New Balance. Shoes. IP. Overseas.

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Knock Off Products.

Intellectual Property

IP. Footware. Lawsuit.

The United States and China are big trading partners, but underneath it all there is a simmering tension between the two nations, especially when it comes to intellectual property. China has been accused, quite often, of not respecting IP and of manufacturing “knock offs” of American consumer goods.

Recently, a Chinese company sued an American company for trademark infringement. The company on the receiving end of the lawsuit was none other than shoe giant, New Balance. The company, headquartered in Boston, manufactures roughly 70% of their shoes in China.

Footware Manufacturer.

Chinese businessman Zhou Lelun from Guangdong Province filed a trademark infringement suit against the Chinese sales company that distributes New Balance shoes. The lawsuit contended that New Balance was using the same name, in translation, as his company (Xinbailun or 新百伦), for which he received a trademark for in 2008. The company is itself a footware manufacturer.

When Zhou Lelun was awarded his trademark in 2008, New Balance appealed the trademark ruling to the People’s Court in Guangdong. The appeals court ruled in favor of Zhou Lelun even though New Balance was using the trademark long before he applied for it.

New Balance Ruling.

Although the court upheld the ruling against New Balance, they did decrease the original damages given to Zhou Lelun from $98 million RMB (Ren Min Bi) to $5 million RMB, the equivalent of $750,000 U.S. dollars for damages he suffered. The court scolded New Balance for using the trademarked name knowing that it was registered to Zhou Lelun since 2008. In the end, New Balance could do little but accept the People’s Court verdict.

Amy Dow, a spokeswoman for New Balance issued a statement which read as follows: “This ruling is particularly concerning as it is contrary to the rest of the developed world’s understanding of Intellectual Property.”

There’s no doubt that doing business in China can be a confusing and challenging task for foreign companies, but access to the Chinese market makes these challenges simply the cost of doing business.

What are your thoughts?

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on Facebook, Twitter, or in one of my LinkedIn groupsGoogle+ Circles.

 

Trademark. Trademark Registration.

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Trademark Registration. Trademark.

Trademark. Trademark Registration.

Trademark. Trademark Registration.

Why is it that some clients don’t take the protection of their trademarks seriously….regardless of how insistent I am that they should? I have registered many, many trademarks for many clients. Once they receive their trademark, I even take time educating them as to the post-registration steps they MUST take. Yet, despite my imploring them to do the follow up, many choose not to. Once I have completed their registration, I remove myself as the attorney of record. At that time, it becomes their responsibility to do the following:

  1. 1. Continue to use their mark(s) as they said they were in the Statement of Use. This primary step is NOT to be taken lightly. Registered trademarks have been cancelled because the registrant did not continue to use the trademark in the EXACT way they claimed to use it in the Statement of Use.
  2. File a Declaration of Continued Use between years 5-6 after registration. I cannot stress that if you miss this step, you WILL lose your registration.
  3. Renew the trademark every 10 years after registration, which means 4-5 years after you file the Declaration of Continued Use, and every ten years thereafter.
  4. Monitor your trademark to make sure no one else is using it.
  5. If you discover someone is using it, ask them to stop. It is best that you consult with a competent trademark attorney to obtain guidance on the proper way to approach the situation. Why? If you send a scathing cease and desist letter without knowing what you are doing, your demand might backfire on you, and you can find yourself in the defendant’s seat.
    Getting a trademark isn’t like buying a shirt, you put it in the closet and can forget about it. Your trademark is more like a car. It needs maintaining. It entails paperwork to keep it legal and current. It needs vigilance to keep it from being stolen. Finally, it needs a good mechanic (attorney) to make sure it keeps working for you.

In closing, if you don’t take care of your intellectual property, who will? Please remember that registration is just the first step, not the end all.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on Facebook, Twitter, or in one of my LinkedIn groups, Google+ Circles.

Contracts. Agreements.

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UNDERSTAND Those Agreements BEFORE Signing.

Agreements. Contracts.

Agreements. Contracts.

I can’t tell you how many times I have warned people about signing a contract without complete understanding of the terms. Unfortunately, people still make the same mistakes over and over by signing contracts that are not in their best interest. Often these mistakes can cost a person everything they worked for.

Here is just another unfortunate case that proves my point.

The Camellia Grill, a landmark New Orleans restaurant, popular with both locals and tourists for nearly 70 years was severely damaged by hurricane Katrina and remained closed for over a year, when owner Michael Shwartz decided to sell it in 2006. The sale was finalized with 3 separate contracts, one of which was the “bill of sale.”

READ Those Agreements BEFORE Signing.

The new owner, Hicham Khodr, also signed a contract for a licensing agreement regarding the use of the iconic Camellia Grill trademarks and logos. The contract agreed on a payment of $1 million, as well as ongoing royalties. This contract was contested, and eventually declared null and void by a Louisiana court. This ruling then led to a slew of other lawsuits between the two parties.

