NCAA flickr bp6316The NCAA Basketball Tournament is here which also means local pride is high and many businesses use the Tournament as a marketing opportunity. Many promotions will refer to terms like MARCH MADNESS or FINAL FOUR for impact. The NCAA, however, is always vigilant and aggressively protects against unauthorized uses of its trademarks, especially during the Tournament. The NCAA has a number of registered trademarks relating to the Tournament including MARCH MADNESS, FINAL FOUR, ELITE EIGHT, and THE BIG DANCE. Use of these trademarks in ways that connote come sort of connection or affiliation with the NCAA or the Tournament will likely draw an objection from the NCAA.

Dos and Don’ts

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Audit checklist, with tick against "audit satisfactory",Businesses routinely conduct inventory audits to account for goods on hand, stocks of parts or components, equipment audits to account for machinery and its condition, and financial audits to locate and account for cash and business valuation. Businesses that do not conduct audits invariably run into problems.

Intellectual Property (“IP”) represents an asset class that businesses should regularly audit for a variety of reasons, including:
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Trade secrets are proprietary pieces of information, unknown to others, that give you an advantage over competitors. While thoughts of trade secrets often conjure such iconic examples as the formula for Coca-Cola or Colonel Sanders’ “11 herbs and spices,” they can be far more mundane. However exotic a trade secret might be, all businesses have them and the central key to protecting them is keeping them confidential. This post will show some of the steps that can be implemented to ensure protection of your proprietary information.

  1. Create Processes to Identify Trade Secrets in the First Instance

As noted, trade secrets are things not generally known outside your organization that provide you with an advantage over competitors. While trade secrets can take many forms, the cornerstone is they are meant to be confidential. Trade secrets can include, among other things, recipes and formulas, process steps, customer lists, supplier information, pricing schedules, forecasts, business plans and prototypes. The key consideration is they are things you want kept hidden from competitors.

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10-12-2015 3-48-06 PMWhether you have 10 or 10,000 employees, running a business can be a challenge. Making decisions based on strategic reasoning is critical to the success and longevity of any company. How can members of the c-suite, as well as the small business owner, gain helpful insight into the boardroom and, at the same time, try and avoid the courtroom?

We cordially invite you and your top-level managers to join members of Henderson Franklin’s legal team on Tuesday, November 17, 2015 as they present the Southwest Florida C-Suite Summit at Sanibel Harbour Marriott Resort & Spa. Topics and speakers include:

The Recipe for Business Longevity presented by Attorneys Guy Whitesman (Chair, Business and Tax Department), Eric Gurgold (Chair, Estate Planning and Administration Department) and Mark Nieds (Intellectual Property Group). They will outline proven techniques and best practices to preserve, protect, and perpetuate your business. One size does not fit all. The panel will explore avenues to successful business perpetuation, liquidity events and the preservation of wealth.

The Comeback Kid: Southwest Florida’s Ongoing Economic Recovery. Attorneys Denis Noah (Chairman of the Horizon Council) and Russell Schropp (Horizon Council Task Force Chair) will provide a look at the state of Southwest Florida’s economic recovery – from a lawyer’s perspective!
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10608742_10202856137579939_587007998374245216_oFall has arrived, which means professional football is in full swing on and off the field. While on-field activities are geared toward physical dominance, victory and relentless pursuit of the Lombardi Trophy, an equally competitive set of battles wages off field in the world of trademarks.

The National Football League (NFL) constitutes 30 teams and one of the strongest brands in the world. Not only do teams protect their names — BEARS, BUCCANEERS, PACKERS — but also their slogans – WE ARE ALL PATRIOTS, AMERICA’S TEAM, and of course logos. The 2015 football season, full of on-field excitement and drama, also brings two trademark cases that deserve mention.

SUPERB OWL confusing with SUPER BOWL?

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TrademarkUnder the Lanham Act, before any trademark registration will issue, an application must first be published for opposition. This publication provides the public with an opportunity to challenge registration of a trademark by another party. An opposition action is an adversarial proceeding before the Trademark Trial and Appeal Board (TTAB) and though not generally as lengthy or formal as litigation in the courts, follows essentially the same process. While there are a number of bases for an opposition, the most common is based on an allegation from one party that the trademark of the other party is likely to be confused with its own. Oppositions involve pleadings, discovery, depositions, legal briefs and ultimately oral arguments in front of a panel of three administrative judges of the TTAB. This panel ultimately issues a written opinion and a decision as to whether the opposed mark is or is not entitled to registration.

