vaccine is administered to an employee by an employer for protection against contracting COVID-19, the employer is not seeking information about an individual’s impairments or current health status and, therefore, it is not a medical examination.” However, employers should be careful with any pre-vaccination questions as those could be subject to ADA laws. Employers need to make sure that these questions are job-related and consistent with business necessity.
Of course, there are always exceptions to the general rule. Employees who have medical concerns related to a disability or sincerely held religious beliefs that preclude them from being vaccinated may be exempted from the vaccination requirement. In these scenarios, a reasonable accommodation that does not pose an undue hardship to the employer’s business may be required, such as allowing the employee to work from home, requiring the employee wear protective equipment at all times, or providing a separate space for the employee to work.
Where an accommodation is not possible or cannot substantially reduce the risk of infection to others, the employer must be able to demonstrate that the unvaccinated employee poses a “direct threat” to the safety and health of other individuals at the workplace. The following factors should be evaluated in determining if a direct threat at the workplace exists:
the duration of the risk
the nature and severity of the potential harm
the likelihood that the potential harm will occur
the imminence of the potential harm
If there are no reasonable accommodations available and the employer finds that the employee does pose a direct threat to others, the employee may be prohibited from physically entering the workplace, but this does not mean the employer can terminate the worker without liability. Employers will need to determine if any other rights apply under other federal, state or local laws.
Finally, employers are not shielded from liability if an employee suffers adverse effects from a mandated vaccine administered by the employer or a third party with whom the employer has contracted. Therefore, the best option for employers is to encourage employees to take the vaccine voluntarily rather than mandating it. Employers can choose to give incentives to those employees that decide to get the vaccine to promote voluntary compliance.
Always best to contact legal counsel if you have any further questions.
On June 30, 2020, the United States Supreme Court, in an opinion authored by Justice Ginsburg in “United States Patent and Trademark Office v. Booking.com B.V.,” decided that “Booking.com” was a name that was eligible for federal trademark registration. In doing so, the Court rejected the United States Patented Trademark Office’s (USPTO) “nearly per se rule” and instead held that the proper standard of whether a term is “generic,” depends on “whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
To be eligible for trademark registration under the Lanham Act, a mark must be sufficiently “distinctive” meaning that “the goods of the applicant may be distinguished from the goods of others.” “Distinctiveness,” should be viewed on a spectrum. On one end are the most distinctive marks, “arbitrary” (‘Camel cigarettes’), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (Tide laundry detergent).” . On a lower part of the spectrum are “descriptive” marks, which by themselves are not eligible for trademark registration. Instead, the mark must have acquired distinctiveness, meaning that “in the minds of the public,” the mark is significant. Finally, the lowest portion of the “distinctive” spectrum is “generic.” This refers to marks such as the name of the good itself (e.g. “wine”).
Though the word “booking” on its own would likely fall into the generic portion of the distinctiveness spectrum, adding “.com” pushes the mark to “descriptive.” As the Court explained, “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” Thus, the Court would need to make a finding that consumers construe “booking.com” to represent not one hotel reservation service, but instead the class of hotel reservation services. The Supreme Court stated simply that they accepted the lower court’s findings that consumers do not perceive “Booking.com” in this manner, and as such, “Booking.com” is not generic. On this finding alone, the Court found this case could be resolved.
The PTO disagreed, and attempted to argue for the following rule,
“when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic. In other words, every “generic.com” term is generic according to the PTO, absent exceptional circumstances.”
The PTO advocated for this rule relying on the same line of logic of the matter of, “Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.” In the PTO’s argument, that case stands for the proposition that adding the word “company” to a generic word does not confer trademark eligibility. The PTO argued that the word “company” and “.com” should be treated exactly the same.
The Court soundly rejected this argument, pointing out that only one entity may occupy a particular domain name, unlike adding the word “company” or “incorporated”. Thus, adding “.com” infers to consumers that this is a “specific entity.” Additionally, the Court found that the rule from the Goodyear’s case (referenced above) as articulated by the PTO was mistaken. The Court explained, “Instead, Goodyear reflects a more modest principle, harmonious with Congress’ subsequent enactment: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”
What is crucial to note, is that the Court did not instead adopt another “per se” rule, that adding “.com” to the end of a generic word will always guarantee trademark registration eligibility for the mark. Instead, the Court would require parties to show evidence that the public would in fact see that mark as “distinguishing.” To make this determination, the Court stated that the type of evidence to be considered should be “consumer surveys, . . . dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210–211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000).
