Under the Lanham Act, (15 U.S.C. 1051, et seq.), a trademark owner can bring suit against any entity that infringes its trademark.

Among the recoverable damages are disgorgement of the infringer’s profits from the sale of infringing goods, 15 U.S.C. 1117(a). However, where the infringement constitutes counterfeiting, those damages can be trebled or the trademark owner can elect to recover statutory damages, amounting to potentially $2 million per mark infringed, 15 U.S.C. 1117(b), 1117(c).

The Sale of Counterfeit Goods

Continue Reading Holding Landlords Liable for Trademark Infringement by Tenant

New DOL Rule Increases Salary Basis Threshold

Employers may need to give some exempt employees a raise come 2020. This week, the federal Department of Labor (“DOL”) released its new Final Rule on the minimum salary an employer needs to pay an exempt employee in order to satisfy the “salary basis” test.

Currently, an employer must pay an exempt employee a salary of at least $455 per week ($23,660 annually).  Effective January 1, 2020, that level increases to $684 per week ($35,568 annually). That’s nearly a $12,000 increase, which would be about a 50% raise for an exempt employee who current makes the minimum threshold salary.

The new Rule, however, pales in comparison to what the DOL proposed, and was about to implement in 2016, before a court put a hold on that Rule (the DOL ultimately withdrew the Rule).  That Rule sought to more than double the current threshold, and increase the minimum salary to $47,476.

Critics (mostly on the employer side) argued that the rationale used to justify such a significant jump in the salary basis was flawed, and that its effect would be to hurt businesses and employees alike.  The new Rule took most of those concerns into account, inasmuch as there is much more consensus among business and employee advocates as to the propriety of the new Rule. To that end, although there is certainly a possibility that a court could hold up implementation of the Rule, there is less chance that an advocacy group will seek to stop this Rule.

What Should Employers Do Now?

Continue Reading Show Me The Money: Some Exempt Employees Due a Raise in 2020

Trademark filings are public records. The United States Patent and Trademark Office database contains names and addresses of owners of trademark applications and registrations. A disturbing trend that has reached epidemic proportion is the use of that data by third parties trying to scam trademark owners. If you own a trademark registration and receive any correspondence from any entity other than the attorney you used to obtain that registration, be very leery before responding.

The Scammers

Trademark owners are receiving Notices, Reminders and Warnings from such ominously named entities as “The Patent and Trademark Bureau,” “Trademark Compliance Center,” “Brand Registration Office,” “International Patent and Trademark Office,” “Trademark Renewal Service,” the “U.S. Trademark Compliance Office,” “Register of International Patents and Trademarks,” and the “Worldwide Database of Trademarks and Patents,” to name a few.

The mailings look “official” (as is pictured here) and often contain language from and citations to various statutes and rules. In addition, the return addresses are made to look legitimate — 2200 Pennsylvania Ave., Washington, D.C., 500 Montgomery Street, Alexandria, VA; 15 Rue De Tunnel, Geneva, Switzerland, etc. However, they are all bogus. In fact, the USPTO has cultivated and published a list of over fifty such sham entities on its website and the number keeps growing.

The Scams

There are a few common scams. First, many of the letters request payment of fees for registration of a trademark in some directory or publication in some, usually, international journal. However, there are no fees for publication in the USPTO and no “directories” where registration or inclusion of a trademark is required. At best, a trademark might be included in some private journal or database but this inclusion will confer no rights on the trademark owner in the United States or in any other country. It is a money grab targeted to the gullible. Fees for this service range from several hundred to over two thousand dollars.

Some entities will offer services in connection with recording a trademark registration with U.S. Customs, monitoring new trademark filings for new applications similar to yours or monitoring registration of new domain names containing your trademark. While there are legitimate businesses who offer services like these, most of the mailings received by trademark owners touting such services are scams and should be avoided. Anyone interested in receiving monitoring services like these should do due diligence into the entity offering the service.

