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.
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.
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.)
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.
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.
Intellectual Property Partner Greg Popowitz recently recorded a webinar on the Zoom platform titled Branding and Business, with a Primer on Non-Use Due to Covid-19. The course can be found here.
Mr. Popowitz speaks about the intersection of business and branding. He covers topics such as the importance of a brand, how to select a brand, how to protect a brand, and how to enforce/monetize your brand.
Another focus of the webinar is on the topic of trademark non-use. An often overlooked subject of trademark law, non-use is a critical topic for brand holders in light of the current COVID-19 pandemic. The Trademark Manual of Examining Procedure (TMEP) outlines several scenarios of excusable non-use. The webinar discusses those scenarios and how trademark owners can document their non-use to fight off challenges to their trademark rights in the future due to non-use.
Mr. Popowitz also references a statistic he saw during a trip to the United States Patent and Trademark Office (USPTO) in 2018. The average person sees approximately 1,500 brands during the course of their day. 1,500? That seems like a lot. But think about all the advertisements on TV and the web, driving on the road (billboards, badges on cars), and walking through a grocery store or shopping mall. Of course, this statistic does not apply to our current stay at home orders during COVID-19.
For more information about the intersection of branding and business, please listen to the webinar. If you have any additional questions about Intellectual Property, contact Mr. Popowitz below.
We are in trying times. The Coronavirus known as Covid-19 has impacted the world. Businesses are trying to navigate how to operate in the middle of a pandemic. Emergency orders are continually coming out from all levels of government regarding essential and non-essential businesses, including “stay at home” orders. What if you are deemed a non-essential business and your business is effectively shutdown as a result? While direct revenue is likely a pressing concern, what about the brands around your products or services that you have built over the years?
Trademark law is centered upon use of a brand in commerce. Without use, the brand will eventually become abandoned. After three years of non-use without any attempt to resume use, the USPTO will presume the owner abandoned the brand. Section 71 of the Trademark Act is designed to remove “deadwood” from the register. However, it is not designed to cancel registrations due to a temporary interruption of use of the brand due to circumstances beyond the control of the trademark owner.
The Trademark Manual of Examination and Procedure (TMEP) details excusable (and non-excusable) non-use of a brand. See TMEP 1613.11.
Some examples of excusablenon-use include:
Trade Embargo or Other Circumstance Beyond Holder’s Control (Covid-19?): When the holder of the registered brand is willing and able to continue use of the brand in commerce, but is unable to do so due to a trade embargo
Sale of Business: Temporary non-use during the sale
Retooling: Limited circumstances if the tooling was critical and there was no other means to produce without the shutdown for tooling
Orders on Hand: If the product is the kind of good that cannot be produced quickly or in large numbers (for example, airplanes), but there are orders on hand and activity toward filling them
llness, Fire, and Other Catastrophes (Covid-19?): Illness, fire, and other catastrophes may create situations of temporary non-use, with the holder being able to outline arrangements and plans for resumption of use. Note, illness of the owner does not qualify as excusable non-use unless the business cannot operate without the owner
Examples of non-excusable non-use:
Business Decision: A business decision to stop use of the brand is not beyond the holder’s control
Decreased Demand: Decreased demand for the product sold under the brand, resulting in its discontinuance for an indefinite period
Negotiations with Distributors: Helps to show lack of intention to abandon the mark but not excusable non-use
Use in Foreign Country: This has no bearing on excusable non-use in the United States that can be regulated by the U.S. Congress (use in commerce)
Use of Mark on Different Goods/Services: Using the brand on goods/services outside of the registered class
Use of Mark in Another Form: Material changes to mark
Non-use of a brand due to Covid-19 may be covered as excusable non-use under “Other Circumstance Beyond Holder’s Control” and/or “Catastrophe”. If you have stopped using your brand, it is advisable to document the date you stopped using the brand in all related products and/or services covered by your trademark registration, including why you stopped using the brand. For example, shutdown orders by the government, lack of supply chain to make the products, or workers contracting Covid-19 and directly impacting your facilities. Documenting this situation will suport a declaration surrounding excusable non-use if or when you need to provide justification for the gap of time for non-use of your brand(s). You had spent considerable time and money building your brand through the years. It is important you take the necessary steps to protect the brand if use has temporarily stopped during this pandemic.
For any questions about excusable non-use or to look into protecting your brands, contact Greg Popowitz.
Registered Patent Attorney and Partner Peter Koziol will be presenting an audio webcast on March 3, 2020 (at noon) on the subject of Mobile Applications, Gaming and Entertainment Patent Law. To sign up to attend the presentation, click here. Presented by the Entertainment, Arts, and Sports Law (EASL) section of the Florida Bar, the one hour CLE will provide Technology Credit, which is a relatively new requirement for Florida attorneys.
Peter is a seasoned Intellectual Property attorney that handles the prosecution and litigation surrounding patents, trademarks, copyrights, and trade secrets. Peter has developed a unique skill set regarding application/software related patents given his background in software engineering and his litigation surrounding software patents.
For any questions about the presentation and Intellectual Property, contact Peter Koziol and the Intellectual Property team at Assouline & Berlowe.