Category Archives: IP Litigation

GREG POPOWITZ – A New Law Partner, Engineering the Firm’s Success

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Patent Attorney Greg Popowitz, Litigation Partner Eric Assouline, and Legal Assistants Ana Hesny and Juliana Alvarez all toast to Greg Popowitz’s promotion to Partner at Assouline & Berlowe, P.A.

Being an attorney was never in his long term plans.  Growing up in South Florida, Greg Popowitz helped his father build wood projects around the house.  He also had the opportunity to take a Manufacturing class in junior high school.  Being able to construct (and sometimes deconstruct) projects took him down a path towards engineering.   Greg loved being able to see how things work, whether it was a simple mechanical pencil or changing the rotors on an automobile’s brakes. 

With that in mind, Greg applied to the prestigious Georgia Institute of Technology, in Atlanta, Georgia (or “GT” for short).  Greg started his freshman year of college in 1998 and chose to major in mechanical engineering. 

At Georgia Tech, Greg learned about the complexities of design, manufacturing, and failure analysis, just to name a few.  He also learned how important it was to work in a team environment.  Georgia Tech’s diverse student body afforded Greg the opportunity to work with students across the country and the world.  Greg also learned how to effectively manage his time given the highly technical and aggressive curriculum.  The study skills Greg acquired at Georgia Tech would pay handsome dividends for Greg down the road in law school. 

After graduating from Georgia Tech in 2002, Greg began to work for Visteon Corporation, a former subsidiary of Ford Motor Company.  Greg worked on drive shafts in the driveline systems division, based near the Motor City, Detroit Michigan.  Greg’s first rotation at Visteon started in the plant where he worked as a product engineer on current model designs.  Greg was involved in troubleshooting both design and manufacturing issues, which included Six Sigma principles.  Greg presented his findings to high level executives at Ford Motor Company.  Greg also worked on forward model designs, where he conducted durability tests and helped launch the driveshaft for the 2005 Ford Mustang. 

During his time at Visteon, a colleague received a patent on a new driveshaft that used a “slip in tube” design.  Greg started asking questions about patents and how a patent protects new inventions.  Greg spoke to Visteon’s in-house counsel, who happened to be a registered patent attorney.  For the first time, this sparked Greg’s interest in attending law school in order to become a patent attorney. 

In 2006, Greg applied and was accepted at Nova Southeastern Law School (NSU).  Greg also took and passed the patent bar exam in order to become a registered patent agent.  Greg interned at an Intellectual Property law firm in order to learn the practical sides of patent law. 

While interning, Greg saw firsthand how important a well crafted patent is when challenged in major patent litigation.  At NSU, Greg also had the opportunity to interview both George McGovern and John Anderson, former Presidential candidates.

After graduating from NSU (cum laude) and becoming a registered patent attorney, Greg worked at a large Florida law firm handling complex mortgage related litigation.  While the work was challenging, Greg quickly learned he wanted to focus more of his practice on IP and have more direct access to help clients on the front lines. 

Then, Greg accompanied his wife, Bankruptcy Attorney Ashley Popowitz, to a lunch, where he met Ashley’s friend and colleague, Eric Assouline.  Eric and Greg, who both shared an immense love for cars, immediately hit it off.  Eric wanted to find a way that Greg could add to the already highly talented IP and commercial litigation team at Assouline & Berlowe, P.A.

In 2013, Greg was offered an associate position at the Firm.  Greg’s practice centered on two main practice areas:  patent, trademark, and other related Intellectual Property prosecution matters; and commercial and business litigation matters.  On the IP side, Greg was able to speak to clients from the initial intake to delivering a registered trademark or issued patent.  Greg has seen small businesses grow and become recognized brand names.  Greg has been able to play a small role in helping businesses and entrepreneurs protect their inventions and brands and also create assets in the form of IP.  On the litigation side, Greg has been able to help clients bring a wide array of claims and also assist clients in defending similar claims.  While each case is different, Greg has learned to assess the nature of the case and help the firm’s clients achieve their long term goals.  Greg has also been involved in a handful of appeals involving the firm’s cases, which has allowed him to work closely with Eric Assouline to assist in writing appellate briefs regarding orders and judgments involving our clients. 

