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People love March Madness. There’s no other competition in the United States so open ended. More than 60 of the nation’s premier college basketball teams compete with triumphs, upsets, and finish with an undisputed champion. Diehard and casual fans of college basketball fill out more than 40 million brackets each year trying and predict the winner. Even the president is in on it, and he’s no slouch. His bracket is currently ranked in the 98th percentile. March Madness lives up to its name. But it’s more than pure sports entertainment, there’s a fascinating legal aspect to its existence as well. The trademark “March Madness” was settled more than fifteen years ago when the courts decided the moniker was so important it deserved to be reclassified. Papers labeled it “case of the year” in trademark law.
The phrase march Madness actually began use as early as in 1939 when the term was included in a poem about the March tournament. The Illinois High School Association (“IHSA”) later applied it to their annual basketball tournament. It was billed as the premier high school tournament of the United States. It was even broadcast on national television. The IHSA filed for federal registration in the early 1990s, and received protection a few years later.
As they included more teams, the event grew in notoriety. In the early 1980s a Chicago sports caster began referring to the event as “March Madness” and it stuck. Importantly, the term was widely applied to the event by the public before the NCAA ever used it themselves. So when the IHSA filed for trademark of the phrase March Madness, the NCAA objected under their common law usage. The IHSA then filed suit against GTE Vantage, Inc., which was developing a basketball sport video game, licensed by the NCAA, called “NCAA Championship Basketball”. The words ‘March Madness’ were included on the cover and in the game itself.
This was a case of reverse confusion. The NCAA was the more recognizable establishment than the IHSA so the trademark became associated with them by the public. Even though the IHSA used the term far longer than the NCAA, they worried that their trademark would suffer brand confusion, or their tournaments would be misinterpreted as sponsored by the NCAA. Normally the senior user of a mark would stop the junior from applying it. But when the case came to court, the judge ruled otherwise. The Central District of Illinois judge decided the IHSA’s brand had become diluted by the NCAA. Its connotation created by the public sphere made a ‘dual-use term’ that applied to both users equally. The IHSA couldn’t control what the public applied the term ‘March Madness’ to, no matter how much it might damage their brand.
Forced to share the mark, the two organizations eventually created a limited liability corporation, the Match Madness Athletic Association (“MMAA”), to control the trademark. Both partners were made permanent licensors. The MMAA has protected the term “March Madness” since in court cases against other prospective sporting events, car sales, and website name infringement. In latter cases they found from their focus group that 83.7% of people had heard of March Madness and 70% associated the term with basketball.
Though the mark is strong in popular culture, it’s important to remember how it can serve as a wider lesson. Do not let your trademark lose its public significance, and take all efforts to make sure the public is aware of its real intention and application. Allowing your trademark to become public domain or synonymous with another product is self-defeating. Just like how picking teams for your bracket based on the ferocity of their mascots doesn’t do you any good and is self-defeating. Or ‘self-defeating’ like Florida State. Or Duke. You get the picture.
The Consequences of Using the Trademark Registration Symbol ® If Your Mark is Not Registered (Reprise)Friday, February 10th, 2012
We posted a quick guide to risks involved in improperly using a Trademark Registration Symbol (®) a few years back, and want to make sure our new readers are just as well informed.
Some businesses will improperly use the trademark registered symbol for a wide range of reasons. Most often, they’re merely mistaken, or innocently using the symbol improperly. But to do so deliberately is fraud. As per Section 906.02 of the Trademark Manual of Examining Procedure:
“Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See TMEP §906.04. However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent.”
Some of the most common reasons for improper use that do not indicate fraud are:
- Confusion between application of trademark and copyright notices. For copyrights the © should be applied before publication.
- For trademarks many people mistakenly begin applying ® to their product while their trademark is still only an application. A trademark must be fully registered by the USPTO before ® can be used.
- Mistaken belief that registration in foreign country applies in United States, as well.
- Registration for only a portion of the mark
- Registering the mark for other goods
The USPTO prefers not to penalize persons who unintentionally apply the registration symbol incorrectly, but the USPTO is well within its right to do so. If the USPTO were to pursue a person who incorrectly applies a registration symbol, that person would have to prove their innocence and unintentional fraud. One may be found guilty of fraud, unclean hands, or suffer denial of registration.
