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.
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.
On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed two powerfully articulated petitions with the USPTO’s Trademark Trial and Appeal Board (TTAB). In both of the petitions, Peloton claimed that, for years, an innumerable amount of fitness industry participants, including Peloton, have received unfounded cease and desist letters from their competitor, Mad Dogg Athletics (Mad Dogg) and its lawyers, threatening them with pricy litigation if the use of the terms SPIN and SPINNING continued. Peloton further accused Mad Dogg of using phony, coercive tactics to preserve what Peloton perceives to be an unfair monopoly over a generic term, stating: “Enough is enough. It is time to put a stop to Mad Dogg’s tactic of profiting by threatening competitors, marketplaces, and even journalists with enforcement of generic trademarks.”
The Peloton case is quickly becoming one of the most highly observed cases by intellectual property lawyers around the country, bringing to light the “genericide” legal concept, as well as the dangers of aggressive enforcement of trademarks.
So, what exactly is “Genericide”? Genericide is when a trademark that starts off as “valid and protectable” loses its distinctiveness when “a majority of the relevant public appropriates the trademark as the name of a product.” Genericide usually occurs when one of two things occur: either the trademark owner fails to police its own brand, resulting in extensive use by its competitors; or the mark becomes so generic in nature that there is no other way to refer to similar products other than by the trademarked name. Often, the use of the brand as an adjective or noun is telling as to whether a mark has become generic. For example, the famous brand Xerox is currently battling genericide. Do you Xerox a piece of paper, or do you make a Xerox copy of the paper? The former shows how the terms has become generic, whereas the later shows the use of the term Xerox as a brand. Xerox has developed an in-depth advertising campaign in an attempt to fight genericide Some brands that are in the trademark graveyard include thermos, yo-yo, and escalator.
A trademark application may be refused or challenged based on the ground of its genericness. See 15 U.S.C. §1064(3). There is one vital issue used to determine whether a mark is generic: “whether members of the relevant public use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986). The genericide determination requires a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Id. at 990.
Aggressive enforcement of trademarks, or trademark bullying (as its often referred to), is a practice in which the trademark owner, who has significant resources, uses overly aggressive tactics “to enforce its trademark beyond what the law allows, is an effort to bully a smaller target entity without the financial means to respond.” Hard Rock Café Int’l United States Inc., v. Rockstar Hotels, Inc., 2018. U.S. Dist. Lexis 227013 (S.D. Fla. June 13, 2018). According to Peloton’s petition, Mad Dogg’s founder, John Baudhuin, has publically admitted that his company spends “hundreds of thousands of dollars a year” policing its trademark and tracking down infringers, which Peloton describes as doubling down on “its poor choice of names by expending significant time and money securing trademark registrations for the generic SPIN and SPINNING terms,” which are now the subject of Peloton’s TTAB’s petitions for cancellation proceedings.
Mad Dogg Athletics has held the trademark registration for the marks SPIN and SPINNING since July 1998 and October 1996 respectively.  Despite the terms being generic, Mad Dogg has held a strong grasp on the trademarks, that is, until they messed with the wrong company.
The group “Mocha Spin Docs” first uploaded their video to the Peloton YouTube channel on August 27th, 2020, self-described as a “sisterhood of black women physicians” who loved their Peloton bike experience. According to Peloton’s petition, Mad Dogg caught wind of the YouTube video and objected, demanding that Peloton remove it on the sole basis of the use of the word SPIN, prompting Peloton to seek cancellation of Mad Dogg’s trademark registration.
Peloton’s petitions, one seeking cancellation and the other partial cancellation of the trademarks, list several compelling facts. Among those facts is the definition of Spin bikes, which Peloton defines as “a type of indoor exercise cycle that closely mimics the ride of an actual bike, including the ability to stand up on pedals (like on a real bike).” They further define spin classes as “typically held at a gym or workout studio, where multiple spin bikes are placed in a room, usually close together, with an instructor in front. The class usually involves loud music, energetic instructions and a community atmosphere of encouragement and competition.” A Google search also lists a variety of different companies such as Peloton, SoulCycle, Flywheel, NordicTrack, among others, in reviews by various publications.
