Just Kidding: “NoJoke” Brand for E-Cigarettes Not Confusing with “Joker” for Cigarette Paper

The Trademark Trial and Appeal Board (TTAB) found the mark JOKER for cigarette paper dissimilar with the mark NOJOKE for e-cigarettes. Republic Technologies, owner of the mark JOKER and related federal trademark registration, opposed an application to register the mark NOJOKE for e-cigarette liquid.

During the federal trademark application process, after examination by the Examining Attorney, a trademark application is published in the Official Gazette for 30 days. During these 30 days, a third party can oppose the trademark application with the TTAB presuming there are grounds to challenge the application. Until the opposition is resolved, the application process is stalled. Often oppositions are based on a likelihood on confusion between the opposer’s mark and the applied for mark, as was the case with Republic Technologies. A TTAB opposition is effectively litigation within the TTAB, but the fight is over the right to register the applied for mark, as opposed to damages in typical litigation.

Some trademark owners engage watch services to monitor what marks are applied for with the United States Patent and Trademark Office (USPTO) and what marks reach the publication period. This is critical so the potential opposer can either contact the applicant directly, or formally oppose the application during the 30 day publication window with the USPTO. If this window is missed, the opposer would have to wait and seek cancellation of any resulting registration. The opposer may also have grounds to assert trademark infringement if or when the applicant begins using the applied for mark in business.

In some cases, the opposer and applicant agree to enter into a co-existence agreement. A co-existence agreement is a contract where each party agrees that the respective marks (brands) do not cause confusion in the marketplace, that the parties will not oppose each other’s applications/registrations in the specified classes, and other conditions as the parties agree upon. Oftentimes, an Office action rejection by an Examining Attorney based on likelihood of confusion will be retracted if the parties enter into a co-existence agreement with the correct language.

Turning back to the TTAB decision here, the TTAB stated that the products are related as they are sold by the same retailers (cigarette paper and e-cigarette liquid). The board also noted that the federal government restricts the marketing of cigarette paper. This fact decreased the strength of opposer’s mark as the opposer is limited to direct retail sales, trade shows, and point of sale engagement.

Although the two marks use the same base of JOKE, the TTAB held that that two marks have different impressions. NOJOKE emphasizes the truthfulness of something potentially unbelievable, and communicates an air of seriousness. While JOKER, and its design mark (logo) gives the impression of a court jester, a comic foolish clown. The TTAB stated that despite the common base term, the meaning and impressions of the marks are not similar. The Board dismissed the opposition, which allows the application for NOJOKE to proceed.

If you need help monitoring your trademark portfolio or want to oppose/cancel a pending trademark application/registration, contact Board Certified Intellectual Property Attorney Greg Popowitz.

Greg M. Popowitz, Esq.

Board Certified in Intellectual Property Law

Registered Patent Attorney

ASSOULINE & BERLOWE, P.A.

Miami Tower

100 SE 2nd Street, Suite 3105

Miami, Florida 33131

Main: 305.567.5576

Fax: 305.567.69343

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, Trust & Estates, Probate and Guardianship

Greg Popowitz Earns IP Board Certification by The Florida Bar

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.

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, Trust & Estates, Probate and Guardianship

Ellen Leibovitch Named Outstanding Board Member of the Year

During the South Palm Beach County Bar Association’s 55th annual installation gala on June 4, 2106 at St. Andrews Country Club in Boca Raton, partner Ellen M. Leibovitch was named “Outstanding Board Member of the Year.”  Ellen has served on the association’s board of directors for the past five years.  During the 2015-2016 term, Ellen co-chaired the association’s annual holiday party as well as the search committee to replace the association’s executive director.  Ellen has also served as the editor-in-chief for the association’s newsletter – The Advocate – for the past three years.  Ellen is also the board liaison to the association’s Labor & Employment committee which sponsored a CLE seminar in the Fall of 2015 on the new  Computer Abuse and Data Recovery Act.  Congratulations, Ellen!