An opposition action is very narrow, however, as it only relates to the question of whether a particular trademark is entitled to registration. Issues outside that (such as any actual infringement of a trademark or damages) are not addressed. Historically, those issues are addressed via trademark infringement litigation in federal court. There has always been a question, however, as to the impact of a TTAB decision regarding registrability of a given trademark in any other trademark litigation between the parties at issue. If the TTAB determines that A’s trademark is confusingly similar to B’s, does that automatically mean that A’s mark is confusingly similar to B’s in the courts? Per the recent B.B. Hardware v. Hargis Industries decision, the answer is potentially yes.

Facts of the Case

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Teva_logoWhile the 2014-2015 U.S. Supreme Court term might be most remembered for the groundbreaking Obergefell v. Hodges decision, it can also be remembered for taking on six intellectual property cases, including two trademark cases. While the Court’s IP docket has grown in recent years, decisions touching on the subject are still fairly rare. Thus, when the Court takes an IP case, it is usually one that will carry significant impact. We will offer a brief summary of all the Court’s IP decisions, beginning with one of the patent cases, Teva Pharmaceuticals v. Sandoz.

New Standard of Review in Claim Construction

Teva Pharmaceuticals v. Sandoz involved a suit over alleged infringement of a patent relating to the manufacture of a multiple sclerosis drug and, in particular, the definition of the term “molecular weight” as it appeared in the patent claims. The language used in patent claims dictate the baseline scope of the patent holder’s rights and therefore a defendant’s putative infringement. Per the Supreme Court’s Markman v. Westview Instruments decision, patent claim construction is a legal issue to be determined by the Judge. As a legal issue, therefore, all district court determinations regarding claim construction were subject to de novo review in the Appellate Court – until Teva.
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Social Media via gavinjllewellyn on flickr creative commonsSocial media provides business the opportunity to stay in contact with customers, reach out to prospects, spread news, and keep tabs on competitors. Indeed, chances are many of you reading this post were alerted to it as a Henderson Franklin Twitter follower, Facebook friend or LinkedIn connection. The heart and soul of social media accounts (SMA) are their contacts. The more contacts a user has, the wider it can spread information. In any social media platform, a user’s profile page generally displays all of its friends, followers and connections. Building those contacts takes time and effort and represents valuable assets to the SMA owner. Many businesses have policies in place addressing SMA use by employees. But, when there are no policies in place, some interesting questions arise, namely: Who owns those contact lists and can a business claim proprietary trade secret rights in same? Only a few courts have looked at these questions and while the law is not settled, the decisions shed light on how these assets can be protected.

Trade Secret Baseline

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Hague - wiki commonsDesign patents can provide for protection for ornamentation and the shape or appearance of an appearance of an item or product — its look and feel. They are important to an overall intellectual property protection strategy because design patents might be able to help protect rights to features or aspects of a product that utility patents and trademarks or trade dress will not. The U.S. is implementing some changes to the design patent application process that will provide longer patent terms and make international patent protection potentially more available.

United States joining Hague Union

In 2012, the U.S. enacted the Patent Law Treaties Implementation Act which necessitated various changes to U.S. patent laws that would allow the U.S to participate in a broader agreement streamlining international registration of design patents. The U.S. has recently ratified these changes and effective May 13, 2015, will be a member of The Hague Union, which is an international organization of countries that have ratified the various provisions of the Hague System for the International Registration of Industrial Designs. Membership in the Hague Union provides a number of benefits to design patent applicants.


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5423866558_f8cd0e2da6_mRecently, Tesla Motors learned a hard lesson about the importance of the China market. When new businesses, small businesses even large businesses launch new products and roll out new trademarks, the primary focus is usually the domestic market, and rightfully so. After all, why care about foreign markets if you cannot gain traction in the U.S. So, many companies forego international trademark protection for their marks during the early stages of product development and launch. While this strategy could save some money short term, there are potential risks.

For example, Tesla struggled for years before its Model S took the automobile world by storm in 2012. Before that, and rightfully, its focus was on developing the technology that powers its cars. Like many startups, trademarks were a secondary concern to Tesla in the beginning. In the United States, it was not until 2009 that Tesla sought registration of any of its trademarks. It did not seek any international registrations at the time.

How China Differs

In the United States, trademark rights are based on use of a mark. The first to use a mark is the party that generally has the strongest rights. However, in many countries use is not relevant. Rather, the first party to register a mark has the highest rights to it. China is such a country.

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