To add to the list of compelling reasons to terminate Mad Dogg’s registrations of their Spin marks, Peloton states that “five minutes of simple Google searching” . . . makes it easy to see that “everyone in the world, other than Mad Dogg, believes that ‘spin’ and ‘spinning’ are generic terms to describe a form of exercise bike and in-studio class.” Peloton then aggressively proceeds to make their point by adding a fully-charged list of examples from their Google search. Peloton’s search includes Wikipedia and Urban Dictionary as well articles, which include some from publications such as The New York Times, The Washington Post, Bloomberg, and TeenVogue, to name a few. In a piece by the online outlet TechDirt, it reported on the “spin” and “spinning” phenomenon best whenit reported that, “Much like other types of workout classes, nobody sees spinning as a source identifier. . .Nobody thinks of Mad Dogg Athletics. Hell, most people haven’t even heard of MDA. . .The term spinning is generic. It just is.”
With all the examples and evidence raised by Peloton, it appears that their prayer for relief that the registrations may be cancelled, whether in full or in part, may, pursuant to 15 U.S.C. §1064(3), be granted in their favor.
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.
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.
For any Intellectual Property questions, please contact our offices below.
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.
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.
Assouline & Berlowe patent attorneys Peter Koziol and Greg Popowitz will be speaking at a webinar focusing on Intellectual Property for the Non-IP Attorney. The Pincus Professional Education webinar will take place on August 06, 2015 at 3 p.m. EST
To view the full announcement and register for the event, click here.
An overview of the Intellectual Property Topics that will be discussed are highlighted below.
IP is a complicated area, even for IP attorneys. For the rest of us, the nitty gritty rules are sometimes a mystery. Listen in on this IP for the Non-IP attorney webinar so you can understand how to best protect your client and their assets. You will learn:
Origins of Intellectual Property (IP) in the United States and Internationally
The USPTO is part of the U.S. Department of Commerce (Patents and Trademarks)
WIPO covers International IP rights
How a non-IP lawyer can identify IP to Protect their Clients and Generate Value for the Business (Emphasis on Patents)
Advertising 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.
On June 20, 2011, Judge Federico A. Moreno, Chief Judge for the United States District Court for the Southern District of Florida, signed Administrative Order 2011-53 establishing a pilot program to encourage the enhancement of expertise by assigning certain judges to hear cases involving patents. This pilot program was a trial program that would run for a period of ten years. However, and unfortunately, after only three years into the pilot program, Judge Moreno, after conferring with his brethren on the bench, have decided to terminate the pilot program.
According to Administrative Order 2014-58, issued by Judge Moreno, “the administration of justice would best be served in this District by terminating the pilot project and allowing patent cases in the future to remain assigned at random to the Judges to whom they are initially assigned.”
The rationale in establishing the patent pilot program was actually quite intuitive. Looking at patent law at the appellate level, the Federal Circuit of Appeals, which is one of only twelve courts in the federal appellate system, has exclusive jurisdiction to hear patent case appeals from lower district courts across the nation. This provides patent dispute litigants with a central judicial body to have exclusive jurisdiction to hear appeals involving patent cases. Such a centralized appellate court avoids potential variation in holdings between the various appellate courts across the United States.
At the trial court level, district court judges nationwide are randomly assigned patent cases based on where the action is filed. Any particular judge may have tried numerous patent cases, or not a single one. Oftentimes, a district court judge’s docket is consumed with criminal trials and general civil litigation. Intellectual property cases, especially patent cases, are few and far between, making up a small fraction of total cases filed annually. As a result, most district court judges have limited experience concerning the nuances that go into trying a patent case.
By instituting the patent pilot program, the United States District Court for the Southern District of Florida was selected as only one of the fourteen to participate in the program. The program attempted to streamline patent cases filed in the district by having all patent cases assigned to a specific set of judges. This would increase the frequency in which the judges heard patent cases, thereby building a foundation of knowledge needed to try patent cases. The pilot program sought to replicate the Federal Circuit by having judges that specialized in hearing patent cases.
As the pilot program has now been terminated in the Southern District of Florida, all newly filed patent cases are randomly assigned to a judge in the Southern District of Florida, just like every other case. I was excited to learn of the pilot program in 2011 and hoped the program would make the judicial system more efficient for judges, litigants, and counsel to try patent cases in this jurisdiction. District court judges handle a wide array of cases. The pilot program was a great way to route the few patent cases filed in the Southern District of Florida to specialized judges who had a solid foundation of the specialized aspects of patent litigation. Although, through this experimental pilot program, the local patent bar had wished the program would have become a permanent system, it has come to an end. Fortunately, the judges of the Southern District are excellent and we will be fine without it.
If you have any questions about the patent process, contact Mr. Popowitz below.