If you receive an issued patent, it is a big accomplishment to protect your invention. You succeeded in showing the United States Patent and Trademark Office (USPTO) that your invention was useful, novel, and non-obvious. Aside from the business implications to monetize the invention covered by the patent, often overlooked are the mandatory payment of maintenance fees at the 3.5, 7.5, and 11.5 year points after issuance of the patent.
Assouline & Berlowe recently helped a client revive an expired patent for unintentional delay. A big win for the client as he regained his patent rights that were lost. If a patent owner misses the deadline to pay the applicable maintenance fee, there is a six month grace period to pay with added filing fees. After the grace period expires, the patent will become abandoned.
If the failure to pay the maintenance fee was unintentional, the patent owner can petition the USPTO to reinstate the patent due the unintentional delay. Such petitions are generally looked upon favorably (if unintentional) by the USPTO if filed within two years from the deadline. However, if the petition is filed after two years from the deadline, the USPTO in 2020 updated their rules for proving unintentional delay.
The USPTO may ask for additional information to assess the circumstances behind the nature of the unintentional delay. The patent owner will have to demonstrate that the entire duration of the delay was unintentional. However, if any portion of the delay was intentional, the delay will not qualify as unintentional and the request will likely be denied.
Given the value of an issued patent, it is important for patent owners to calendar the maintenance fee deadlines upon receipt of the issued patent. Notably, the maintenance fee deadlines are printed on the inside of the patent deed, both electronically and in hard copy. If a patent maintenance fee deadline is missed unintentionally, it is critical to act promptly and engage knowledgeable patent counsel to petition for reinstatement of the abandoned patent.
If you have questions about your patent or Intellectual Property rights, please contact Florida Bar Board Certified Intellectual Property Attorney Greg Popowitz.
The recipe to make Coca Cola is one of the oldest trade secrets. But what is a trade secret and how do you protect it?
The Defend Trade Secret Act (DTSA) was signed into federal law in 2016. Since being enacted, the parameters detailing how to interpret the DTSA has worked its way through the federal court system, as is typical for any new federal law. However, with the proliferation of remote work starting in 2020 due to the Covid-19 pandemic, maintaining trade secrets by remote workers has become a challenging task. The safeguards required for on-site employees must be revised to account for employees accessing trade secrets remotely.
The DTSA defines a trade secret as:
all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if
(A) the owner thereof has taken reasonable measures to keep such information secret; and
(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.
The DTSA requires an owner to take “reasonable measures” to keep trade secret information secret, but the term “reasonable measures” is not defined in the DTSA. Courts have held that “reasonable measures” include implementing written confidentiality policies, execution of nondisclosure agreements, limiting access to the trade secrets to personnel on a “need to know” basis using multi-layer credentialed access, and placing restrictions on the unauthorized transfer and use of company owned data.
Before addressing how such reasonable measures can be extended to employees working remotely, the following should be considered:
Is the employee at a home office or in a public setting?
Do other persons have access to the employee while viewing the trade secret?
Is the trade secret being accessed on an open Internet connection?
How long is the trade secret available for viewing once opened?
Is the trade secret downloaded or stored on the remote employee’s local computer indefinitely?
Is the trade secret itself password protected and not only credentialed access for downloading the trade secret?
Should certain trade secrets only be accessible on-site at the employer’s facilities?
Failure to take reasonable measures to protect a company’s trade secrets could result in the trade secret losing its protected status. If that occurs and the trade secret is made public and accessible to competitors without recourse, the company may lose its competitive advantage.
An employer should have a robust employee manual that details how trade secrets are treated, who should have access to the trade secret depending on their status/role within the company, and other industry-specific factors to ensure the trade secret remains secret.
Another aspect of the DTSA is a safe harbor provision for employees (whistleblowers) who disclose a trade secret solely for the purpose of reporting or investigating a suspected violation of law or in a lawsuit made under seal. Employers are advised to pay close attention to the notice provision within the whistleblower section of the DTSA since compliance with the DTSA whistleblower notice provision could affect the ability of the employer to seek certain remedies. To be clear, employers must notify employees of the existence of whistleblower immunity under the DTSA in order to seek punitive damages and attorney’s fees against a former employee for trade secret misappropriation.
Notice of whistleblower immunity under the DTSA should be included in employee manuals, policies, confidentiality and other employment-related agreements. Employers should look at the language in these materials to ensure protection of trade secrets in the new remote work world, which certainly appears to be here to stay. If proper safeguards are not in place, the employer may lose trade secret protections and leave their trade secrets unprotected.
