Category Archives: IP Litigation

“Clip In” for a SPIN Trademark Battle with Peloton

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.”[1] 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.[2] 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. [3] 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.[4] 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.


[1] https://plus.lexis.com/api/permalink/ecc0e8bc-5603-4463-8698-ba61a9251497/?context=1530671

[2] Id.

[3] Trademark Status and Document Retrieval for registration number 2173202 and 2003922.

[4] https://www.youtube.com/watch?v=_rskpw57ppg

This blog article was written by Eva Sarmiento, legal intern at Assouline & Berlowe and JD candidate 2021 at Nova Southeastern University Law School, (edited by Greg M. Popowitz, Esq.)

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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The Power of .com in Securing Federal Trademark Rights

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).” [1]. 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.”

[1] 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.

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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Power to the Patent Office! No Judicial Review of IPR Time Bars

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.

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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Mobile/Gaming Patent Presentation by Peter Koziol (3/3/2020)

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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.

ASSOULINE & BERLOWE, P.A.

2300 Glades Road

East Tower #135

Boca Raton, Florida 33431

Main: 561.361.6566

http://www.assoulineberlowe.com/

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BANKRUPTCY LAW – Small Business Reorganization Act, New Interim Rules Released

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The United States Bankruptcy Court for the Southern District of Florida, through its Chief Judge, Laurel M. Isicoff, issued several updates tonight regarding the new Small Business Reorganization Act (SBRA), which goes into effect TOMORROW!

As stated by the Chief Judge: “The SBRA creates a new subchapter V of chapter 11 for the reorganization of small business debtors.  It does not repeal existing chapter 11 provisions regarding small business debtors, but instead creates an alternative procedure that small business debtors may elect to use.”

The Court further stated that: The Committee on Rules of Practice and Procedure of the Judicial Conference of the United States has promulgated Interim Rules and Form Amendments to the Federal Rules of Bankruptcy Procedure as a result of the passage of the Small Business Reorganization Act.

Among the numerous orders, is Administrative Order 2020-02 In re: Adoption of Interim SBRA Bankruptcy Rules.  This is an important set of rules that bankruptcy practitioners in the Southern District of Florida must follow.

Amended Official Forms 101, 201, 309E (renumbered 309E1), 309F (renumbered as 309F1), 314 (use Local Form LF-33), 315, and 425A, and new Official Forms 309E2, and 309F2 become effective February 19, 2020. For changes in the Bankruptcy Forms please visit: https://www.uscourts.gov/rules-policies/pending-rules-and-forms-amendments/pending-changes-bankruptcy-forms.

Additional SBRA Resource:

A Guide to the Small Business Reorganization Act of 2019” by U.S. Bankruptcy Judge Paul W. Bonapfel Northern District of Georgia.

Eric N. Assouline, Esq.

 

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“Brand” New Trademark Rules Starting 2/15/2020

TMThe United States Patent and Trademark Office (USPTO) will not issue a federal trademark registration without the applicant first proving the mark (brand) being protected is actually being used in commerce.  Whether the proof is submitted with the initial application (for actual use applications) or later in the application process (for intent to use applications), the applicant will need to submit specimen of use for the  brand.  The types of evidence varies depending on the type of class associated with the brand.  For products, the specimen must be on the product itself, the packaging, or manuals.  While service based classes can use marketing materials, such a flyers, websites, and signage.

On February 15, 2020, the USPTO is updating the rules of specimen that are submitted to prove use in commerce.  The rules are becoming stricter.  For goods, the goods themselves must be included with the packaging, labels, or displays.  For apparel, hang tags or labels must actually be connected to the apparel, not merely next to the products.

Screen shots of websites showing the mark and detailing the services provided have been relatively standard as specimen over the years.  Under the new rules, any such screenshots will now require the URL and a date of the screen print.

The purpose behind the new rules is to prevent the submission of fraudulent specimen for marks that actually are not in use.  This is why digital images and mock ups of marketing materials are often rejected by the USPTO.

While the purpose of the rules is to help thwart fraud, one of the rule updates requires the inclusion of an applicant’s email address, not only the attorney’s email address.  This was optional in the past.  There is a known issue with companies mining the USPTO public records for applicant physical addresses and mailing official looking invoices that mislead applicants to pay fees that provide little to no value.