In April 2018 Greg will already be with Assouline & Berlowe for five years.  Greg has learned a great deal during his limited time at Assouline & Berlowe and he is surrounded by a wealth of talented attorneys and staff geared towards helping the firm’s clients maximize their results.  

Assouline & Berlowe is honored to promote Greg Popowitz to Partner and we are all excited to see how Greg can continue to engineer his and the firm’s success for years to come. 

Keep up the Good Work Greg!

#popowitzpartner

 

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When You Go to Court, all that Matters is “THE LAW” (and Reality)

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Clients often ask attorneys, “what are my chances of winning?”  It sounds like a reasonable question.  But what clients do not seem to understand is that there is “the law” and there is “reality.”  All a good lawyer can tell you is: here is what I think is good about your case and here is what I see as the weaknesses, and here is the law “as I see it”.   Huh?

I was preparing for a hearing in Broward Circuit Court, on an Order to Show Cause why the other party’s entire case against my client and several others should not be dismissed.  I had case law precedent from both the Supreme Court of Florida and the District Court that binds the Judge hearing the case to support my client’s position.  I provided a copy of these cases to opposing counsel as we waited for our turn.

Before our case was heard, opposing counsel came over to me and advised that he agreed to dismiss my client as defendant from the case (leaving other defendants still in the case).  I thought this was great news, because the client would be very happy.

I still had to wait my turn for the hearing, because I wanted to make sure that the Judge’s order clearly reflected that my client was now out of the case.

I waited and waited and then I heard the calendar begin on the next round of hearings.  I asked the Clerk what happened since my case from the earlier round had still not been called.  The Clerk advised that I should notify the Judge that my case was not yet called.  the Judge asked me for the name of the case and I told him.  The Judge then blurted out “I find that cause was shown why the case should not be dismissed.”  As I said, luckily, opposing counsel and I had already agreed that my client was being dismissed from the case.  Opposing counsel so notified the Judge and he was ok with the dismissal of my client.

But what would have happened if we did not work it out?  What would have happened if I did not give opposing counsel a copy of the cases that supported our position?  Instead of going into the hearing with “the law on my side”, I would be going into this hearing with a Judge who had already made up his mind.  Perhaps I could have changed the Judge’s mind.  But I cannot count on that.

Instead, my client would be stuck in this case for who knows how long.  Could we appeal the Judge’s finding of cause to not dismiss the case, maybe.  Courts of appeal do not let you appeal every ruling as soon as it is made.  We could try, but it is likely it would not be heard until the case is over.

Maybe we would win the case in the end.  But maybe not.  And, if we did not win, could we appeal and argue that that the plaintiff’s case should have been dismissed at the Order to Show stage.  Probably.  Would we get the entire proceeding thrown out for failing to follow the correct procedure, maybe.

So many “maybes”.  Hmmm.  Sounds like there is “the law” and there is “reality”. 

Eric N. Assouline, Esq., Litigation Partner, Assouline & Berlowe, P.A.

 

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Expand Your Brand

 

TM So you want to apply for a federal trademark to protect your brand. How does it work?  Does it cover all use of the brand?  These are a sampling of the questions I receive from entrepreneur’s and business owners looking to protect their brands.  Securing a federal trademark is a complicated but worthwhile process.  The Intellectual Property attorneys at Assouline & Berlowe take the time to explain the process to the brand owner so they understand what to expect and how to maximize their protection.

When applying for a federal trademark, you must pick the class of goods/services that your brand covers based on your existing use, or expected use, of the brand in commerce. For example, you own and operate a retail space where apparel is sold and you want to protect the brand name of the retail space (the name of the store).  You may want to seek protection in a services based trademark class for the bran associated with the retail space.  If the apparel sold at the retail space, the products, use the same brand, you may want to seek protection in a second product based class for the applicable apparel.  You can seek federal trademark protection in multiple classes of goods/services in the same application.  Generally, the scope of your federal protection is limited to the class of good/services in your federal trademark registration. Common law rights are handled differently.