For any questions about the DTSA and complying with its requirements to protect your important trade secrets, contact Greg Popowitz, Board Certified Intellectual Property Attorney, and Ellen Leibovitch, Board Certified Labor and Employment Attorney.
So far in 2022, GS Holistic, LLC has filed 98 lawsuits in Florida federal courts for trademark infringement to enforce its rights in various brands for vape products and accessories, including G-Pen and Stündenglass. Most consumers expect a cease and desist letter before a party initiates a lawsuit but that is not required. A plaintiff does need to conduct its own due diligence before filing a lawsuit to assess the merit in its claims. If a lawsuit is baseless or frivolous, the plaintiff may be subject to sanctions under Rule 11 of the Federal Rules of Civil Procedure.
To assess the infringement, a plaintiff may use a third party investigator to order the allegedly infringing product. When the product is received, the plaintiff assesses whether or not the seller’s product is infringing any of their intellectual property, including trademark rights. If yes, the plaintiff may file suit and use the investigator’s order as evidence of infringement.
That is the tactic in most of GS Holistic’s cases. Given the volume of federal lawsuits GS Holistic has filed in Florida this year, use of their brands G-Pen and Stündenglass are prevalent across the state. As part of a trademark owner’s rights is the obligation to police against unauthorized use of confusingly similar marks. If you suspect there is infringement, you should actively enforce your rights. If not, you may lose your trademark rights.
In case of trademark infringement, defendants should look at the DuPont factors to assess the strength or weakness of the plaintiff’s trademark infringement claim. A defendant should also look to affirmative defenses, such as laches, statute of limitations, and invalidity of the underlying trademark registration. Being served with a federal trademark infringement lawsuit can be daunting, but engaging competent intellectual property counsel will help you assess the claims and develop a strategy on defending the case, including claims against the individual owners of the entity.
For any questions about your Intellectual Property questions, please contact Greg below:
There are a few simple things you can do as a business owner to protect your Intellectual Property (IP) and avoid the common mistakes. Knowledge is key so you can plan accordingly and take the right steps to maximize and protect your valuable IP.
1. Failing to federally register your brand
You are starting a new business providing services or products locally. You create a catchy brand and logo. Your business takes off and you are a viral hit! Now you are doing business throughout the entire Southeast. A competitor copies your brand and starts using it in California for identical services/products. What can you do? Well, if you only have common law rights in the Southeast and have no presence in California, there may be little you can do.
But, if you had applied for and received federal protection of your brand through the United States Patent and Trademark Office (USPTO), you have constructive use of your brand throughout the United States as of the registration date. In that situation, you would likely be able to stop the infringer, or if desirable, negotiate a license for the company to use your brand on the West coast. It is important to protect your Intellectual Property early in the process so you can stop potential infringers and minimize the impact/damages to your business from copycats.
2. Waiting too long to file for patent protection
Often potential clients tell me that they started selling their products more than a year ago. This is one of the most frustrating aspects of my job as their invention is now in the public domain. An inventor/applicant must file for patent protection within one year of any sale, offer for sale, or public disclosure of the invention. This is called a statutory bar deadline, which is not extendable. In some cases, the inventor/applicant may still seek protection for improvements on their invention that occurred within the one year timing, but the underlying invention that was sold more than one year prior is now in the public domain.
It is important to meet with a patent attorney early in the process. That way you can learn about critical dates and timing considerations as you develop your invention and decide how to best protect your invention. By understanding the patent process, you can make educated decisions about when or if you want to seek patent protection. If do not not have that information, you could be unintentionally giving up your patent rights.
3. Getting a written copyright assignment when hiring an artist/graphic designer
A common misconception is that when you hire and pay an artist to create your logo or a photographer to take pictures, you own the copyright interest in the work prepared. Not true. If you hire an independent contractor to create the graphic and don’t get a written assignment of the copyright interest, you are left with an implied license to use the graphic. If you are using it as a brand, you don’t have ownership in the logo to apply for federal trademark protection. To properly own the copyright interest, you must secure a written copyright assignment from the artist.
In some cases, a company uses an employee to create the graphics. If the employee creates the graphic in the scope of their employment, the artist is automatically the employer company (not the employee). Knowing how to properly secure your Intellectual Property rights is critical. Otherwise, you may not even be aware that you have minimal or no rights in what you thought was your Intellectual Property.
You secured a trademark registration from the USPTO, congrats! Now what? Take a few minutes and record your trademark registration with U.S. Customs and Border Protection (CBP). Why? Let CBP help you enforce your trademark rights with products imported into the country.