If the USPTO decides that fraud was committed deliberately, a trademark applicant’s request for relief may be barred under the doctrine of ‘unclean hands’ and evidence of intentional misuse may be used to deny a trademark registration.
Do not allow yourself to be penalized for unintentionally committing fraud. Always speak to an attorney when filing for a trademark registration, or when considering doing so. If not, you may place your brand, or company at serious risk.
According to Jason Rantanen and Lee Petherbridge, there is a problem with the Leahy-Smith America Invents Act (AIA). The problem lies in the possible exploitation of a new procedure that the AIA introduces to patent applicants. As a result of this possible exploitation, there may be a reduction in the quality of information available to the patent office when it is making its determination on whether to issue a patent. Furthermore, it can be expected that the patent office will get it right less often than before and therefore more low-quality patents (those that do not meet the requirements for patentability) are likely to be issued. Finally, this new procedure also reveals previously non-existent risks to the integrity of the patent system.
The AIA currently provides an applicant with two options when securing a patent. The first option requires the applicant to pay the cost of disclosing relevant information throughout the initial examination of patentability. The probable effect of this first option is likely to result in more expensive and time consuming prosecution as well as permit a narrower amount of claims. The second option provides an applicant with the choice of whether to pay the cost of disclosing relevant information throughout the initial examination of patentability. This option is likely to result in a cheaper and quicker prosecution as well as permit a broader amount of claims. The difference in the secondary effects of the two options can be found in option two, which throws the cost of information about patent scope and patentability from the applicant to “higher cost providers” such as the patent office, courts, and competitors. The problem with the AIA lies within the second option.
Before the program, patent law had a supplement to prevent the possible harmful effects of using option two, the inequitable conduct doctrine. This doctrine forced a “low probability but high cost sanction” on an applicant caught choosing the second option. However, under the new AIA procedure, patent applicants can choose not to disclose relevant information of patentability despite their knowledge of such information throughout the initial examination. Therefore, the patent applicants are obtaining a questionable patent at best and, depending on strategy, may disclose the information later on through in what Representative Waxman referred to as a “get out of jail free card” in his statement to Congress on June 24, 2011. This in turn averts the influence of inequitable conduct fundamentally and even though there remains the possibility of a criminal sanction, its effectiveness is skeptical given the extreme level of conduct that seems to be required in order to impose such a sanction.
By reducing the risk in choosing option two, the program now makes this option more appealing to the patent applicant. For example, if a patentee encounters a competitor who would like to take the matter to court subsequent monetization of a patentee’s broader claims, the patentee may go on the defensive and call upon a supplemental examination. The benefits of using a supplemental examination reveal its appeal to patent applicants as well as the risks associated with choosing an option two.
For one, it permits a patentee to erase the behavior they carried out during the initial examination, thus removing at least one option for challenging the patent, and therefore strengthening the patent by increasing the chances of it not being found unenforceable. Secondly, supplemental examination allows for a patentee to place an increased amount of “challenging art” into the file before litigation. As a result, the patentee benefits from both “patent office externalities that favor the allowance of claims” and “from judicial norms that express a reluctance to invalidate claims based on art that the patent office considered in connection with the patent.” Lastly, competitors will be unable to determine which choice a patent applicant made, whether it was option one or option two, therefore compromising their ability to respond strategically. Consequently, the inability of competitors to distinguish between option one and option two will make it improbable that an option one patentee will get the benefit of the cost acquired by selecting that option.
With this seemingly increased risk of augmenting the number of low-quality patents through AIA’s new procedure, an already well known relationship between low-quality patents and competition surfaces. The outcome being that low-quality patents can cause competition to be pricier due to the possibility of competitors having to pay “supramarginal” cost prices owed to patents that should have never been issued. Furthermore, the cost of research and development could also increase due to low-quality patents because future innovators may be required to pay rents on patents that should have never been issued. Finally, there is a possibility that low-quality patents would make market entry increasingly difficult and costly because new applicants may be also be required to pay rents for patents that never should have been issued, and have to defend “nuisance suits” against such patents, which may cost up to “four to five million for middle of the road cases.”