Another common scam relates to trademark renewal and maintenance filings. True, a trademark owner is required to make certain filings between the fifth and sixth years of registration to keep a registration active and upon the tenth anniversary to renew a registration. However, trademark scammers regularly falsify the dates filings are due and make contact sometimes two-plus years before any actual due date and alarm trademark owners with threats that a registration will be cancelled if they do not act. An unsuspecting trademark owner could then end up paying “renewal fees” to some entity who absconds with that payment, leaving the trademark registration to lapse and abandon or the owner with having to pay legitimate fees at the time a renewal or maintenance filing is due.

In addition, the Asian domain scam provides yet another chance to swindle a trademark owner. In this scam, a trademark owner receives an unsolicited alert from a domain Registrar located in Asia who indicates some company is trying to register a domain containing your trademark. The Registrar indicates you could consent to that registration and give up your trademark rights in Asia, or buy the domain yourself, as well as the same domain in other Asian countries, all through that Registrar. The scam here is that there is almost never another entity trying to register any domain and the price paid to register the domain through the solicitor is usually several times higher than registering directly.

While there are other scams, these are some of the most common. A final note of caution: regardless of the exact nature of the scam, these scammers usually request payment by wire transfer.  Doing so will expose your banking information to who knows what kinds of persons and entities. So for this reason alone, before responding to anything seeking payment, a trademark owner must be cautious.


When it comes to correspondence relating to your trademark registrations, the best practice is to rely only on correspondence from the attorney you used to obtain the trademark registration in the first place. Any official correspondence will go through that counsel of record. Scammers cull address information from publicly available data and prey on gullibility. If you have any questions about legitimacy of any trademark related correspondence, check with your attorney. If you obtained your registration on your own and are uncertain about any correspondence, feel free to contact one of our Intellectual Property attorneys for insight. I may be reached at mark.nieds@henlaw.com or by phone at 239-344-1153.


The Americans with Disabilities Act (the “ADA”) has been a tremendous source of litigation since its passage nearly thirty years ago. The ADA was originally put in motion to provide equal access to physical locations and services. It generally requires establishments to provide people with disabilities easy access to a business. But in 2016, the ADA began to include websites. The ultimate goal of the ADA is to eliminate exclusivity and offer an equal experience to all people. Thus, the logic goes, businesses should be inviting to everybody via physical location and website.

Over the past year, plaintiff attorneys have developed a cottage industry by filing thousands of lawsuits alleging that company websites are not accessible to the blind or visually impaired. From 2017-18, lawsuits targeting website compliance have increased by 177%, with more than 2,000 filed in 2018. Often times the same disabled individual (with the same attorney) will file these claims. They seek an injunction to make the company’s website ADA accessible and attorneys’ fees. A nominal settlement will quickly follow (typically a few thousand dollars) with the vast majority of this going to the attorney. Florida is a breeding ground for this drive-by litigation, and it is frustrating the federal courts. See Price v. Escalante – Black Diamond Golf Club LLC, No. 5:19-CV-22-OC-30PRL, 2019 WL 1905865, at *1 (M.D. Fla. Apr. 29, 2019).

Lack of Guidance

Continue Reading The Latest ADA Shakedown: Website Compliance

It is not uncommon to see your fellow Florida motorists, head tilted downward and not on the road, utilizing their mobile device to text while their vehicle is in motion. Florida is now catching up to the rest of the country in one important area:  giving teeth to our texting while driving law. Enacted in 2013, Florida Statute 316.305, known as the “Florida Ban on Texting While Driving Law”, is intended to improve roadway safety by preventing crashes related to the act of text messaging.

Secondary Offense Not Enough

This statute, however, only authorized law enforcement officers to stop motor vehicles and issue citations as a “secondary” offense to persons who were texting and driving. In other words, police were only able to cite motorists for texting if they were pulled over for other reasons, such as speeding or failure to yield. This law did little to curb accidents caused by “distracted driving”, which were numerous, and often deadly.

