Concept Law Group’s Erin Martin Appointed to Board of Broward County Women Lawyers Association

On Tuesday, August 25, 2015, several of our firm members had the privilege of attending the installation of the 2015-2016 Board of Directors and Officers of the Broward County Women Lawyers Association at the Renaissance Hotel.  It was an honor to witness Congresswoman Debbie Wasserman Schultz give the keynote address and administer the oath of office to the new board.  Over 200 lawyers, judges, dignitaries, family members, and guests, as well as FAWL President Kristin Norse, President-Elect Leora Freire, and other FAWL officers joined  in the celebration. We would like to congratulate the new Board of Directors and Officers, including the our own associate attorney, Erin Martin, as she begins her role as the Membership Director.  During the event, the outgoing  president, Ninowtzka Mier, was recognized for her exceptional leadership and we wish the best of luck to the new president, Jennifer Erdelyi, as she begins her term.  The Concept Law Group P.A., was proud to attend and sponsor this event. Professional photograph courtesy of michaelmurphy.com.

New Roadblock To UBER’S Entry Into Florida

Our firm, along with Santucci Priore, P.L., filed suit on behalf of our mutual client, Florida company Uber Promotions, Inc., against California based Uber Technologies, Inc. last week for trademark infringement, unfair competition and related claims seeking an injunction to stop the California company from using the marks UBER and ÜBER in Florida and in interstate commerce.  The Complaint filed in the United States District Court in and for the Northern District of Florida, Case # 1:15-cv-00206-MW-GRJ, also seeks an order to cancel the California company’s federal trademark registration, to block a pending application, and for an award of money damages, punitive damages, treble damages, and attorneys’ fees.

The purposes of the lawsuit is to mitigate consumer confusion, which is occurring on a daily basis. The Florida company receives calls and emails from customers looking for, or complaining about the Defendant, and from Defendant’s own drivers and employees looking for, or complaining about the Defendant. Uber Promotions, Inc. has no affiliation with, and has never authorized the use of the UBER trademarks by Uber Technologies, Inc., the maker of the Uber software application.

As alleged in the Complaint, the Florida Plaintiff used the trademark UBER, continuously, with passenger transportation and vehicle charter services, several years before the Defendant registered or started using it anywhere, i.e., since 2006, as opposed to 2010 on the part of the Defendant.  When the California Defendant recently began entering into various Florida markets and started using Plaintiff’s exact name “Uber Promotions” in social media, the problems exacerbated.

The legal team representing the Plaintiff, include Alexander Brown and Scott Smiley of the Concept Law Group and Michael I. Santucci of Santucci Priore, P.L., who frequently works with us on intellectual property matters, and, in fact, works under the same roof in Fort Lauderdale as a collective intellectual property think tank.  Santucci was partly responsible for obtaining a Two Hundred Forty Million Dollar ($240,000,000) verdict against The Walt Disney Company in 2002 for misuse of other intellectual property.  https://500law.com/members/michael-santucci/.  Alexander Brown successfully tried a New York copyright/trade secret infringement case against Security Mutual Life Insurance Company in 2011 that resulted in a Twenty Six Million Dollar ($26,000,000) jury verdict for his client and was trial counsel in a 2010 Florida case with patent attorney Scott Smiley, in which they obtained a nearly Twenty Five Million Dollar ($25,000,000) jury verdict against The Home Depot.

How Can I Get a Patent in a Foreign Country?

Patents are territorial. That is, a patent is only enforceable in the single country from which it has been issued. Because the economy has become so global and the economies of other countries are nearly as robust as ours, most United States inventors are interested in filing their patent applications in foreign countries. Unfortunately, foreign filing of patent applications requires the payment of government and the attorneys’ fees for each country, which comes at a hefty price tag.

