Tag Archives: brand

Webinar: Branding and Business, with a Primer on Non-Use Due to Covid-19

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.

https://www.nacle.com/CLE/Courses/Branding-and-Business-with-a-Primer-on-Non-Use-Due-to-Covid-19-1465

Greg M. Popowitz, Esq.

Make Your IP Pop

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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TRADEMARK ALERT – Is Your Brand “Dead” for Non-Use During the Covid-19 Shutdown?

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 excusable non-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.

Greg M. Popowitz, Esq.

Make Your IP Pop

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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“No Wanna Iguana?” ™ in the Toilet!

Iguana

This weekend, the work of one of Assouline & Berlowe’s clients hit a little too close to home for one of our attorneys.  A family member walked into their residential bathroom and discovered a young iguana lurking inside their toilet bowl.  Imagine their surprise!

Immediately, we knew to call Redline Iguana Removal to handle the unwanted critter.  Redline came out on a weekend, within minutes, to remove the iguana from the toilet before it could cause any additional trouble for the homeowner.  As expected, Redline handled the situation in a professional manner.  Redline handles iguana removal from residential and commercial locations across South Florida.

Assouline & Berlowe handles Redline’s branding protection, including filing trademark applications for Redline Iguana Removal and “No Wanna Iguana?”.

For any questions about trademarks, contact the Assouline & Berlowe Intellectual Property Team.

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/

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Florida has Trademarks? Yes, and it was just revised!

Trademark Registration

On June 7, 2019, Governor DeSantis approved HB 445, a bill that revised the classification system of Florida’s Registration and Protection of Trademarks Act (see Chapter 495 of the Florida Statutes).  The purpose of the revision was to align the Florida trademark classification of goods and services to that of the United States Patent and Trademark Office (USPTO), which is the federal trademark authority.  The new changes revise most of Florida’s 45 trademark classifications.  A copy of the changes can be found here.

The USPTO breaks up the 45 classes into two groups.  There are 34 classes for products and 11 classes for services.  When applying for a trademark, at the USPTO or in Florida, the owner must select the class or classes where the brand is being used.  For example, if the business uses a brand in the real estate business, then they likely fit in one of the service-based classes.  If the business also brands their real estate business in related apparel, they may also want to apply for a product-based class.  It is important to select these appropriate class and word the description accurately because you will have to submit evidence of your use of the brand in the applied for classes at the beginning or end of the trademark process.

While federal trademark registrations secured with the USPTO are more commonplace, there are reasons to secure a Florida trademark to protect your brand.  For some business owners, their entire business is focused in Florida and does not extend outside the state.  If there are no plans to expand out of Florida in the future, a Florida trademark may be all the business owner needs.  While a federal trademark registration is often litigated in federal court, a Florida trademark owner may have the ability to file an infringement action in Florida state court, which is relatively rare.

There are pros and cons to litigation in federal court compared to state court.  The business owner should assess the cost/benefit of securing  a Florida trademark and/or a federal trademark as they build their trademark portfolio to protect their valuable branding.  Often overlooked, branding is in important part of your business and steps should be taken to protect your brands.  Otherwise, you may have limited options to enforce your rights should someone copy your branding in a related market.

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

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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Watch Out! Are You Monitoring Your Brand?

pexels-photo-712038.jpeg

A federal trademark is an extremely powerful tool to protect your brand.  Let’s presume that you planned ahead and secured a federal trademark from the United States Patent and Trademark Office (USPTO).  What next?  You should start marking your brand with the federal registration symbol (r) on the goods/services that are covered by the federal registration.  Besides paying for renewals, anything else?

All too often, trademark owners secure a federal trademark and take no action to monitor their brand.  Sure, when a trademark owner sees a competitor with a similar brand or receives information from a customer about a competitor using a similar brand, it may be time to act.  But isn’t there more the trademark owner can do to reduce the chance of similar brands in the marketplace?