In a recently released opinion, the Eleventh Circuit Court of Appeals held that a federal trademark registrant’s services based brand had extended protection related to goods. Savannah College of Art & Design, Inc. v Sportswear, Inc., 2017 U.S. App. LEXIS 19168 (11th Cir. Oct. 3, 2017).  The Court relied on a prior trademark case that extended protection of federally registered service marks to goods, despite little rational as to the basis for the expansion.  The Sportswear case stated that a federal registered service mark does not have to register that mark for goods to “establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing of that mark on goods.” Id. at *15.  The registrant still needs to show the alleged infringer’s use of its brand is creating consumer confusion as to the source or origin of the brand. Notably, the Court did not discuss the “natural zone of expansion” doctrine, which can be used be extend a trademark owner’s rights into a new product line that is a natural expansion of their prior use.

While the Sportswear case helps trademark owners for services assert their rights for related goods, the optimal method of protection is registering the brand in the class from the outset.  As a trademark applicant, you can seek registration based on your actual use of the brand in a services field, while also applying for the same brand in a goods classes based upon your bona intent to use the brand in business in the future.  A well thought out branding strategy may include preserving your rights in a field that you plan to expand into.  While the trademark cannot register until you begin use of the brand in the applicable class, you can effectively preserve your place in line for up to three years (extending use in 6 month intervals) while you are preparing to use the brand in commerce.  Utilizing a trademark attorney helps you develop a branding strategy to maximize your protection now and for the future.  Don’t forget, a trademark is an asset and can have immense value. Just ask Apple and Google, whose brands are estimated to be worth $170B and $101B by Forbes, respectively.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.  Follow him on Twitter @InventionAtty.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

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Protect Your Tech: Florida Bar CLE Edition

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Earlier this month, I had the distinct pleasure to present at the Florida Bar Basic Technology CLE about how businesses, and their lawyers, can protect technology using Intellectual Property.  This was the first time a Florida Bar Basic CLE was focused on technology.  To keep the CLE interactive, the presentations included live tweeting using the #CLEHistory hashtag, interactive polls with the audience, and post presentation video outtakes.  The interactive nature of the CLE was perfect for a technology focused CLE.

My portion of the CLE focused on how technology is used protect intellectual property, with the focus on patents.  There are several options when determining how to use patent law to protect technology, from design patents to provisional and non-provisional utility patents.  There are key timetables and strategic considerations to assess when protecting your technology, both before and after the technology is finalized.

One of the interactive questions, pictured below,  I posted to the live audience was whether someone could put “patent pending” on a product as soon as a patent application was filed.  The question was posted during my presentation and the audience texted their results to get an immediate response to the question.  36% of the audience correctly chose the right answer of A – Yes.  Meaning you can put patent pending on a product as soon as you file a patent application.  However, the application must remain active, i.e. not abandoned, to continue marking the product as “patent pending.”  Notably, 44% of the audience thought patent pending depended on what type of patent application was filed.  This is not accurate as it does not matter if the patent application is design, provisional, or non-provisional.

assouline & belrlowe, interactive polling

There are many misconceptions about patent law and it is important to consult with a registered patent attorney to review your technology and plan to maximize your protection.  It was an honor to speak at the first Florida Bar Basic Technology CLE and I enjoyed the interactive nature of the CLE.  Check the Florida Bar CLE page as the Technology CLE will be available for download in the near future.

For questions about Intellectual Property matters involving Technology, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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Strategic Considerations for the Bankruptcy Practitioner when Intellectual Property is Involved

20130904_093101-1Assouline & Berlowe Registered Patent Attorney Greg Popowitz will be speaking as part of a panel discussing the interplay between bankruptcy and intellectual property.  The Bankruptcy Section of the Broward Bar Association is hosting the discussion on Wednesday, January 13, 2016 from 12:00-1:30pm.  The lunch is being sponsored by the Bankruptcy Bar Association of the Southern District of Florida (BBA).

To register for the event, click here.  It will be an excellent discussion between bankruptcy attorney John Hutton, patent attorney Allen Bennett, and patent attorney Greg Popowitz.