Fortunately, there is a process that allows United States inventors to protect their foreign filing rights while delaying the need to pay these heavy fees. The process is performed under the Patent Cooperation Treaty (PCT). Once an applicant files an application under the PCT, the applicant then has a full 18 months before they have to make their decision as to which countries they are going to file in and, most importantly, pay the fees for doing so. The PCT application must be filed no later than the 12 month anniversary of the first US application. As a result, the PCT allows a US applicant a full 30 months from their first filing date before they have to incur the expenditure of the multiple foreign filings.

Another advantage is that the PCT application receives relatively quick examination. The applicant can choose from several international search authorities, all of them providing faster examination than the US patent office. The most expensive of the international search authorities is the European Union. Although it is expensive, it is highly recommended for those inventors wishing to file in the European Union because no further search is conducted once the application is nationalized (filed in Europe). In other words, if you are approved at the PCT stage, you will be approved in the EU later. A less expensive search authority is Korea. Although a decent search is done by the Korean searchers, a secondary search will be performed by each country once the application is moved into the nationalization stage. So a clean PCT report is still an uncertainty in terms of ultimately being granted a patent.

As an alternative to PCT filing, the applicant can take the patent application directly into the foreign countries and skip the PCT cost. The strategy works well if the inventor knows he is only interested in one or two countries and has a high confidence level that this patent will be allowed. In that case, there is no reason to delay.

In the end, foreign filing decisions must account for a number of factors and needs to be thought out so that it fits your budget and timing requirements. We do generally recommend selecting the European search authority.

Seeing Red

In a decision that few found surprising, a U.S. District Court judge denied a motion to dismiss an action seeking review of the decision by the Trademark Trial and Appeal Board (TTAB) to cancel six trademark registrations using the term REDSKINS. The suit was brought by the owner of the Washington Redskins NFL franchise, owned by Plaintiff Pro-Football, Inc. The defendants, who filed the motion to dismiss, are the same five Native Americans who successfully sought cancellation of the registration at the agency level registrations on the grounds that they are scandalous and disparaging, in violation of the Lanham Act. This time around, the Native Americans argued that there is no judicially cognizable dispute between the parties because they do not have a direct stake in the outcome and are not “parties in interest” because they have no economic or legal interest in the marks. Judge Gerald Lee rejected the motion for several reasons. In particular, he noted that the “Defendants’ cancellation petition [in the TTAB] demonstrated that they have a sufficient interest in the registration to constitute…‘adverse parties’ and ‘parties in interest’” under 15 U.S.C. § 1071. This means the dispute over the name of Washington, D.C.’s National Football League team continues. (Pro-Football, Inc., v. Blackhorse, et al., Civil Action No. 1:14-cv-01043-GBL-IDD (E.D. Va. November 25, 2014).

Appealing Swimwear

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office reversed a refusal to register SOUTH BEACH SWIMWEAR for “swimwear” (Serial No. 85/892,299) based on likelihood of confusion with the registered trademark SOUTH BEACH WINE & FOOD FESTIVAL (Reg. No. 3,864,216) for “T-shirts, polo shirts, tank tops, visors, aprons.” In issuing the likelihood of confusion refusal, the examiner argued that “SOUTH BEACH” is the dominant portion of both marks since it appears first. Further, because SWIMWEAR is generic of the goods, the examiner afforded the term little weight in his analysis. The Board disagreed, sensibly pointing out that “SOUTH BEACH” is inherently weak because it identifies a neighborhood of Miami Beach where any number of businesses might adopt the same wording. Further, in the cited mark, the Board found that “WINE & FOOD FESTIVAL” was at least as important as “SOUTH BEACH. ” Overall, the Board found that the marks have significantly different commercial impressions and that consumers would not be confused. (In other words, most consumers will not try to order fries at a swimwear shop, or buy a bikini at a food festival).

It’s important for applicants to remember that examiners often issue refusals that miss the mark (pun intended). A thoughtful responsive argument can often win approval of the mark, and if that fails the TTAB appeal process allows another chance to have the mark examined by a panel of three experts.