Hiring a watch service to monitor pending trademark applications is key.  Every trademark application goes through a 30 day publication period, before registration, where the public at large has the opportunity to oppose the brand seeking registration if it would cause confusion in the marketplace as to the source of the goods/services being offered, among other factors.  The watch service will notify the trademark holder or their attorney of these pending applications and allow the trademark owner to get out in front of possible confusion in the market.  An opposition can result in the new application being abandoned, a co-existence agreement that defines the scope and rights of the two trademark owners, and/or a full blown opposition proceeding before the Trademark Trial and Appeal Board of the USPTO.  This is similar to federal litigation.

Another benefit of a federal trademark registration is that Trademark Examiners can use your registration as a basis to reject new applications attempting to register a similar brand in a related field based on a  likelihood of confusion in the marketplace.  The applicant may try to traverse the rejection but either way, you as the trademark owner should be on alert that someone is attempting to use a similar brand in business, or already has.  This is critical information since even if the trademark application is abandoned, that does not mean the applicant abandoned its goal of using the brand in business.  The trademark owner should monitor these companies and try to reduce confusion in the marketplace by properly policing their trademark rights.

Protecting your brand is a critical aspect of brand management.  A brand is an asset, make sure to protect it.  For any questions on trademark law, please contact Greg Popowitz below.

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 Infringement Insurance – Is your Business Protected?

Assouline & BerloweAdvertising Injury coverage? Yes, it exists.  It is fairly standard in most commercial general liability policies with personal injury coverage, which insures a company from its advertising of its goods or services, such as libel, slander, copyright infringement, trademark infringement.   As a trademark attorney, I routinely inform my clients about the benefits of this type of coverage, and if they already have it, to make sure it covers trademark infringement.

If your company already has advertising injury coverage, does it include, or possibly exclude, trademark infringement coverage? In a recent case in a Minnesota federal district court, a defendant’s insurance carrier disclaimed trademark infringement coverage, which caused the infringing company to pay damages out of pocket.

Excell Consumer Products sued Smart Candle for their use of the protected trade name and trademark “Smart Candle” relating to LED lights. Smart Candle requested that its insurance carrier, Selective Insurance Company, defend the lawsuit. However, Selective Insurance disclaimed coverage under Smart Candle’s policy. Selective Insurance focused on the personal and advertising injury coverage, which the policy defined as injury resulting from “Infringing upon another’s copyright, trade dress or slogan in your ‘advertisement.’” The policy excluded from coverage injury “arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights.” Notably, this exclusion did not apply to the infringement resulting from the companies advertising of copyright, trade dress, or slogan.

Smart Candle claimed that “slogan” in the policy required Selective Insurance to defend or indemnify Smart Candle in the Excell Consumer Products lawsuit. The federal district court granted Selective Insurance’s motion for summary judgment. Notably, the policy failed to define the term “slogan” so the court used the “popular and ordinary meaning”. Since the Excell Consumer Products lawsuit centered upon the use of “Smart Candle” as a mark, trademark, trade name, and name, a reasonable jury would not determine that Excell Consumer Products’ lawsuit was based on slogan infringement. The appellate court agreed with the district court’s interpretation of the policy.

If you currently have advertising injury coverage, it is critical that you check to find out what the policy covers and what it does not cover. With any business decision, fully understanding the liabilities and risk to your business will aid in the decision making process. Instead of fighting a significant infringement lawsuit expecting insurance coverage, it may be worthwhile to settle the lawsuit early on and limit your exposure. If you do not have advertising injury coverage, investigate obtaining coverage that will adequately protect your business.

The intellectual property attorneys at Assouline & Berlowe, P.A. are fully equipped to review your policies and provide feedback as to whether advertising injury coverage protects your business for trademark infringement and other intellectual property causes of action.

For any questions about advertising injury coverage relating to intellectual property, or general questions about patents, trademarks, and copyrights, please contact Greg Popowitz below.

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/

LinkedIn  ||  Twitter

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

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