Lesser known but naturally flowing from logic is that in a world that permits supplemental examination there is a possibility that low-quality patents may also reduce capital investment grounded on a patent or small number of patents. This is because before supplemental examination is invoked, all patents should be thought of as slightly less likely to be enforced successfully because they are slightly more likely to be viewed as invalid and therefore worth. Therefore, in a world that permits supplemental examination “the value of a patent, or a small portfolio, such as a small business or a start-up might own, is worth marginally less” and investors would therefore be inclined to pay less for it.
On the other hand, the opposite effect is more likely to occur with firms that hold large portfolios of patents in a supplemental examination world because, despite the possibility that their portfolios could end up being slightly less valuable, if those portfolios remain large then there should be good chance of enforcing relevant patents. Therefore, large firms should be able to obtain lower-priced patents as well as enforce more of them. As a consequence, these larger firms may be preferred over the smaller firms and start-ups that attempt to enter a market in such a world.
In conclusion, possible exploitation of the AIA’s new procedure may result in the reduction of the quality of information available to the patent office when it is making its determination on whether to issue a patent, therefore perhaps increasing the issuance of more low-quality patents, and thus revealing risks that were previously non-existent. This is largely due to the supplemental examination alternative that is available to a patentee when choosing an option. Therefore, until further analysis of the AIA is made and its overall effects on the patent system are uncovered, the problem will remain.
For further reading, the full article can be found here.
The technology wars continue to smolder between Apple and other smart-phone companies. It’s a web of litigation, with Apple sustaining lawsuits from more than a dozen companies, while also targeting some of its biggest competitors with claims of their own. Though Apple blew the field wide open in 2007 with the release of the iPhone, new and old competitors reacted quickly to release their own comparable devices. For various reasons some old competitors, like Canada’s Research in Motion (RiM), have fallen hard. Others, like Motorola, are on a rebounding surge. And a new type of competition, from Google’s focus on designing specifically open-sourced software instead of hardware or devices, has proven to be resilient and steadily growing.
Google’s strategy isn’t entirely new. Other companies have created open-sourced software before, and plenty others focused on making operating software for phones as well. But none of them combined the two, along with Google’s overall vision for unified devices and software. Android allows independent developers to make their own applications, without Apple’s app rules—which number well above a hundred. This allows higher innovation in the field, but with less regulation comes less safety for the user who chooses unverified applications. Despite these risks, and Apple’s larger app store, the Android operating system has steadily risen in market share. It currently makes up 53% of all devices, compared to iOS’s 29%.
But Apple is fighting back.
As reported recently in the Wall Street Journal, patents are taking a new role in litigation. Many patent lawyers formerly involved in corporate defense are now working for patent holding companies. These companies purchase intellectual property, and then seek earnings from their purchased intellectual property through litigation. Even at traditional corporate level, patents are being redefined. They were often viewed as a shield, protecting a company’s or inventors’ intellectual property and profits. But they’re finding that they’re also incredible tools for stymieing competition and making significant profits. TiVo has recently received hundreds of millions of dollars from Dish Network, AT&T, and EchoStar by claiming infringement on patents for DVR technology. They still have further lawsuits open against Verizon and Microsoft, with already existing long term licensing agreements with Comcast and DirectTV. Companies have responded by buying up patents in a bid to protect themselves, and earn revenue. Google spent $12.5 billion purchasing Motorola, as it had only a few thousand before, including those bought from IBM. Apple spent $4.5 billion on buying patents from Nortel. Unwilling to flat out sell its own patents, Microsoft has extensively licensed out its intellectual property, and now has 70% of Android running smart phones under its patent umbrella.
On the offensive against Google, Apple opened up lawsuits against many of Google’s hardware partners, such as Motorola, Nokia, and HTC. At the same time, though, Apple is being sued by Kodak, Motorola, Nokia, and various other technology patent holding companies. Motorola is suing, and being sued by, Microsoft; while Nokia, Samsung, Sharp, LG, Hitachi, and Toshiba all go at it. According to The Economist, mobile-phone related lawsuits have risen by 20% annually since 2006. Even more difficult to understand is exactly what Apple is suing over, and what their recent gains have actually been.