If you record your trademark (or copyright) registration with CBP, they will cross reference branded products crossing the US border against the CBP database. If there is a hit, CBP will freeze the products at the border and notify you as the registrant to confirm if they are your products or if you authorized the import of products that use your brand. This is a great tool that is often overlooked. Why let the products hit the market when CBP can freeze them at the border?
5. Not using an Attorney to Protect your Intellectual Property
For most start ups and independent entrepreneurs, budget is a primary consideration. Most business owners know they need to protect their IP, but often do not prioritize the budget to hire competent counsel to navigate the application processes to secure the applicable registrations. This can be fatal to your IP protection years down the road. Compared to patent applications, trademark and copyright applications are not overly complex for applicants to prepare on their own. However, knowing what and why certain information goes into an application can be critical to maintaining the validity of your rights.
For example, you prepare and file a trademark application for the brand ABC, owned by the ABC Company. You state in the trademark application that the brand ABC was first used in commerce on January 1, 2022. That is the date your formed ABC Company with the state. But you started selling products with the brand ABC on June 1, 2022, six months later. The sworn statement you made to the federal government was inaccurate. The USPTO is unlikely to catch the issue as they accept your sworn statement. But when you enforce your trademark registration against an infringer harming your business, it may be grounds to invalidate your trademark registration. Then you are left with common law rights. An attorney will ask questions so you understand the legal implications of your answers in a trademark application.
For any questions about your Intellectual Property questions, please contact Greg below:
The Trademark Trial and Appeal Board (TTAB) found the mark JOKER for cigarette paper dissimilar with the mark NOJOKE for e-cigarettes. Republic Technologies, owner of the mark JOKER and related federal trademark registration, opposed an application to register the mark NOJOKE for e-cigarette liquid.
During the federal trademark application process, after examination by the Examining Attorney, a trademark application is published in the Official Gazette for 30 days. During these 30 days, a third party can oppose the trademark application with the TTAB presuming there are grounds to challenge the application. Until the opposition is resolved, the application process is stalled. Often oppositions are based on a likelihood on confusion between the opposer’s mark and the applied for mark, as was the case with Republic Technologies. A TTAB opposition is effectively litigation within the TTAB, but the fight is over the right to register the applied for mark, as opposed to damages in typical litigation.
Some trademark owners engage watch services to monitor what marks are applied for with the United States Patent and Trademark Office (USPTO) and what marks reach the publication period. This is critical so the potential opposer can either contact the applicant directly, or formally oppose the application during the 30 day publication window with the USPTO. If this window is missed, the opposer would have to wait and seek cancellation of any resulting registration. The opposer may also have grounds to assert trademark infringement if or when the applicant begins using the applied for mark in business.
In some cases, the opposer and applicant agree to enter into a co-existence agreement. A co-existence agreement is a contract where each party agrees that the respective marks (brands) do not cause confusion in the marketplace, that the parties will not oppose each other’s applications/registrations in the specified classes, and other conditions as the parties agree upon. Oftentimes, an Office action rejection by an Examining Attorney based on likelihood of confusion will be retracted if the parties enter into a co-existence agreement with the correct language.
Turning back to the TTAB decision here, the TTAB stated that the products are related as they are sold by the same retailers (cigarette paper and e-cigarette liquid). The board also noted that the federal government restricts the marketing of cigarette paper. This fact decreased the strength of opposer’s mark as the opposer is limited to direct retail sales, trade shows, and point of sale engagement.
Although the two marks use the same base of JOKE, the TTAB held that that two marks have different impressions. NOJOKE emphasizes the truthfulness of something potentially unbelievable, and communicates an air of seriousness. While JOKER, and its design mark (logo) gives the impression of a court jester, a comic foolish clown. The TTAB stated that despite the common base term, the meaning and impressions of the marks are not similar. The Board dismissed the opposition, which allows the application for NOJOKE to proceed.
If you need help monitoring your trademark portfolio or want to oppose/cancel a pending trademark application/registration, contact Board Certified Intellectual Property Attorney Greg Popowitz.
As an attorney prosecuting patent applications with the United States Patent and Trademark Office (USPTO), clients often ask how long the patent application process will take. Sadly, I can only give an estimate based on historical times and the subject matter of the invention. The invention subject matter is important as art units within the Patent Office have wide ranging backlogs for review of pending applications.
