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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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SCOTUS ALERT: Trademarks and Bankruptcy

On Friday, the United States Supreme Court (SCOTUS) granted a petition for certiorari in the case called Mission Product v. Tempnology, in order to hear a case involving trademark law and bankruptcy law.  The issue that is to be heard relates to what happens to a trademark license when the owner of the brand files for bankruptcy.

Currently, the different Circuit Courts of Appeal are not all in agreement as to what should happen.  In certain particular Circuit Courts of Appeal, the licensor that files bankruptcy can use a particular bankruptcy code provision, identified as Section 363 under the Bankruptcy Code, in order to cancel the right of a licensee to use the bankrupt company’s trademark.  However, in certain other Circuit Court’s of Appeal, the courts have been allowing the trademark licensee the right to continue using the bankrupt’s trademark.

The issue is as much a question of trademark law as it is bankruptcy law.  Under the Bankruptcy Code, the law allows a bankrupt the right to accept or reject a contract, wherein both sides still have obligations.  This is known as an executory contract.  However, Section 363 contains an exemption for certain forms of intellectual property, but it currently does not include trademarks.

The two most well-recognized opinions where the courts’ position diverge is the Seventh Circuit and the First Circuit, which is where the Mission Product case is pending.  In essence, the Mission Product appellate court has held that courts should not impose upon a bankrupt the obligation to continue to monitor how its trademark was being used, which goes to the essence and policy of bankruptcy law.

Never a dull moment in intellectual property and bankruptcy law.

 

ERIC N. ASSOULINE, ESQ.

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Miami Tower, 100 SE 2nd Street, Suite 3105, Miami, Florida 33131

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

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Happy World Intellectual Property Day!

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April 26 marks World Intellectual Property Day.  At Assouline & Berlowe, we have built a team of Intellectual Property (IP) attorneys that handle a wide range of IP issues that impact many aspects of business.  Most people (including attorneys) do not realize how often IP crosses into all areas of business, from employment law (trade secrets), business sales (IP due diligence), to bankruptcy (inventory and valuation).  IP creates valuable assets for businesses because the IP allows the IP owner to stop others from either using their protected IP without their consent.  IP is a powerful tool that could prevent copying, or monetize IP through licensing deals.  On the other hand, infringing someone else’s IP can be a significant liability for an unprepared business.

The Assouline & Berlowe IP team, including 3 registered patent attorneys, is well equipped to handle all aspects of IP prosecution and litigation.  Our IP team routinely files applications to secure patents, trademarks, and copyrights for clients.  Assouline & Berlowe handles IP in a wide range of industries, including alcoholic beverages, mattresses, transportation, cellular technology, security, and celebrities/influencers.  The IP team is highlighted below:

Peter Koziol co-chairs the firm’s IP litigation department.  Peter handles a wide range of IP, especially related to his background in computer science.  In 2017, Peter was lead counsel on approximately 15% of new patent litigation in the Southern District of Florida.  A majority of this patent litigation centered upon software based patent(s).  Peter is also well versed in drafting licensing agreements and co-existence agreements that relate to IP.  Peter is also equipped in handling IP prosecution, with an emphasis in software related IP.

Loren Pearson handles all aspects of domestic and international patent, trademark, and copyright applications.  His work includes evaluating new technologies for patentability, portfolio counseling, and intellectual property registration, prosecution, and litigation.  Loren has a background in chemical and material science, which aids in his ability to tackle complex inventions.  He is also knowledgeable with licensing agreements, opposition proceedings before the Trademark Trial and Appeal Board (TTAB), infringement opinions, to name a few.

Greg Popowitz handles both IP prosecution and litigation.  His background in mechanical engineering and the automotive industry gives a unique perspective on mechanical based products and processes.  Greg handles the IP for an established adult beverage company, along with a wide range of small businesses and entrepreneurs.  Greg is able to assess the client’s needs and tailor fit a custom plan to properly protect and maintain the client’s IP.

Assouling & Berlowe’s IP team has a wide range of competencies to assist businesses with their IP needs.  Whether you need to secure IP protection for your intangible assets, monetize IP you already own, or purchase/license IP, the IP team at Assouline & Berlowe is well equipped to handle your IP needs.

Below is an inventory of the hundreds of patent and trademark applications and registrations handled by the IP Team at Assouline & Berlowe.  This does not include the hundreds of other marks and patents that have been addressed by Assouline & Berlowe attorneys, either from the standpoint of enforcement, counseling, and means of protection.  Over the years, some applications/registrations are abandoned for various business purposes.

PATENTS

pat1

pat2

pat4

pat3

TRADEMARKS

TM12

TM11

TM10

TM9

TM8

TM7

TM5

TM6

TM4

TM3

TM2

TM1

TM13

#worldipday

For any Intellectual Property questions, please contact our offices below.

ASSOULINE & BERLOWE, P.A.

Miami: (305) 567-5576

Fort Lauderdale: (954) 929-1899

Boca Raton: (561) 361-6566

http://www.assoulineberlowe.com/

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

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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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Expand Your Brand

 

TM So you want to apply for a federal trademark to protect your brand. How does it work?  Does it cover all use of the brand?  These are a sampling of the questions I receive from entrepreneur’s and business owners looking to protect their brands.  Securing a federal trademark is a complicated but worthwhile process.  The Intellectual Property attorneys at Assouline & Berlowe take the time to explain the process to the brand owner so they understand what to expect and how to maximize their protection.