In James Grimmelmann’s article, “Owning the Stack: The Legal War to Control the Smartphone Platform”, he describes how mobile technology is built in stacks of service providers, software, and hardware. At the bottom lie the networks, then the hardware and devices, the operating systems and how they interact with the other two come next, which culminates in the software written for the operating systems. That software would include the apps and programs that we easily recognize and utilize. Lawsuits in the field of mobile devices can be horizontal in nature: suing people on the same technological plane—such as two app developers suing each other for trademark infringement. Or lawsuits can be vertical in nature, claiming their own technology as the basis for other companies’ devices or software. The latter is exactly what Apple has attempted to do. Apple’s lawsuits are generally over various extremely basic technologies, looking to shake down other companies for significant amounts of money—or put them out of business altogether.
Ultimately targeting Google itself, Apple has declared war on the ‘Open Handset Alliance’ with the lawsuits against HTC and Motorola. This loosely applied term refers to a group of companies that have declared themselves proponents of open-sourced technology, and consists of companies like HTC, Sony, Dell, Intel, LG, Samsung, T-Mobile, Motorola, and Nvidia. Apple even made some gains against Samsung in Germany, where it temporarily blocked the release of Samsung’s Galaxy tablet. Their lawsuits against HTC and Motorola are even more interesting. Apple sued both companies through the U.S. International Trade Commission, where a positive verdict would ban the infringing technology from being imported to the United States. In early January, though, Motorola was ruled not to be infringing on Apple’s patents. They responded in celebration by opening a new lawsuit against Apple, this time in Florida. The case had already been tried, with success, in Germany a few months prior.
Apple’s case against HTC over ten alleged patent infringements in the US ITC was far more successful. Though all but two claims were ultimately thrown out, HTC must still race to rework their devices sans the infringed technology. HTC has until April 2012 to make the necessary changes, which they insist is entirely feasible while still retaining their products’ functionality. One might assume they’re also looking into filing another patent lawsuit of their own.
 Ashby Jones’ article in the Wall Street Journal can be found here: http://online.wsj.com/article/SB10001424052970203750404577173402442681284.html
 A wonderful illustration of the entangling lawsuits can be found here, from The Guardian’s website: http://www.guardian.co.uk/technology/blog/2010/nov/01/smartphone-patent-lawsuits-diagram#
 James Grimmelman’s article can be found here: http://arstechnica.com/tech-policy/news/2011/09/owning-the-stack-the-legal-war-for-control-of-the-smartphone-platform.ars/1
December’s close marked the end of the court-mandated foreclosure mediation program. Although mediation remains an option for parties, and existing or pending mediations will carry forth as planned, no new court mandated mediations shall be filed. This concludes a two year saga as the courts looked for an option to alleviate a stressed system that suffered from an inundation of cases, budget cuts, and staff reductions.
The goal of the program was to allow the borrower and lender one final chance at finding compromise before the case came before a judge. But, for many reasons, the system failed. A review published in September 2011 illustrated the difficulties in reaching agreement. While civil court mediations are often successful, with a near 70 percent conclusion rate, the foreclosures lagged behind. The state of Florida had a 3.6 percentage mediation success rate. In Palm Beach County: only 1.6 percent. Other sources showed that 67 percent of all mediations came to an impasse with no agreement, with only a 4 percent success rate overall.
Much of the low rate of success can be attributed to the fact that many borrowers simply could not be located. 59 percent of eligible borrowers were unreachable. Only 14 percent of those who were contacted opted to participate. Palm Beach County had a 60 percent rate for unfound borrowers, while retaining a higher 29 percent attendance rate.
It seemed that the system was doomed to fail from the beginning. Many Lenders saw the mediations as just another step in the lengthy foreclosure cases, rather than focusing on compromise. They purported that before the foreclosures ever came to trial there would be earlier attempts to find some sort of agreement or modification to their loan structure. One South Florida foreclosure defense attorney, as quoted in the Palm Beach Post, agreed. ”You have someone on the phone from the bank and the only thing they have is a computer monitor in front of them and the only thing they can do is modify,” he said. “It’s not mediation; its modification or bust.”
One big wrench in the mediation process was that homeowners may not qualify for these standard ‘modifications’ to begin with, while the lender had little incentive to derivate from its normal payment plans. Homeowner advocates also complained that many lender representatives weren’t authorized to make changes in the first place. In October, a committee of independent judges recommended an end to the program. All in all, the close of the program is of little probable importance. Avenues for mediation are still open, while the lengthy process for foreclosure mediations has been marginally streamlined. The program failed not for want of intent, but for lack of justification based on the low success rate.
