Tag Archives: trademark

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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On Your (Trade)mark. Get Set. Nooooo! Not Available

According to New York University School of Law professors, Barton Beebe and Jeanne Fromer, the world is running out of trademarks.

This, in their opinion, is due to the consumption and clogging of trademarks, which has forced the use of marks concerned to be inferior in strength.  In 2020, the number of applications for new trademarks increased approximately 200,000 from the previous year, 459,000 in 2019 to 659,000 in 2020. This one-third increase in new applications supports Beebe and Fromer’s opinion and is especially remarkable given the mediocre state of the U.S. economy in the wake of the pandemic. This increase in numbers also impacts whether a new applicant may obtain the mark they wanted or has to settle for second or third-runner up because the mark they truly wanted has already found an owner

This opinion is backed by the increasing surge in trademark applications over the years, with 2020’s applications increasing by one-third despite a pandemic that severely crumbled the U.S. economy, going from 459,000 in 2019 to 659,000..

The 2020 surge in applications can largely be attributed to two components. A vivacious U.S. economy filled with hope was the first component. Trademark applications are a useful economic indicator. The number of applications increases when companies feel optimistic about consumer desire for new goods and services and decrease when that optimism fades. The second component was the Chinese market. China-based applicants made up nearly two-thirds of the increase in applications from 2019. In 2020, China-based applicants made up one-fourth of the total applicants, a startling difference from the eleven percent that market represented in 2017.

A consequence of this increase in trademark applications is that the clearance process is becoming progressively more drawn-out and costly. Lawyers are forced to spend more time assessing the multiplying number of marks and face a more complex legal analysis than in years prior. After all the work, if a client’s choice in a mark proves unavailable then lawyers must begin the process all over again.

The USPTO has a free data search engine to help determine if a prior conflicting mark exists. However, many companies and law firms turn to commercial search firms to handle clearance searches since these firms are better equipped to find marks that could have any potential conflict with the chosen mark. These firms hire specially trained analysts to detect potential conflicts and more recently, incorporate artificial intelligence to lower costs and accelerate the process. But using AI presents some challenges: AI’s algorithms tend to miss the “play on words” and intentional misspellings that may still be considered confusingly similar to a trademark’s more traditional counterpart. These AI tools have also been employed to detect conflicts with visual logos. The tools used depend on image recognition to detect conflicts between desired logos and existing ones by locating and comparing shapes and characteristics resembling one another. But these tools are not yet reliable since a computer does not translate an image in the same manner as a human eye.

The clogging of trademarks is not as appalling as the number of applications in 2020 suggests. While there has been a surge of Chinese applications, the marks being sought are, for the most part, unappealing to U.S. applicants. Many marks are simply a random series of letters or unspeakable “coined terms” such as FCEDAUS. The USPTO has suggested that this surge in China-based applications is due to the Chinese government’s incentivization of U.S. applications, offering subsidies that often exceed the cost of filing. Many think that Chinese applicants file for financial gain alone. But this spike in China-based applications does make it difficult for the USPTO to plan their workload since submissions of applications are unpredictable.

In an article for the New York Times, John Herrman proposed that Amazon is the culprit behind many China-based applicants applying for these seemingly bogus marks. Herrman claimed that Chinese entities make up close to half of Amazon’s top U.S. sellers and noted that trademark registration was a prerequisite to utilize Amazon’s Brand Registry, generating motive for foreign vendors to apply. He also noted the online explosion of strange marks like NERTPOW, concluding that the intrinsic allure of a mark appeared immaterial to a China-based vendor’s triumph on Amazon. Also, embracing random, incoherent marks is a fast and effective way to gain U.S. registration because it reduces the likelihood that the mark is obstructed by a prior similar mark.

Numerous China-based applicants offering evidence of U.S. trademark use in commerce are undeniably fake, with one famous example being an application for INSTAMARKET retail stores using a photoshopped image of a Walmart as supporting evidence. Professors Beebe and Fromer found that falsified specimens made up about seventy percent of China-based applications in 2017, that the USPTO approved roughly sixty percent of those, and that close to forty percent ultimately registered. The pair determined that fourteen percent of all applications in 2017 were false and that this fact exacerbated the problems with trademark clogging. The USPTO subsequently established additional rigorous measures to uncover false claims of use.

Trademark’s issues with overcrowding and clogging is due in large part to past marks that are still registered but no longer in use. These marks, known as “deadwood,” block a new mark’s application for a similar mark despite the fact that the old one was abandoned. Fortunately, the U.S. has a “use it or lose it” system to prevent trademark owners from retaining rights ad infinitum. Trademark owners must maintenance their marks with the USPTO by filing proof of continued use of the mark by the sixth, tenth, and successive ten year anniversary of registration. However, a pilot audit program in 2012 uncovered that about fifty percent of audited registrations could not provide actual proof of their claims of use. This finding prompted the Office to create a permanent audit program in 2017, increasing the number of registrants audited and creating financial penalties for fixing errors made in maintenance filings. Despite these measures, audits continue to confirm that approximately fifty percent of applicants were not really using their marks.

The Trademark Modernization Act of 2020 gives mark owners more power to get rid of “deadwood” registrations as well as those prior registrations obtained fraudulently. Although not available until December 2021, the most powerful tool within this Act is the ability for ANYONE to challenge a registration on the basis of non-use. A party would be able to purse provided that the mark is registered for at least three years, on the basis that the mark has never been used in commerce for some or all of the identified goods and services. Additionally, re-examination proceedings will target registrants no older than five years old on the basis that the mark were not used for some or all of the identified goods as of specific important dates, particularly the filing date of an application asserting use in commerce. These new tools could facilitate the clearance of new trademarks, providing a quicker and more affordable method of determining that old marks are “deadwood,” removing them as barriers. These tools would only be helpful to those applicants that have more time versus those that need to select their new mark quickly since the proceedings could take some time.

(Then the article breaks down the 1000 most frequently used words in the English language as they relate to their use in trademarks and common words that are now being trademarked.)

In the past, the shortage of more traditional “.com” domain names also played a significant role in selecting a mark. But companies have found a way around that by coining new marks, combining words, and getting creative through various other methods. Thinking outside the box and influencing consumers to familiarize themselves with these new methods have opened the doors to what can be available as a mark. Instead of being clogged, such novel ideas will open up the doors for new trademarks.

This blog article was written by Assouline & Berlowe PA Law Clerk Eva Sarmiento, 3rd Year Law Student at Florida International University School of Law, and only edited by Assouline & Berlowe, P.A. attorneys.

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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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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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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“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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Property Owner Liable for Tenant’s Sale of Counterfeit Goods

man riding a yellow forklift with boxes

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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