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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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LEGO Takes Aim at Gun Company with Cease and Desist

Famous kids’ toy manufacturer Lego sent a cease and desist letter to gun company Culper Precision regarding its sale and marketing of Glock handguns.  Culper Precision offered a Glock handgun with an aftermarket kit to transform the outside of the firearm with Lego bricks (a little tidbit, the plural of Lego is not Legos).  Aside from what famous gun manufacturer Glock might have to say about its brand being used by Culper as a not so playful “Block19”, it was not a wise decision for Culper to adorn the outside of a Glock handgun with Lego bricks.  The use of the Lego bricks makes the handgun look like a child’s toy and associates a kids toy company with firearms. 

The term Lego derives from the Danish words that mean “play well”.  Lego is a Danish company.  I do not think Culper was playing well with others with this ill-conceived Lego kit.  The term Lego is a famous brand for Lego bricks commonly found in homes across the world, particularly when you are walking barefoot in your home. 

Lego likely has a claim of dilution by tarnishing under the Federal Trademark Dilution Act (FTDA) and/or the more commonly known Lanham Act.  Dilution of a brand occurs when someone uses a famous mark (brand) that blurs or tarnishes the mark.  Dilution differs from a typical trademark infringement claim as dilution does not hinge upon whether consumers would be confused.  Traditional trademark law was designed to protect consumers from confusion.  While dilution is designed to protect the famous brand from being diminished by properly identifying and distinguishing its good or services. 

The FTDA in 2006 clarified that a mark is “famous” if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark’s owner, and it allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.

Here, Lego is clearly a famous mark.  The false association of its Lego bricks on firearms would tarnish its brand and reputation for kid’s toys (including theme parks).  Culper would be best served looking at the age difficulty on the Lego box before it tries to connect Legos with firearms. 

For more information about dilution or other 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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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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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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You Thought All Settlement Offers Were Confidential?

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Photo by Alexander Mils on Pexels.com

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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Want to Learn More About Intellectual Property? Check out the new CLE by Greg Popowitz.

popowitz cle

Assouline and Berlowe Registered Patent Attorney Greg Popowitz recently recorded a lecture for the National Academy of Continuing Legal Education (NACLE), focusing on a general Intellectual Property Overview and 2019 IP case law update.

Mr. Popowitz detailed the fundamental differences of patents, trademarks, copyrights, and trade secrets and the nuances of each area of Intellectual Property.  He also discussed some recent key court decisions, including Supreme Court of the United States (SCOTUS) holding the disparagement clause of the Lanham Act unconstitutional under the First Amendment and paving the way for the mark F.U.C.T.  In addition, Mr. Popowitz discussed SCOTOS’ resolution of a circuit split, holding that a party must have completed the registration process before filing suit in federal court, as opposed to simply applying for protection.

To view the NACLE CLE, please click here.  The link is also provided below:

https://www.nacle.com/CLE/Courses/Intellectual-Property-Case-Law-Update-and-General-IP-Overview-1353

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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Property Owner Liable for Tenant’s Sale of Counterfeit Goods

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Photo by ELEVATE on Pexels.com

Earlier this year, a jury in New York federal court returned a verdict of $1.1 million in favor of Omega SA and its parents Swatch SA.  Omega sued 375 Canal LLC in 2012 regarding tenants selling counterfeit goods on 375 Canal’s property.  The jury found that 375 Canal and the landlord could have stopped the counterfeit sales, but did not.

Counsel for Omega asked a jury to “punish” 375 Canal and its owners, New York real estate developers Albert, Jason, and Jody Laboz, for allowing the property to be a “haven of counterfeiting activity for years.”  The jury found that 375 Canal knew about the infringing sales or willfully turned a blind eye to the seller’s counterfeit sales and continued to  lease the property to the counterfeiters.  Omega was liable for contributory trademark infringement (https://www.law360.com/dockets/download/5d0174472ef7e801af789f18?doc_url=https%3A%2F%2Fecf.nysd.uscourts.gov%2Fdoc1%2F127124921910&label=Case+Filing).

This should be a wake-up call to property owners to be aware of the business operations of tenants on its properties.  Property owners that have tenants selling products should pay attention to the legitimacy of the products being sold.  If they turn a blind eye, the property owner can face a hefty judgment in the courts.

Legitimate re-sellers of protected brands should look for authorization from the manufacturer and/or brand holder to verify the products are allowed to be sold by the tenant.  Authorization often takes the form of license agreements and distribution agreements.

Whatever the case, property owners should be on the look out to make sure its tenants are authorized to sell products in the leased space.  If not, the property owner should not look away and let the unauthorized activity continue.  It should act promptly to cease all unauthorized sales on its property to avoid a similar result as in Omega SA.

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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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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“My Other Bag” is a Louis?

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Isn’t the point of a parody to be funny? “Weird Al” Yanovich is well known for his music that makes fun of popular artists/music, such as  Amish Paradise, a parody of Coolio’s Gangsta’s Paradise, and Eat It, a parody of Michael Jackson’s Beat It.   Weird Al is so well known that his successful fair use defense of copyright litigation has become a leading case on musical parody.

Fast forward to Louis Vuitton (“LV”), the Paris based luxury hand bag brand company.  Consumers world wide know the LV brand and the status behind “Having a Louis”.  LV claimed copyright and trademark infringement by My Other Bag (“MOB”), a California based entity.  In a recent decision, the Second Circuit Court of Appeals affirmed summary judgment in favor of MOB.

MOB created a series of handbags where one side of the bag had a similar pattern of famous handbag company brands and the other side said “My Other Bag”.  In this case, MOB imitated LV’s interlocking L and V letters with interlocking M, O, and B letters.  Needless to say LV did not appreciate the similarity of the style and design of its famous mark.

With respect to likelihood of confusion with LV’s brands, the court noted differences between LV and MOB’s design, lack of market proximity, and lack of actual confusion.  From a dilution standpoint, the court said MOB’s bags are a parody of LV’s bags, bringing them within the fair use exclusion of trademark dilution. The critical point was that MOB was not using LV’s brands solely to increase their own sales by confusing consumers that MOB’s bags are associated with LV’s bags.  To the contrary, MOB was using LV’s well known brand and images as a parody because it was clear MOB was not trying to pass off their bags as LV produced bags.  Consumers would know they were buying a MOB bag, not a LV bag.

While a trademark owner has obligations to police their brand, trademark owners should carefully weigh all factors before bringing suit.  In this case, the parody fair use defense was strong for MOB, along with other factors.  More importantly, LV helped market MOB’s products by instituting this action and bringing more attention to the alleged infringement.  Now, “My Other Bag”, with the help of LV, has gained notoriety in the hand bag industry.  But they have a far way to go to compete with Weird Al.

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?

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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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