As always, if you are in foreclosure or in the risk thereof, contact your attorney immediately. The offices of Santucci Priore, P.L. are always willing to aid any homeowner in their time of need.
A link to the full order signed by Judge Charles T. Canady can be found here.
The District Court of the Western District of Pennsylvania recently granted summary judgment in favor of the Pittsburgh Steelers of the National Football League regarding a lawsuit for trademark infringement of the “Terrible Towel” trademark. Beginning in 1975, at the initiation of radio broadcaster Myron Cope, fans of the Steelers have waved yellow and black colored rally towels depicting the words “Terrible Towel” as way to show support for the team during games. These towels have gained substantial public recognition due to the Steelers’ recent Super Bowl victory in 2008, thus making Steelers merchandise a top seller.
Non-profit organization Allegheny Valley School Foundation (“AVS”) is the owner of a federal trademark registration for the phrase “Terrible Towel” for use on goods such as T-Shirts, which has been in continuous use for over two decades. The Steelers are the exclusive licensee of this mark, which provides them the right to sell merchandise with the “Terrible Towel” mark.
The trademark infringement lawsuit was initiated due to the Defendant, Eugene Berry Enterprise’s, sale of T-shirts bearing the phrase “The Terrible T-Shirt a Pittsburgh Original” in black and gold coloring. The Defendant filed a federal trademark application with the United States Patent and Trademark Office (“USPTO”) in May of 2011 to register the “Terrible T-Shirt” phrase as a trademark for use on T-Shirts. After refusing to withdraw the application, Defendants placed orders for T-Shirts with the “Terrible T-Shirt” design printed in black and gold. Eugene Berry allegedly gave employees of National Retail Graphics a letter from AVS purporting to give permission to Eugene Berry Enterprises to sell the T-Shirts.
Under Federal law, in order to be successful in a federal trademark infringement lawsuit, the Plaintiff must prove the following elements: 1) the trademark in question is valid and legally protectable; 2) plaintiff owns the trademark in question; and 3) the defendant’s use of the Plaintiff’s mark in interstate commerce is likely to cause consumer confusion. The third prong, likelihood of consumer confusion, is determined by an application of several detailed factors.
District Court Judge Arthur J. Schwab found that the phrase “Terrible Towel” is legally protectable because it is not a descriptive term. Judge Schwab instead compared its trademark value to marks such as Kodak and Lifesavers, which are highly distinctive marks, thus indicating a high level of legal protection. Schwab emphasized the strength of “Terrible Towel” mark due to its highly visible use in sports television broadcasts and media articles, which has caused consumers to identify the towels with the City of Pittsburgh and the Steelers franchise. Judge Schwab bolstered his conclusion that the “Terrible Towel” mark is famous due to the fact that towels bearing the mark have been taken into space and waved on the top of Mount Everest.
Judge Schwab further noted that the phrases and coloring of Defendant’s T-Shirts were similar to Plaintiff’s goods using its mark. Judge Schwab concluded by finding that Defendant’s T-Shirts were likely to confuse consumers into believing that the T-Shirts were official Steelers merchandise or otherwise sponsored by the Steelers, especially due to the fact that Defendant specifically marketed his T-Shirts to Steelers fans.
Read the full article here:
The attorneys of the law firm of Santucci Priore, P.L. have been retained by the Defendants in the case of Fifty-Six Hope Road Music Limited v. Richard Booker, Bob Marley Movement of Jah People, Inc. and The Bob Marley Heritage Corporation, Case No. 1:11-cv-24326-MGC which is currently pending in the United States District Court in and for the Southern District of Florida in Miami. The Plaintiff alleges trademark infringement, unfair competition, dilution and unauthorized use of name and likeness claiming the exclusive right to use various Marley-related trademarks as well as Bob Marley’s name and likeness.
According to public records and the Defendants, the Defendant company Bob Marley Movement of Jah People, Inc. was a family company formed back in 1978 for the purpose of a fan club and to distribute Bob Marley and the Wailers merchandise. For years, the family company was run by Richard Booker and Cedella “Mama Marley” Booker who is the mother of both Bob Marley and Richard Booker. Their mother recently passed away leaving Richard Booker as one of the remaining principals of the company. The Nine Mile Reggae Music Festival which takes place in Miami in March of every year is operated by the Defendants Richard Booker and Bob Marley Movement of Jah People, Inc., and is reported to have provided one million meals to hungry families.