1 CLE credit is pending.

Date: Tuesday, January 13, 2016

Time: 12:00 – 1:30pm

Location: BCBA Conference Center

Cost:   FREE BCBA Bankruptcy Section Members;

$15 BCBA Member(non-section member)

$25 Non-Member of BCBA

No Charge BCBA Judiciary; Includes Hot Lunch

For questions about Intellectual Property matters, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

 

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The Wisdom of Crowds II: SEC’s New Crowd Funding Rules

CrowdfundingAn earlier Blog discussed Florida’s Intrastate Crowd Finance Act; amending the Securities and Investor Protection Act, permitting Florida-based entrepreneurs, commercial and real estate businesses capital formation through web-intermediary Crowdfunding Platforms.

The SEC has now adopted its Jobs Act Title III (Crowdfunding) Rules; expanding Crowdfunding’s reach.  Transactions relying on the new rules would be required to use an SEC-registered intermediary, either a broker-dealer or a funding web-portal.

The SEC seeks public comment on the proposed rule amendments for a 60-day period following their publication in the Federal Register. The new rules and forms become effective 180 days after Federal Register publication.

The recommended rules would, among other things, enable individuals to purchase securities in crowdfunding offerings subject to certain limits, require companies to disclose certain information about their business and securities offering, and create a regulatory framework for intermediaries facilitating those transactions.  More specifically:

  • Permitting a company, in any 12-month, period to raise a maximum aggregate of $1 million through crowdfunding offerings;
  • Permitting individual investors, over any 12-month period, to invest across all crowdfunding offerings an aggregate up to the following:
      • If either their annual income or net worth is less than $100,000, then the greater of $2,000 or 5 percent of the lesser of their annual income or net worth.
    • If both their annual income and net worth are equal to, or more than $100,000, 10 percent of the lesser of their annual income or net worth; and
  • During the 12-month period, the aggregate amount of securities sold to an investor through all crowdfunding offerings may not exceed $100,000.

Under the recommended rules, certain companies not eligible to use the exemption include:

  • non-U.S. companies,
  • Exchange Act reporting companies,
  • certain investment companies,
  • companies subject to disqualification under Regulation Crowdfunding,
  • companies not complying with the Regulation’s annual reporting requirements during the two years immediately preceding the offering statement filing, and
  • companies with no specific business plan, or that indicate  their business plan includes a merger or acquisition with an unidentified company or companies.

Crowdfunding securities cannot be resold for one year. Securities would not count towards the threshold requiring a company to register its securities under Exchange Act Section 12(g) if the company is current in its annual reporting obligations, retains the services of a registered transfer agent, and has less than $25 million in total assets as of the end of its most recently completed fiscal year.

Companies relying on the recommended rules must file with the Commission certain disclosure information, the intermediary, and the investors. Additionally, in an annual report to the SEC companies must disclose:

  • The securities price or the method for determining price, the target offering amount, the deadline to reach the target offering amount, and whether the company will accept investments in excess of the target offering amount;
  • A discussion of the company’s financial condition;
  • Company financial statements that, depending on the amount offered and sold during a 12-month period, are accompanied by information from the company’s tax returns, reviewed by an independent public accountant, or audited by an independent auditor.
    • A company offering more than $500,000 (but not more than $1 million of securities relying on these rules for the first time) would be permitted to provide reviewed rather than audited financial statements, unless company financial statements are available that have been audited by an independent auditor;
  • The business’ description and the use of proceeds;
  • Information about officers and directors and of owners of 20% or more of the company; and
  • Certain related-party transactions.

Intermediary Crowdfunding Platforms would be SEC registered as Funding Portals and be members of a national securities association (currently, FINRA). They would be prohibited from, among other things,

  • offering investment advice or making recommendations;
  • soliciting purchases, sales, or offers to buy securities;
  • compensating promoters and other persons for solicitations or based on the sale of securities; and
  • holding, possessing, or handling investor funds or securities, Crowdfunding Platforms.