While the intent of the USPTO to require applicant email addresses is to help communication channels between the USPTO and applicants, the result will be greater access to applicants to those companies that mine USPTO databases trying to mislead applicants directly.  As a result of significant push back from practitioners and the public at large, the USPTO is presently looking at ways to “mask” the applicant’s email addresses from public viewing.

For any questions about the new trademark rules or to look into protecting your brands, contact Greg Popowitz.

Greg M. Popowitz, Esq.

Registered Patent Attorney / Partner

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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HAPPY 17th ANNIVERSARY to ASSOULINE & BERLOWE!

MIAMI – Assouline & Berlowe, P.A., The Business Law Firm, is pleased to announce that today it is celebrating its 17th Anniversary.

Started on February 10, 2003, through humble beginnings, in a small subleased space in Coral Gables, Assouline & Berlowe has weathered the many business climate changes and challenges of the past two decades.

Assouline & Berlowe is proud of its contributions to its communities in the tri-county area, as part of its presence with offices in Miami, Ft. Lauderdale/Dania Beach, and Boca Raton.  Assouline & Berlowe regularly supports both its legal community and numerous charitable organizations alike.

Assouline & Berlowe is strategically positioned to continue its expansion as a strong player in South Florida’s international business environment.

To all those that we have worked with in the past and to those we hope to work with in the future, we say thank you.

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You Thought All Settlement Offers Were Confidential?

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That is not the case if the settlement offers show the case was litigated in an unreasonable manner. Federal Rule of Evidence 408 protects settlement communications.  The purpose being to encourage litigants to communicate and work on resolving the claims of the case.  Like most rules, there are exceptions.

Enter Blackbird Tech LLC v. Health in Motion LLC, 2018-2393 (Fed. Cir. Dec. 16, 2019).  Blackbird sued Health in Motion (“HIM”) and Leisure Fitness Equipment LLC (“Leisure”) for patent infringement regarding exercise equipment.  After 19 months of litigation, Blackbird voluntarily dismissed the lawsuit, with prejudice, and executed a covenant not to sue.  Shortly thereafter, the Defendants moved for attorneys’ fees under 35 U.S.C. 285, which allows an award of attorneys’ fees in patent cases to the prevailing party in “exceptional cases”.  The District Court granted attorneys’ fees and expenses in the amount of $363,243.80, which Blackbird appealed.

The Federal Circuit, which streamlines patent decisions of the district courts, affirmed the decision, holding the District Court did not abuse its discretion due to the way Blackbird litigated the case.  During the course of the litigation, Blackbird had a peculiar settlement strategy of decreasing offers that stood out.  The first offer was $80,000, then $50,000, then $15,000, and finally a walk-away offer of zero.  Defendants rejected all the offers.  The Federal Circuit analyzed the settlement offers and the nature of the decreasing offers, each of which were “significantly less than the cost of litigation.”  The Federal Circuit viewed the offers with suspicion.

The District Court also found that Blackbird unreasonably “delayed in producing documents, withheld many documents until after [Appellees] took [Blackbird’s] deposition[,] and completely failed to produce other responsive documents.”  Lastly, Blackbird unreasonably “filed a notice of dismissal, covenant not to sue, and motion to dismiss without first notifying [Appellees’] counsel, on the same day pretrial submissions were due and shortly before [Appellees’] motion for summary judgment was to be decided.”

While all of the issues led to the exceptional fee award due to Blackbird’s abusive litigation, the unique aspect was the court’s ability to open the window into settlement offers to demonstrate the abusive litigation tactics.  Blackbird’s settlement demands were far less that the anticipated cost of defense, which Blackbird admitted, and equated to mere “nuisance value settlement offers.”  While most settlement offers and negotiations are closed from public view, the court may open that door to assess whether attorneys fees can be awarded in exceptional cases.

For any questions about trademarks, patents, or copyrights, contact Greg Popowitz.

Greg M. Popowitz, Esq.

Registered Patent Attorney / Partner

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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INTERNATIONAL ARBITRATION / BANKRUPTCY PANEL DISCUSSION – October 23, 2019 at the University of Miami

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ONLY 7 DAYS LEFT.

The International Arbitration Society at the University of Miami School of Law is presenting a panel discussion on the conflict between International Arbitration and Domestic Insolvency.

Date : October 23, 2019

Time: 6:30 p.m. – 9 p.m.

The discussion will be followed by a networking social.

Students, professionals and practitioners are invited to attend and participate.

Please RSVP here: https://lnkd.in/eAT24JM

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