The complete Press Release of the Defendants Richard Booker, Bob Marley Movement of Jah People, Inc. and The Bob Marley Heritage Corporation is set forth below:
FOR IMMEDIATE RELEASE
December 8, 2011
CONTACT: Attorney Michael Santucci
(954) 351-7474, email@example.com
Reaction to Marley Family Dispute
“I am heartbroken by what is happening.”
This was the immediate response by Richard Booker, brother of reggae music legend Bob Marley, reacting to a recent lawsuit filed against him by a company owned by his nieces, nephews and sister-in-law in the United States District Court in Miami, Florida. Booker said, “This would not have escalated to this point if our mother were still here.”
Nonetheless, the defendants, The Bob Marley Movement of Jah People, Inc., The Bob Marley Heritage Corp. and Richard Booker recently retained trademark/entertainment attorney Michael I. Santucci of the firm of Santucci Priore, P.L. in Fort Lauderdale to defend the lawsuit.
Despite the suit, Booker confirmed his plans to market a line of products based upon his mother Cedella “Mama Marley” Booker’s recipes to continue her legacy. Mama Marley died April 8, 2008. Booker and his mother were longtime partners in various business ventures.
For example, the Mama Marley food project is an offshoot of the success enjoyed by the several Jamaican restaurants that have operated under the Mama Marley name for years and which made the progression to a retail line of Jamaican inspired foods. A portion of the line’s profits will go to charity.
When Richard Booker told his niece Cedella Marley Minto about his plans for the Mama Marley food line years ago, “she couldn’t have been more enthusiastic or encouraging,” according to Booker. Minto operates the day-to-day business of 56 Hope Road Music Limited, the plaintiff in the lawsuit. As time passed, she insisted that a piece of the trademark rights be included in her company, 56 Hope Road, a concept to which Booker and Mama Marley were at first receptive. However additional demands were soon made including majority control and requirements that Booker contribute Mama Marley’s likeness, biography, voice, etc. to the venture. “It was too much. I couldn’t put out her gospel album, children’s album, or cookbook,” Booker remarked.
Another count of the complaint seeks to enjoin the presentation of the Festival by The Bob Marley Movement of Jah People, Inc., insisting that that company now change its name. The festival has been run by Mr. Booker for almost two decades. Attorney Michael Santucci will call upon the Plaintiff to explain why it waited until now to challenge The Bob Marley Movement of Jah People’s activities, which was formed back in 1978.
Over the last 18 years, the enormously successful music festival promoted by Booker’s company celebrates Bob Marley’s birthday and has become an annual Miami tradition. It has been a family affair with his nieces and nephews providing spirited performances that have brought audiences to their feet in their father’s memory. Not only have they performed at the event, they have appeared in the promotion and advertising of the event presented by the “Movement,” a name inspired by Bob Marley himself.
The 2012 Nine Mile Music Festival is scheduled to take place in Miami on March 3, 2012. As usual, concert goers will be required to make a food donation as a part of the price of admission, a practice that has been estimated to have provided over one million meals to an array of charities.
The music legend personally caused the formation of the Movement for their mother in February 1978. Originally named “Bob Marley and the Wailers Fan Club, Inc.,” the company’s purpose was to operate a fan club and to manufacture and supply Bob Marley & the Wailers souvenirs and merchandise which included tie died shirts, posters, pictures, towels, books, and various other branded items. “Plaintiff 56 Hope Road was not the first to use my brother’s name or likeness on products as a trademark. It was the Movement,” Booker said.
Booker and his mother felt that it was only fitting that when Bob Marley passed in 1981, that the company that had served as his fan club pay tribute to his memory in song and charity by the presentation of the annual festival.
In addition to operating the “Movement,” Booker also operates Nine Mile, a tourist destination in the Jamaican mountains where Bob and their mother were both born, lived and where they have been laid to rest. The location has been the subject of numerous travelogues and attracts visitors from all over the world each year.
Booker does not think that either his mother or brother would ever have approved of allowing a family matter to become a public dispute that features unfounded allegations and name calling, according to Booker. “In the defense of this case,” he said, “I am honoring my brother and our mother, whose memories I cherish each day.”
