BrexitBy a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term


Continue Reading BREXIT: What does it mean to your Intellectual Property in Europe?

trade secrets label on folderIn a rare example of getting something done, the Senate and House of Representatives have passed Defend Trade Secrets Act of 2016 (“DTSA”) and it is now headed to the White House for signature. President Obama has indicated he will likely sign the legislation. With this in mind, it is a good time to review just what proprietary information your business has and how thoroughly it is protected.

Current law

Until now, trade secrets have been protected by state law. While the law is relatively standard there are some slight variations state by state. Indeed, 48 states, Florida included, have adopted the Uniform Trade Secrets Act (“UTSA”) in order to provide businesses with uniformity. At the federal level, while providing protection for other forms of intellectual property like patents, trademarks and copyrights, trade secrets had no specific protection. The DTSA is changing this legal landscape.

DTSA


Continue Reading Upcoming Changes in Federal Law Means It Is Time to Look At Trade Secrets

7041862895_6192f3c764_zLast spring, we discussed Tesla’s problems securing trademark rights in its name in China. See our post here. The moral of the Tesla story was to seek trademark registration in China as early as possible. Now, Apple has lost a trademark battle in China that underscores the importance of the Tesla lesson and gives an additional twist.

Apple’s Battle

In 2002, Apple registered the IPHONE trademark in China for computer hardware and software and mobile telephones. In 2007, Xintong Tiandi, a leather goods maker, sought and obtained registration of the IPHONE trademark for leather goods, including phone cases. Apple, claiming that its IPHONE mark was famous and well known in China, challenged Xintong Tiandi’s IPHONE registration in the China Trade Mark Review and Adjudication Board, where it lost. Apple then took the fight to the courts in China and lost in the lower court. Apple appealed and The Beijing Municipal High People’s Court has ruled against Apple again, stating that Xintong Tiandi registered the IPHONE mark before Apple, thus giving it superior rights, and Apple’s IPHONE trademark was not sufficiently well known in China at the time Xintong Tiandi registered IPHONE for leather goods. As the first user of the mark, Xintong Tiandi had the greatest rights and Apple’s claims failed.


Continue Reading Learn from Apple’s Woes in China: Register Early and Often

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


Continue Reading March Trademark Madness—Don’t Foul Out

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:
Continue Reading 5 Reasons Why You Should Conduct an Intellectual Property Audit


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.


Continue Reading 5 Tips to Protect Your Proprietary Information

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!
Continue Reading Registration is Open — Southwest Florida C-Suite Summit

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?


Continue Reading 15 yards for Trademark Infringement?

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


Continue Reading Judicial Update: TTAB Decisions Have Greater Impact After B&B Hardware Decision

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.
Continue Reading Judicial Update: Intellectual Property Decisions from the Supreme Court’s 2014-2015 Term