When applying for a federal trademark, you must pick the class of goods/services that your brand covers based on your existing use, or expected use, of the brand in commerce. For example, you own and operate a retail space where apparel is sold and you want to protect the brand name of the retail space (the name of the store).  You may want to seek protection in a services based trademark class for the bran associated with the retail space.  If the apparel sold at the retail space, the products, use the same brand, you may want to seek protection in a second product based class for the applicable apparel.  You can seek federal trademark protection in multiple classes of goods/services in the same application.  Generally, the scope of your federal protection is limited to the class of good/services in your federal trademark registration. Common law rights are handled differently.

In a recently released opinion, the Eleventh Circuit Court of Appeals held that a federal trademark registrant’s services based brand had extended protection related to goods. Savannah College of Art & Design, Inc. v Sportswear, Inc., 2017 U.S. App. LEXIS 19168 (11th Cir. Oct. 3, 2017).  The Court relied on a prior trademark case that extended protection of federally registered service marks to goods, despite little rational as to the basis for the expansion.  The Sportswear case stated that a federal registered service mark does not have to register that mark for goods to “establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing of that mark on goods.” Id. at *15.  The registrant still needs to show the alleged infringer’s use of its brand is creating consumer confusion as to the source or origin of the brand. Notably, the Court did not discuss the “natural zone of expansion” doctrine, which can be used be extend a trademark owner’s rights into a new product line that is a natural expansion of their prior use.

While the Sportswear case helps trademark owners for services assert their rights for related goods, the optimal method of protection is registering the brand in the class from the outset.  As a trademark applicant, you can seek registration based on your actual use of the brand in a services field, while also applying for the same brand in a goods classes based upon your bona intent to use the brand in business in the future.  A well thought out branding strategy may include preserving your rights in a field that you plan to expand into.  While the trademark cannot register until you begin use of the brand in the applicable class, you can effectively preserve your place in line for up to three years (extending use in 6 month intervals) while you are preparing to use the brand in commerce.  Utilizing a trademark attorney helps you develop a branding strategy to maximize your protection now and for the future.  Don’t forget, a trademark is an asset and can have immense value. Just ask Apple and Google, whose brands are estimated to be worth $170B and $101B by Forbes, respectively.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.  Follow him on Twitter @InventionAtty.

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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Protect Your Tech: Florida Bar CLE Edition

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Earlier this month, I had the distinct pleasure to present at the Florida Bar Basic Technology CLE about how businesses, and their lawyers, can protect technology using Intellectual Property.  This was the first time a Florida Bar Basic CLE was focused on technology.  To keep the CLE interactive, the presentations included live tweeting using the #CLEHistory hashtag, interactive polls with the audience, and post presentation video outtakes.  The interactive nature of the CLE was perfect for a technology focused CLE.

My portion of the CLE focused on how technology is used protect intellectual property, with the focus on patents.  There are several options when determining how to use patent law to protect technology, from design patents to provisional and non-provisional utility patents.  There are key timetables and strategic considerations to assess when protecting your technology, both before and after the technology is finalized.

One of the interactive questions, pictured below,  I posted to the live audience was whether someone could put “patent pending” on a product as soon as a patent application was filed.  The question was posted during my presentation and the audience texted their results to get an immediate response to the question.  36% of the audience correctly chose the right answer of A – Yes.  Meaning you can put patent pending on a product as soon as you file a patent application.  However, the application must remain active, i.e. not abandoned, to continue marking the product as “patent pending.”  Notably, 44% of the audience thought patent pending depended on what type of patent application was filed.  This is not accurate as it does not matter if the patent application is design, provisional, or non-provisional.

assouline & belrlowe, interactive polling

There are many misconceptions about patent law and it is important to consult with a registered patent attorney to review your technology and plan to maximize your protection.  It was an honor to speak at the first Florida Bar Basic Technology CLE and I enjoyed the interactive nature of the CLE.  Check the Florida Bar CLE page as the Technology CLE will be available for download in the near future.

For questions about Intellectual Property matters involving Technology, contact  Greg Popowitz below.

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/

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

Miami • Ft. Lauderdale • Boca Raton

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The Boca Raton office of Assouline & Berlowe has moved!

Assouline & Berlowe’s Boca Raton, Florida office has recently moved to 1801 N. Military Trail (Suite 160), Boca Raton, Florida 33431.  Our Boca Raton office includes Partner Peter Koziol, head of the Intellectual Property Litigation practice, and Partner Ellen Leibovitch, Florida Board Certified and head of the Labor & Employment Law practice.

Mr. Koziol frequently counsels clients regarding their intellectual property needs.  Whether you need advice on protecting your inventions and intellectual property, or if you have recently been sued for infringement, Mr. Koziol is well versed to assess the situation and recommend the best course of action.  In today’s legal climate, patent assertion entities, or patent trolls as they are commonly referred to, are actively enforcing their IP portfolio against alleged infringers.  If you or your company need help defending an infringement lawsuit, contact Peter Koziol.

Ms. Leibovitch focuses her law practice on labor and employment counseling and litigation, in addition to commercial and business litigation.  If you are starting a new position and need an attorney to draft or review an employment agreement, call Ellen Leibovitch to make sure your rights are protected.  Or, if your company is setting up or modifying internal employee handbooks, non-compete agreements, or other employee-related agreements, Ellen can provide you the appropriate counseling to ensure applicable state and federal laws are followed.

Again, please remember that our Boca Raton office has changed physical location, but all our other contact information remains the same.

For more information on your business needs, call the attorneys at ASSOULINE & BERLOWE – The BUSINESS LAW Firm

http://www.assoulineberlowe.com

Miami (305) 567-5576

Ft. Lauderdale (954) 929-1899

Boca Raton (561) 361-6566

ASSOULINE & BERLOWE, P.A.

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

Miami · Ft. Lauderdale · Boca Raton

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