Ellen is a Florida Board Certified Labor and Employment Attorney with Assouline & Berlowe, P.A.  For any employment and labor questions, please contact Ellen below.

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main: (561) 361-6566

Fax: (561) 361-6466

Email: EML@assoulineberlowe.com

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, Real Estate, and Corporate Law

Miami • Ft. Lauderdale • Boca Raton

New Changes to the FLSA and Compensation toLive-In Domestic Care Workers

In December 2014, Ellen Leibovitch held a seminar to discuss changes to the Fair Labor Standards Act (FLSA) relevant to third party agencies who employ companions and live-in domestic service employees.  The new regulations – which were set to go into effect on January 1, 2015 – made the long-standing exemptions to the FLSA’s minimum wage and overtime requirements for companions and live-in domestic employees inapplicable to third-party employers (like home health care agencies).

Just days after the seminar, a federal court struck down the new regulations.  Since then, the issue has been batted around the courts, but on August 21, 2015, a federal appellate court issued a unanimous opinion affirming the validity of the new regulations.  The appellate court’s opinion became effective on October 13, 2015.  The Department of Labor (DOL) will not begin enforcement of the new rules until November 12, 2015 but, more than likely, the DOL will not begin prosecuting offenders until January 1, 2016.

For more details, go to http://www.dol.gov/whd/homecare/litigation.htm#.VilP87RgRps.email

So what does this mean to you and your businesses?  For those who have been taking a wait-and-see approach or who had hoped that everything would remain unchanged, the time to act is now.  Businesses need to come to grip with the fact that live-in domestic care workers who reside in the private household where they are employed and home-health companions are going to be subject to the FLSA’s overtime and minimum wage requirements as well as the record-keeping requirements.  Among other things, this means these workers need to be paid a minimum wage (currently $8.05 in the State of Florida but likely to increase as of January 1, 2016), that employers need to maintain accurate records of the hours such employees work each day and each week and that overtime must be paid for all hours worked in excess of 40 each week.

Please note that these new rules apply only to employees, not independent contractors.

For additional information about these changes, please contact Ellen M. Leibovitch below:

Ellen M. Leibovitch

Florida Board Certified Labor and Employment Attorney

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main:  (561) 361-6566

Fax: (561) 361-6466

Email: EML@assoulineberlowe.com

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, Real Estate, and Corporate Law

Miami • Ft. Lauderdale • Boca Raton

Employment Law Update: Time to Review Employee Handbooks

On March 18, 2015, the General Counsel for National Labor Relations Board released a report summarizing recent cases where policies in employee handbooks were found to violate Section 7 of the National Labor Relations Act (NLRA).

Section 7 gives employees the right to form unions and engage in other protected types of concerted activity.  Specifically, among other things, Section 7 allows employees to engage in the following activities:

• The right to discuss wages, hours and other terms and conditions of employment with other employees and non-employees, including union representatives
• The right to criticize or protest employer’s labor policies or treatment of employees
• The right to argue and debate with other employees about unions, management and terms and conditions of employment
• The right to communicate with the news media, government agencies and other third parties about wages, benefits and other terms and conditions of employment
• The right to use the employer’s name and logo on picket signs, leaflets and other protest material
• The right to photograph and make recordings in furtherance of protected concerted activities, including the right to use personal devices to take such pictures and recordings
• The right to go on strike
• The right to engage in concerted activity to improve the terms and conditions of employment, even if that activity is in conflict with the employer’s interests

In recent cases, the General Counsel determined that policies in employee handbooks were unlawful if employees would not reasonably understand the policy to prohibit a Section 7 protected activity.  In other words, if the policy is seen as restricting an employee’s Section 7 rights, it would be deemed unlawful under the NLRA.  The General Counsel’s report was intended to summarize these holdings and clarify the government’s position.