Many of our clients seek our assistance in preparing, filing, prosecuting, opposing and cancelling federal or United States Trademark Applications and Registrations. However, there are lesser known benefits afforded to companies and people who also seek Florida Trademark Registrations. The benefits of registering a trademark in Florida are:
1. The Florida Trademark Act at § 495.141(1), Florida Statutes now provides for an award of attorneys’ fees to the prevailing party in a trademark infringement action. Trademark litigation is often costly and unfortunately often determined based upon which party is the most aggressive and can endure litigation the longest. The new fee provision permits the recovery of such expenses and therefore gives a smaller company a fairer chance to pursue actions to police their marks than the standard under the federal Lanham Act (Trademark Act), Title 15, United States Code.
2. Claims for damages under Florida law are sometimes governed by more liberal standards than some federal circuits in that it may be easier to obtain an award of the infringer’s profits.
3. Having a Florida trademark registration gives the holder a basis to exercise the option of filing a lawsuit in a Florida state court (if any of the infringement occurred in Florida). It is often far more cost effective to litigate in a Florida state court than a federal court. Florida state courts often provide the parties with far more leeway in voir dire (jury selection), which in federal court is generally limited and conducted largely by the United States District Judge.
4. The application process is usually complete within a few weeks as opposed to a federal application which usually takes between eight (8) months to a year and a half.
5. Although a Florida Trademark Registration only applies to the State of Florida, the application is far less costly than a United States Application.
6. The owner of a Florida Trademark Registration is entitled to a rebuttable presumption that it is the owner of the trademark in Florida and that its trademark rights in Florida are valid. This can provide the owner a huge advantage in court.
Regardless of residency or principal place of business, any person or company who uses a trademark in Florida commerce may be eligible to apply for a Florida Trademark Registration. Also note that forming a corporation, partnership, limited liability company or other business entity in Florida does not create any trademark rights at all, and is not the equivalent to a Florida Trademark Registration. Other filings which are often confused are state or county Applications for Fictitious Name Registrations (“DBA’s”). These registrations are also separate from and have little if any bearing on trademark rights of Florida Trademark Registrations.
Feel free to contact me if you would like to learn more.Michael I. Santucci Trademark Attorney firstname.lastname@example.org 954.351.7474
The Florida Legislature has recently made some changes to the Power of Attorney (POA) laws in Florida. Though some changes are merely semantic, overall they can affect your current POA and the way the Court views it. Below are some, but not all, of the important changes in POA laws. If you already have a POA, or are planning on updating yours, it is best to speak to your legal advisor for advice.
» The execution requirements of a power of attorney are the same as that of a deed.
» To make a power durable, the same language as currently required under Section 709.08, Florida Statutes is still required.
» Power still ceases at death, and while older ‘springboard’ durable clauses will be grandfathered in, no new ones shall be made.
» A photocopy or electronically transmitted power of attorney should be considered as an original for purposes of delivery and notice of the same.
» No more springing or conditional powers of attorney. All powers of attorney must be self-executing at time of execution. A power of attorney executed prior to Oct. 1 is still supposed to be accepted as valid, including springing powers.
» Due to possible conflicts of defining when the clause has been “sprung” – incapacitation could be contested.
» All powers of attorney are now immediate.
» There is a limitation on agents who may be compensated when performing under a properly executed power of attorney. This provision may cause some concern for professional guardians who act as an agent for more than three people if they want to be compensated for their work.
» To clear up a perceived ambiguity in the current law, the law permits the appointment of multiple agents and successor agents. There is no need to have a power of attorney for each person; one power of attorney may be used for more than one agent; in the event multiple agents are chosen, then either has the authority to act alone unless otherwise provided by the power of attorney.
» Acceptance of an agent under a power of attorney is limited to the specific action taken.
» You can have partial acceptance of an agent under a power of attorney.
» Some POAs are subject to reporting requirements.
» All powers of attorney must be specific. Unless permitted in the context of certain financial transactions, no incorporation by reference or “check the box” or “initial the box” forms should be acceptable under the Law.
» Power of attorney is now more strictly defined.
» The gifting of a principal’s property is restricted unless the power of attorney permits otherwise, as provided in the Law.
» One must provide notice for any financial institutions involved in the estate before POA can be given. Notice to a financial institution or title company is not deemed given until five business days after it is received.