Once the patent application is filed, we wait for the first office action on the merits. This is when the USPTO Examiner substantively reviews the patent application. Now, the Patent Office has updated the First Office Action Estimator. After entering the patent application serial number, the estimator will provide an estimate for a first office action to be issued (e.g., 30 months). The estimate is not guaranteed but is a good general timeframe for patent applicants to gauge expectations.
Setting expectations for first office review timing is important for the applicant. First, if the expectation is too long, there are options to accelerate the review of a patent application. The most common option is to pay an increased filing fee where the patent office will review the application approximately six months from the filing date of the application, and the target is to either grant or issue a final (second) rejection by the one year anniversary of the filing date. Another option to accelerate the patent office review are petitions to make special, the basis of which may include: applicant’s age (over 65), health, prospective manufacture, infringement, and environmental quality (to name a few). It is critical to be accurate in these petitions as they are often used as grounds to try and invalidate patents during litigation.
Second, if an applicant becomes aware of a potential infringement of the patent application proposed claims (as written), the applicant can preserve its provisional rights. Although similar in name to a provisional patent application, provisional rights are unrelated. If an applicant sends notice to the potential infringer of the published patent application, and the claims are in substantially the same form at issuance, applicant preserves its provisional rights and may be able to secure damages from the notice date, as opposed to when the patent issues.
Third, knowing when a patent will issue is important if the applicant is aware of infringement of the invention covered by the patent claims. A patent infringement lawsuit can only be filed once the patent issues. Often, once a patent application receives a Notice of Allowance, the applicant and its attorneys can start preparing a federal complaint for patent infringement, if infringement is occurring. Once the issue fee is paid, the applicant (soon to be patent holder) will be prepared to file its lawsuit in federal court on the day the patent issues.
For questions about your invention or the patent application/litigation process, please contact Greg Popowitz and the Intellectual Property team at Assouline & Berlowe PA.
The Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020 established the Copyright Claims Board (CCB). The CCB is a new administrative court housed within the United States Copyright Office that is set to go into effect on December 27, 2021. The CCB is designed to provide a cheaper and more efficient venue over federal court to litigate certain copyright infringement claims. The CCB will have three full time judges (a/k/a Copyright Claims Officers) appointed by the Librarian of Congress, with at least two full time attorneys to support their efforts.
The CCB will hear certain civil based copyright claims, counterclaims, and defenses. Examples include infringement claims, declaratory relief actions of non-infringement, and claims for misrepresentation related to a Digital Millennium Copyright Act (DMCA) takedown notice. While the CCB can award monetary damages and help settle claims and counterclaims, the CCB can only rule on copyright infringement claims for underlying copyrighted works that are already registered. This is in line with the Fourth Estate SCOTUS case requiring registration, not merely application, before brining a federal action of copyright infringement. If there is pending federal litigation on the underlying copyright, the federal court would need to grant a stay and permit the CCB to proceed.
Procedurally, the filing party (claimant) must initiate one of more claims for the CCB to review. If in compliance, the CCB will permit the proceeding to move forward. Then the claimant has 90 days to serve the accused infringer (or respondent) with a copy of the filed claim and notice, and file proof of service with the CCB.
Notably, a respondent must affirmatively “opt out” of the CCB proceeding within 60 days after being served or they will have effectively consented to have the case heard before the CCB and lose their right to litigate the case in federal court. If the CCB case proceeds, it is designed to move forward with limited discovery, no formal motion practice, and no in-person hearings. Different than federal court (prior to the pandemic at least), all appearances are virtual using Internet based technology.
The CCB is limited to awarding $30,000 maximum for each proceeding. For claims based on timely registered copyrighted works (i.e. entitled to statutory damages), the claimant is eligible to an award of $15,000 in statutory damages per work infringed, with a total of $30,000 possible in one proceeding (excluding attorneys fees and costs).
In a change from existing law, the CASE Act allows for statutory damages for works not timely registered. In this case, a claimant is only eligible for an award of $7,500 in statutory damages per work infringed, with a maximum of $15,000 in any one proceeding (again, excluding attorneys fees and costs). Prior to the CASE Act, a copyright owner could only recover statutory damages if the works were registered before the infringement started or within three months of publication.
The claimant can also elect to recover actual damages and profits up to $30,000 (excluding attorneys fees and costs), in lieu of statutory damages. Attorneys fees and costs are potentially recoverable, with a cap of $5,000, but only in cases where the opposing party has demonstrated “bad faith”.
Notably, while the CCB cannot consider whether a party infringed a copyright work “willfully” when assessing an award of statutory damages, it can consider whether the party agreed to mitigate the alleged infringing activity as an additional factor when awarding statutory damages.