For example, a policy which requires the employee to keep the employer’s business information confidential and not to disclose such information about the business, customers, vendors and the like is lawful; but a policy which prohibits discussing wages, hours, workplace complaints and may be unlawful.  Similarly, a policy which requires employees to be “respectful of the company” may be construed to ban protected criticism or protests regarding supervisors, management or the company in general.  However, policies prohibiting serious misconduct, such a insubordination, threats and assault, would still be lawful.  General Counsel also determined that a policy prohibiting employees from speaking to the media about company matters unless authorized by the company to do so or requiring all media inquiries be directed to a designated company official was unlawful because employees reasonably would read such policy to ban protected (Section 7) communications with the media.

These are only a few of the many examples of the kinds of policies which the General Counsel found problematic.  Still, the line between what is lawful and what may be deemed unlawful is blurry at best and has, by this report, been made less clear.  Smart employers would benefit from having skilled employment counsel review their employee handbooks to ensure compliance under the NLRB’s newly-issued guidelines.

For a thorough review of your employer/employee handbooks and their compliance with the NLRB guidelines, please contact Ellen M. Leibovitch below.

Ellen M. Leibovitch

Florida Board Certified Labor and Employment Attorney

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main:  (561) 361-6566

Fax: (561) 361-6466

Email: EML@assoulineberlowe.com

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, Real Estate, and Corporate Law

Miami • Ft. Lauderdale • Boca Raton

Ellen M. Leibovitch is a 2015 Finalist for Leaders in Law!

Assouline & Berlowe, P.A. is proud to announce that Boca Raton Partner Ellen M. Leibovitch has been nominated for the 2015 Leaders in Law Award in Labor and Employment Law.  The South Florida Business & Wealth Leaders in Law Awards, created by Lifestyle Media Group, honors lawyers, law firms, and corporate counsel that promote excellence in their field of law, maintain the highest level of ethics, are committed to their community, and are proven leaders in their field.

Candidates for the Leaders  in Law Award are judged on outstanding litigation, advocacy, counseling, and advancements to the legal profession, along with contributions to the advancement of the bar, including public service, bar association activities, and pro bono activities.

The South Florida’s Leaders in Law April 29, 2015 at 5:30 p.m. at The Gallery of Amazing Things, 481 South Federal Highway, Dania Beach, FL 33004.  To purchased tickets to the event, click here.

Ms. Leibovitch is proud to be nominated as a finalist for such a prestigious award.  As part of her labor and employment law practice, Ms. Leibovitch routinely counsel clients on employee handbooks, training, and audits.  Employers receive training on topics such as, recognizing sexual harassment and discrimination in the workplace. Managers also need to know the dos and don’ts in hiring decisions, employee complaints, and complying with the Fair Labor Standards Act.  Also, some employers use the same employment applications, handbooks, and other forms for years without updating these forms with changes in the law.

Assouline & Berlowe is available to review employer policies, procedures, systems and documentation to ensure compliance with all applicable local, state and federal employment laws.  These preventative exercises will help all employers reduce the costs of non-compliance and avoid litigation in the future.  The often used maxim, an ounce of prevention is worth a pound of cure, is highly applicable for these type of employment matters.

For a thorough review of your employer policies and procedures, or for any questions about the Leaders in Law award, please contact Ellen M. Leibovitch below.

Ellen M. Leibovitch

Florida Board Certified Labor and Employment Attorney

ASSOULINE & BERLOWE, P.A.

1801 N. Military Trail, Suite 160

Boca Raton, Florida 33431

Main:  (561) 361-6566

Fax: (561) 361-6466

Email: EML@assoulineberlowe.com

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, Real Estate, and Corporate Law

Miami • Ft. Lauderdale • Boca Raton

Labor & Employment SuperLawyer Ellen Leibovitch Finalist in Leaders In Law Award

Assouline & Berlowe is pleased to announce that Labor & Employment Partner Ellen Leibovitch has been selected by Lifestyle Media Group’s Leaders In Law Awards as a Finalist for the award.  The firm is pleased to congratulate Ellen Leibovitch on this notable accomplishment further recognizing her as one of South Florida’s top attorneys.