For any questions about the case or how to handle your trademark strategy, please contact our office below.
This article was written by Emilio E. Rodriguez, Legal Intern for Assouline & Berlowe PA (under the direction of Partner Greg Popowitz). Emilio is a student at the University of Miami Law School.
Among other things, the Families First Coronavirus Relief Act (FFCRA) provides paid leave to employees to care for a child and paid sick leave. Though the FFCRA generally applies to employers with less than 500 employees, employers with less than 50 employees can be exempt if compliance with the FFCRA would jeopardize “the viability of the employer’s business as a going concern.” Upon enactment, Congress did not clarify the mechanism for claiming an exemption, but the Department of Labor (DOL) recently issued some guidance.
A small business (with fewer than 50 employees) may be exempt from certain paid sick leave and expanded family and medical leave requirements if: (a) leave is requested because the employee’s child’s school or place of care is closed, or child care provider is unavailable, due to COVID-19 related reasons; and (b) providing that employee such leave would jeopardize the viability of the employer’s business as a going concern. As to (b), an authorized officer of the business must determine that at least one of the following three conditions is satisfied:
the requested leave would result in the small business’s expenses and financial obligations to exceed available business revenues and cause the small business to cease operating at minimal capacity; or
the absence of the employee or employees requesting leave would entail a substantial risk to the financial health or operational capabilities of the business because of their specialized skills, knowledge of the business or responsibilities; or
there are not sufficient workers who are able, willing and qualified, and who will be available at the time and place needed, to perform the labor or services provided by the employee or employees requesting leave, and those labor or services are needed for the small business to operate at minimal capacity.
The exemption applies only to leave requests under the FFCRA due to school closures and child care unavailability and does not exempt small businesses from providing sick leave for any of the other types of permissible requests under the FFCRA.
The DOL does not explain how small businesses go about claiming the exemption and specifically advises employers not to send any materials to the DOL. So what is an employer to do? We recommend having an authorized officer of the employer sign a statement verifying that one or more of the three qualifying reasons apply and attach supporting materials if available. The employer must maintain this record for at least four (4) years in case of a lawsuit, DOL audit or other challenge. Remember that this exemption only applies to employers with less than 50 employees and is otherwise inapplicable to employers with 51 to 499 employees.
Patent applications are routinely a back and forth process between the patent applicant and the Patent Office. In some rare situations, a third party can submit evidence of prior use to the USPTO during the application process. However, the third party cannot actively participate in the application process.
After a patent is granted, third parties are increasingly using inter parties reviews (IPR) to challenge claims to an issued patent. An IPR is conducted at the Patent Trial and Appeal Board (PTAB) where it will review the patentability of one or more claims based on Section 102 (anticipation) or Section 103 (obviousness).
In a recent decision by The Supreme Court of the United States (SCOTUS) in Thryv v. Click-to-Call, the Court was tasked with deciding whether 35 U.S.C. 314(d) permits judicial review of the PTAB’s decision to institute an IPR upon finding that Section 315(b)’s time bar did not apply. Section 314(d) states that “[t]he determination by the Director [of the Patent Office] whether to institute an inter parties review under this section shall be final and nonappealable”. Section 215(b), the time bar, states that “[a]n inter parties review may not be instituted if the petition requesting the proceedings us filed more than one year after that date on which the petitioner … is served with a complaint alleging infringement of the patent”.
Despite the long procedural history, the case boils down to whether there should be judicial review of the PTAB’s decision or is the action is limited to the Director of the Patent Office. In a 7-2 majority opinion written by Justice Ginsburg, the Court held that there is no judicial review of the USPTO’s authority to decide whether a party properly petitioned under the AIA within a year of being sued for patent infringement, or was in privity with a supplier, business partner or other party who had been sued.
The unsettling part of this opinion is that the USPTO admitted that the IPR proceeding should not have been instituted due to the privity of the underlying parties and resulting time bar. However, SCOTUS’ decision says a time bar decision is not judicially reviewable under Sections 314(b) and 315(d). Justice Giunburg stated that the language supports the Patent Office’s goal of removing bad patents.
The result will cede more power to the Patent Office’s Precedential Opinion Panel (POP), where PTO management, including Director Andrei Iancu, exercises discretionary review over panel decisions.
The Intellectual Property team at Assouline and Berlowe includes two Registered Patent Attorneys, Peter Koziol and Greg Popowitz. For any questions about the case or how to handle your patent strategy, please contact our office below.