If you are thinking about initiating a claim before the CCB, or if you have been served with a CCB claim and notice, the attorneys at Assouline & Berlowe are here to assist in your Intellectual Property needs.
On December 18, 2021, the Trademark Modernization Act (TMA) goes into effect. What does this mean to brand holders? A lot.
The TMA creates two new ex parte procedures to cancel unused registered trademarks: expungement and reexamination. The purpose of these new procedures is to provide a faster and more efficient process compared to current inter partes cancellation proceedings at the Trademark Trial and Appeal Board (TTAB). Typically, numerous registrations active at the USPTO have either some or all of the services/products listed that are no longer in use. The TMA’s objective is to remove some of this “deadwood” from the trademark register.
For an expungement proceeding, any party may request cancellation of all or some of the goods/services in a registration because they were never used in commerce (a critical requirement under US trademark law). In most cases, the proceeding must be requested between three and ten years from the registration date. For reexamination proceedings, any party may request cancellation of all or some of the goods/services in a use based registration on the basis that the brand was not used for the goods/services before the filing date for an “actual use” application, or the statement of use date for an “intent to use” application. Both these new procedures will be critical for trademark owners to understand so they continue to use their brands, or voluntarily delete unused goods/services from their registration.
Aside from these new procedures, the TMA changes a few existing trademark procedures. First, expungement has been added as a ground in cancellation proceedings, along with the existing grounds for cancellation of non-use and abandonment. Second, a shorter three month period to respond to office actions, down from the prior six month period. After three months, the applicant can request a single three month extension for a $125 filing fee. If there is no response or extension request, the application will go abandoned. The USPTO announced that the implementation of the shortened three month shortened time period for responses has been delayed until December 2022 due to updates to their IT system.
Lastly, the TMA provides statutory authority for the long standing “letter of protest” practice that allows third parties to submit evidence to the USPTO, before registration, that is relevant to a ground for refusal during examination. The TMA provides a two month period for the USPTO to act on a letter of protest, continue the filing fee requirements, and provides that a Director’s decision for a letter of protest is final and non-reviewable.
The TMA will create additional considerations for trademark applicants and registrants as they apply for, and continue to use their brands in commerce. Contact Greg Popowitz and the attorneys at Assouline Berlowe to help navigate through the trademark prosecution process, and any impacts on trademark litigation.
Registered Patent Attorney and Intellectual Property Board Certified Partner Greg Popowitz will be a panelist in an upcoming webinar about non fungible tokens (NFTs). The webinar will cover: 1) What is a NFT?; 2) How are NFTs being used prominently at the moment; 3) Legal issues that have currently arisen and possible conflicts; and 4) Looking forward to where the intersection of NFTs is going with the law as well as local government.
Greg will be presenting with Attorneys Josh Lida and Danielle Dudai for the Broward County Bar Association webinar. The webinar is approved for 1 General & Technology CLE Credit & 1 Business Litigation & Intellectual Property Law Certificate Credits.
Assouline & Berlowe is proud to announce that Partner and Registered Patent Attorney Greg Popowitz has earned board certification from The Florida Bar in Intellectual Property Law. Greg joins a group of only 140 board-certified Florida lawyers in the Intellectual Property practice area.
According to The Florida Bar, only 7% of eligible Florida attorneys have earned board certification in one or more of the bar’s 27 specialty areas. Board certification recognizes attorneys’ special knowledge, skills, and proficiency in their areas of the law and their professionalism and ethics in practice. Board-certified lawyers must have a minimum of five years in law practice, pass an examination specific to their area of practice, undergo a peer review assessment of their competence and character, and satisfy continuing legal education requirements. Greg joins fellow Assouline & Berlowe partner Ellen Leibovitch, who is board-certified in Labor and Employment Law.
Greg, who practices in the firm’s Fort Lauderdale office, helps clients protect their inventions, brands, and other creations using patent, trademark, and copyright law. Greg is a Registered Patent Attorney and he helps secure patents and trademarks before the United States Patent & Trademark Office (USPTO), along with work relating to licensing, co-existence agreements, evaluating new inventions, brands, and technology, clearance searches, and litigation. Greg enjoys counseling clients on the various mechanisms available to protect their Intellectual Property, which ultimately adds value to their business.
Greg earned his J.D. from Nova Southeastern University School of Law and his B.S. in Mechanical Engineering from the Georgia Institute of Technology (Georgia Tech).
For more information about Intellectual Property issues, please contact Greg M. Popowitz, Esq.
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