Uniform Domain Dispute Resolution Policy

Ever had someone register a domain name that sounds like yours? Using a relatively inexpensive process referred to as the UDRP (Uniform Domain Dispute Resolution Policy), The Concept Law Group successfully obtained an order from the UDRP panel forcing our client’s competitor to transfer 5 domain names to us last week. A competitor registering a confusingly similar domain name can create havoc with your Google rankings. If you run into anything like this, please give us a call and let us determine if the Uniform Domain Dispute Resolution Policy is right for you. For the details of this case, see http://domains.adrforum.com/domains/decisions/1578652.htm

Michael Powell vs. The Home Depot U.S.A., Inc.

Powell v. The Home Depot USA, Inc. (2008cv61862) (2011) was a patent infringement case involving radial arm saw safety technology. For many years, Michael Powell had a business relationship with Home Depot as its point-of-contact for the installation and repair of radial arm saws. Home Depot uses radial arm saws in its stores to cut the raw lumber it sells down to a smaller size, based on a customer’s preference.

In 2002 and 2003, Home Depot took note of an alarming trend. Its employees were suffering injuries including lacerations and finger amputations caused while operating in-store radial arm saws to cut lumber for customers. In July 2004, Mr. Powell presented a saw guard prototype to Home Depot, which then ordered eight production units for use and testing in stores. By August 2004, those production saw guard units were installed in Home Depot stores and Mr. Powell filed an application for a patent on his saw guard invention. Unbeknownst to Mr. Powell at the time he installed his invention for in-store testing, Home Depot contacted another company, Industriaplex, to build and install saw guards for its radial arm saws. Home Depot invited Industriaplex to view Mr. Powell’s invention and asked it to build nearly identical copies. Industriaplex agreed and Home Depot eventually ordered nearly 2,000 saw guards built by Industriaplex. Michael Powell brought suit against The Home Depot U.S.A., Inc., alleging that it infringed his patent, U.S. Patent No. 7,044,039. Following a fourteen-day trial, the jury determined that Home Depot literally and willfully infringed Mr. Powell’s patent. The Court stated: “Home Depot literally organized the theft of the Powell invention. That is what they did. Big, wealthy Home Depot just blew off Michael Powell.

I’ve already referred to a corporate officer’s statement at Home Depot when confronted with the Powell patent and I would say to you that that statement, as vulgar as it was [F**k Michael Powell, let him sue us], is an indication of how Home Depot has generally treated Mr. Powell’s assertion. It has simply blown him aside and not in any way given deference to the patent that was issued.” After the jury trial, based on Home Depot’s willful infringement, the district court awarded enhanced damages. Based on the district court’s finding of litigation misconduct and vexatious and bad faith litigation, it also awarded attorney fees. Federal Judge Daniel Hurley said to the attorneys of Home Depot: “I want to tell you something, this is the kind of activity that people look at and that engenders an outright disgust for the practice of law because high priced law firms simply generate a wind storm of paper and hand it to the other side, and it has nothing to do with the litigation. It is indefensible, it is shameful, truly shameful. If you can’t recognize that, I am sorry for you.

The notion that being asked for documentation reflecting the injury risks and complaints in the case that should elicit 6,000 pages of fork lift accidents is what is going on in this case, it is indefensible, it is mean, purposeful. It is to make the other party suffer and pay for it. It has been done by a very wealthy party against another party of not the same financial status. The company authorship is simply bogus, doesn’t stand up. It is the thinnest reed that could be relied upon, and when really tested, it was withdrawn, but it went on for nine months. That is the way Home Depot has litigated in this case. Home Depot, I suspect, has spent a fortune litigating this case. I thought it was interesting there was a stipulation as to the amount of attorney’s fees. I think I know why. I suspect Home Depot had no desire to disclose its own attorney’s fees that it spent fighting this case.”