Continue Reading Florida Drivers Be Aware: Texting and Driving is a “Primary” Concern

With a ruling that could significantly change the business and regulatory landscape in the medical marijuana field, the Florida First District Court of Appeals has determined that certain provisions of the Florida Medical Marijuana Statute are unconstitutional.

Constitutional and Statutory Conflicts

In January 2017, an amendment to the Florida Constitution went into effect to protect the right to produce, possess and use medical marijuana. Patients that qualified to receive medical marijuana could obtain it from a Medical Marijuana Treatment Center (“MMTC”).

Continue Reading Appeals Court Finds Provisions of Florida Medical Marijuana Statute Unconstitutional

Trademark protection is available to any individual or entity who uses a trademark in the United States. Since 2015, an average of 400,000 trademark applications have been filed with the United States Patent and Trademark Office (USPTO) each year. According to USPTO data, about 25% of those are filed by non-United States entities and individuals. Effective August 3, 2019 a new Rule will go into effect at the USPTO that changes how those parties must interact with the USPTO.

Who does this impact?

The Rule applies to non-United States parties, including all businesses that have a principal place of businesses (i.e. headquarters) outside the United States, as well as all individuals with non-US permanent addresses. Foreign nationals with residence in the United States or businesses with significant enough contact and business in United States are not impacted.

Continue Reading New Trademark Rules Aimed at Foreign Trademark Owners

In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that

consists of or compromises immoral or scandalous matter.”

Too Scandalous to Trademark?

Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.

First Amendment Lawsuit

Continue Reading F Word ®

Title VII Requires Administrative Exhaustion

Before an employee alleging employment discrimination under Title VII may file a lawsuit in federal court, she must first exhaust administrative remedies by bringing formal charges with the Equal Employment Opportunity Commission (EEOC) or an equivalent state agency. This administrative-exhaustion process is designed to allow the EEOC to step in, and also gives the parties an opportunity at early settlement. If the EEOC decides not to take the case, it must issue a “right-to-sue letter,” which is evidence that the administrative exhaustion requirement has been satisfied. The employee then has 90 days to file suit.

There has long been a circuit split on how to treat discrimination claims that were never raised with the EEOC but later find their way into a plaintiff’s lawsuit. Several appeals courts treated this failure as an affirmative defense that could be waived by the employer if not timely asserted. The competing approach was to treat administrative exhaustion as a jurisdictional requirement. Meaning the defense could not be waived, thereby permitting employers (and the court) to raise the issue at any time. Prior to the Supreme Court weighing in the on the matter, the Eleventh Circuit fell into the latter camp. See, e.g., Bloodworth v. Colvin, 17 F. Supp. 3d 1245, 1250 (N.D. Ga. 2014) (“[I]n the Eleventh Circuit, administrative exhaustion is a jurisdictional prerequisite to Title VII actions.”) (citing Crawford v. Babbitt, 186 F.3d 1322, 1326 (11th Cir.1999)).

Background – Fort Bend County v. Davis, No. 18-525

Continue Reading Supreme Court Decides Important Procedural Question under Title VII

In 1966, the EEOC began requiring companies with 100 or more employees to compile employment data by race/ethnicity, gender, and job category. Dubbed EEO-1 Reports, these surveys were meant to provide a snapshot of how many racial and ethnic minorities and women were working in a company.

EEO-1 Reports Expanded

During President Obama’s tenure, the EEO-1 Report was broadened into two components. Component 1 would include the same information always collected, while Component 2 would include W-2 wage information for employees by race, ethnicity, and sex. Although designed to target pay discrimination, Component 2 was viewed as overly burdensome. Data compilation would take countless hours, while the human error rate was sure to increase on account of the significantly expanded form.

Continue Reading Federal Judge Rules that EEOC Must Collect Expanded Data on EEO-1 Forms – Current Deadline September 30, 2019