The rules would require Intermediaries to, among other things:

  • Provide investors with educational materials explaining, among other things, the platform’s investing process; types of securities offered; information a company is required to provide investors; resale restrictions; and investment limits;
  • Take certain measures to reduce fraud risk, including having a reasonable basis for believing
    • that the company complies with Regulation Crowdfunding, and
    • that the company has established means to keep accurate records of securities holders;
  • Make available to the public (on its platform throughout the offering period and for a minimum of 21 days before any security may be sold in the offering)  the company’s disclosure information;
  • Provide communication channels on the platform permitting discussions about offerings;
  • Provide investors with disclosure the intermediary’s compensation;
  • Accept an investment commitment from an investor only after that investor has opened an account;
  • Have a reasonable basis for believing an investor complies with the investment limitations;
  • Provide investors notices once they have made investment commitments and confirmations at or before completion of a transaction;
  • Comply with maintenance and transmission of funds requirements; and
  • Comply with completion, cancellation, and reconfirmation of offerings requirements.

Intermediaries would also would be prohibited from engaging in certain activities, such as:

  • Providing platform access to companies that they have a reasonable basis for believing have the potential for fraud or have other investor protection concerns;
  • Having a financial interest in a company offering or selling securities on its platform unless the intermediary receives the financial interest as compensation for the services, subject to certain conditions; and
  • Compensating any person for providing the intermediary with personally identifiable information of any investor or potential investor.

With its October 30th announcement, SEC Chair Mary Jo White said: “There is a great deal of enthusiasm in the marketplace for crowdfunding, and I believe these rules and proposed amendments provide smaller companies with innovative ways to raise capital and give investors the protections they need.”

For more information on crowd funding matters, please contact:

Carl H. Perdue, JD, LLM
Senior Counsel and Partner
Business and Finance

The above material is for information purposes only; and is not to be considered legal or financial advice.

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main:  (561) 361-6566

Fax: (561) 361-6466

Email: CHP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Learn How to Protect Your Clients’ Valuable Intellectual Property

Assouline & Berlowe

Assouline & Berlowe patent attorneys Peter Koziol and Greg Popowitz will be speaking at a webinar focusing on Intellectual Property for the Non-IP Attorney.  The Pincus Professional Education webinar will take place on August 06, 2015 at 3 p.m. EST

To view the full announcement and register for the event, click here.

An overview of the Intellectual Property Topics that will be discussed are highlighted below.

IP is a complicated area, even for IP attorneys. For the rest of us, the nitty gritty rules are sometimes a mystery.  Listen in on this IP for the Non-IP attorney webinar so you can understand how to best protect your client and their assets. You will learn:

Origins of Intellectual Property (IP) in the United States and Internationally

  • The USPTO is part of the U.S. Department of Commerce (Patents and Trademarks)
  • WIPO covers International IP rights
How a non-IP lawyer can identify IP to Protect their Clients and Generate Value for the Business (Emphasis on Patents)
  • Patents (patent process, patentability opinions, freedom to operate opinions; limited time)
    • Design, Utility, Plant Patents
  • Trademarks (common law, state, federal rights; rights continue with use)
    • Strategy of using intent to use application vs. actual use application
  • Copyrights, and
  • Trade Secrets
What Does IP Protection Provide?
  • IP creates value to the business (it is an asset owned by the business)
  • Protects inventions, brands, etc. of the business, which can provide a marketing and sales edge over competitors
  • Patents – generate new business opportunities since a patent gives you an exclusive right
  • Licensing and sales opportunities
  • Access to Financing
  • Leverage in Litigation (damage calculations and discovery access)
  • Leverage in Business (assets and monopoly like rights)
How to Secure International Protection
  • Work with international: IP counsel, companies and connections, and markets
  • Patent Cooperation Treaty (PCT)
  • Madrid Protocol (trademarks)
  • Industrial Designs Treaty
  • Berne Convention
General Considerations for IP
  • Coordinate with transactional and litigation counsel, insurance providers, venture capital, and tax counsel
  • Bankruptcy and creditor rights impact
  • Receiver/trustee
  • Estate planning
Common Mistakes and Misconceptions
  • Poor man’s copyright
  • Statutory Bar Date (Loss of Rights)
    • Public Use/Disclosure (trade shows, publications, offers to sell)
    • Social Media Posts
  • Non-Disclosure Agreements
  • Priority of Use

For questions about the webinar or any Intellectual Property matters, contact Peter Koziol or Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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