Lifestyle Media Group honors lawyers, law firms and corporate general counsel who have achieved excellence in law.

The Firm will be in attendance at Nova Southeastern University, on January 21, 2014, when all the Honorees selected will be recognized at the ceremony.

Ellen Leibovitch and I have been friends since we first practiced together in the late 1990s at a prior firm.  We at the firm we very pleased to have her join us in early 2012 to head the firm’s Labor & Employment Practice Group.  Having Ellen Leibovitch, a Board Certified SuperLawyer, as the head of the labor and employment department has been instrumental in the firm being able to offer the highest level of quality labor & employment related counsel to our clients.

Ellen Leibovitch practice is concentrated on labor and employment law counseling and litigation, as well as commercial and business litigation.

Ms. Leibovitch counsels and assists clients on the full-range of labor and employment matters.  As part of her practice, Ellen Leibovitch drafts, analyzes, and critically evaluates employee handbooks.  Ms. Leibovitch prepares employment agreements, as well as non-compete, confidentiality, severance, separation, independent contractor and other employment-related agreements.

The factors considered for the award are:

1. Supporting material, covering statements and evidence supplied
2. Amount of documented activity when compared to industry peers
3. Involvement in significant legal cases and legal activity
4. Recognized legal expertise (by peer group)
5. Innovation in client care
6. Size (value) of involvement within transactions, deals and cases
7. Previous accolades and entries within recognized legal guides

THE LEADERS IN LAW AWARD CEREMONY 

DATE:                        Tuesday, January 21, 2014.

PLACE:                      Nova Southeastern University

TIME:                          Reception – 5:30pm at Huizenga Business School Atrium

Awards Ceremony – 7:00pm at the Miniaci Theater

 

Please join us at this exciting ceremony. 

#leadersinlaw

ERIC N. ASSOULINE, ESQ.

Email: ena@assoulineberlowe.com

Eric N. Assouline

visit superlawyers.com

ASSOULINE & BERLOWE, P.A.

The BUSINESS LAW Firm

http://www.assoulineberlowe.com

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law

Miami · Ft. Lauderdale · Boca Raton

Miami: 305-567-5576

Ft. Lauderdale: 954-929-1899

Boca Raton: 561-361-6566

Eric N. Assouline

Business Litigation

Thank you Ellen Leibovitch for all your hard work!

To reach Ellen Leibovitch, by email: eml@assoulineberlowe.com or by telephone: 561-361-6566.

 

Women Lawyers: Outstanding Public Service Award – Congratulations!

Please join the Firm, as we congratulate the South Palm Beach County Chapter of the Florida Association of Women Lawyers (SPBC FAWL) on receiving State FAWL’s Outstanding Public Service Award for its Educating Tomorrow’s Adults program.

This program focused on educating young adults in local high schools on their legal rights and responsibilities upon turning age 18. 

The Firm is proud that this program was spearheaded by Assouline & Berlowe Partner Ellen Leibovitch, who heads the Firm’s labor & employment practice group.  Ellen, who is past president of SPBC FAWL and was one of the first women in the state to receive State FAWL’s Leader in the Law award, will be accepting this award on behalf of SPBC FAWL at a June 27, 2013 reception during The Florida Bar’s annual meeting at the Boca Raton Resort.

Congratulations to SPBC FAWL and SuperLawyer and Board Cerfied Labor & Employment Attorney Ellen Leibovitch for this well deserved award, honor, and achievement!

For more information on Ellen Leibovitch, and her practice, go to: http://www.assoulineberlowe.com/Ellen_Leibovitch.asp or you can contact her by e-mail at eml@assoulineberlowe.com

Assouline & Berlowe is a full service business law firm with offices in Miami, Ft. Lauderdale, and Boca Raton.

ASSOULINE & BERLOWE, P.A.

Miami: 305-567-5576

Ft. Lauderdale: 965-929-1899

Boca Raton: 561-361-6566