With the licensing and royalties contract terminated, the seller filed a lawsuit against the new owner claiming trademark infringement, since the restaurant continued using the original name, signage and logos. The new ownership contended that the use of the logos and trademarks was covered in the “bill of sale” contract.

When the smoke from the lawsuits finally cleared in July of 2015, the court ruled that the new ownership had complete rights to the name, trademarked logos and all materials specified in the bill of sale. The contract specified transfer of all “tangible personal property located within or upon” the Camellia Grill.

Michael Schwartz argued that intellectual property was not part of the “tangible personal property.” However, Judge Jane Triche Milazzo ruled that the language in the bill of sale was “clear and unambiguous.”

Obviously, Michael Schwartz and his attorneys did not cover all the bases in regards to the specific language of the bill of sale contract. They assumed that the licensing contract covered the trademarks, but when that contract was voided by the court, the bill of sale became the primary documentation of the terms.

When you sign a contract on the dotted line, you had better be absolutely sure that the terms are exactly as you want them, with all avenues and possibilities considered, especially when dealing with multiple contracts for the same deal.

Please don’t enter into a contract that can affect your livelihood and future without seeking the counsel of an experienced attorney who specializes in the field. Not all lawyers are created equal. Your real estate lawyer is ill-equipped to counsel you on intellectual property law issues, and truly not your criminal lawyer. One oversight on the contract can lead to devastating consequences.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

http://www.nola.com/dining/index.ssf/2013/05/court_rules_camellia_grill_mus.html

 

Fair Use. Take-down. Copyright.

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Fair Use. Take-down. Copyright.

Fair Use. Copyright.

Fair Use. Copyright.

Is it Fair Use?

Section 512(c)(3)(A)(v) of the Digital Millennium Copyright Act requires that copyright holders consider, whether content that is perceived as potentially infringing is fair use before they issue a take-down notice. A recent Ninth Circuit case reaffirmed that requirement in Lenz vs. Universal. While a copyright holder is only required to make a subjective assessment, an assessment is nonetheless required before requesting that a website, such as YouTube, Google, Facebook, or Twitter remove allegedly infringing content.

Take-down. Copyright.

After making such a subjective assessment, what goes into a take-down notice? A take-down notice must contain “[a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” 17 U.S.C. § 512(c)(3)(A)(v). Because fair use of copyrighted material is not an infringement of copyright, such use is “authorized by . . . the law.” See id. § 107. Therefore, in order to form “a good faith belief that use of the material in the manner complained of is not authorized by . . . the law,” id. § 512(c)(3)(A)(v), a party must consider the doctrine of fair use.

Subjective assessment of Fair Use.

To comply with the law, a copyright holder is only required to form a subjective assessment, which does not require investigation of the allegedly infringing content. The assessment does not have to be accurate, it must only be performed. If a copyright holder fails to consider fair use before sending a take-down notification, gives lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary, is subject to liability.

That’s it for now. Do you have an opinion about this? Join my conversation on my Facebook Law Page, Google+ page, Twitter feed, or in one of my LinkedIn group discussions.

USPTO Search. Patent Office. Trademarks. ABA.

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USPTO Search. Patent Office. Trademarks. ABA.

Patent Office. Trademarks.

Patent Office. Trademarks.

The ABA Section of Intellectual Property Law and the United States Patent and Trademark Office announced that they are teaming up to offer the 3rd Annual Trademark Day: Behind the Scenes at the USPTO. The day is filled with information on trademarks for the seasoned attorney, as well as the new trademark practitioner.

The program will take place on Wednesday, September 16, 2015 from 8:30 to 4:00pm, and will be held at the USPTO Campus on 600 Dulany Street in Alexandria, VA.

Trademark Tips and Strategies.

Examiners will share what it is like to be an examining attorney under the discussion titled “A Day in the Life of a Trademark Examining Attorney”. The course will also discuss filing tips, the various forms available and what may work best for you.

Some of the other highlights of the course are:

  • Overview of the Trademark Office including filings, examining process, and review of forms
  • Get tips for filing proper identifications of goods and services
  • Discover how to stay up to date on rule changes, TMEP revisions, and exam guides
  • Learn how to update owner information in the Trademark database

For the last three years, the USPTO has allowed practitioners and law students to actually witness a live Trademark Trial and Appeal Board (TTAB) hearing.  This year the Intellectual Property Law Section of the ABA and the USPTO are once again, happy to announce there will be another live TTAB hearing, along with tips and advice from judges on prosecution strategies when dealing with the TTAB.

Participants are eligible to receive CLE credit and lunch will be provided. Plus, get to network with USPTO officials and examining attorneys during the lunch break.

To learn more about the 3rd Annual ABA-IPL Trademark Day: Behind the Scenes at the USPTO, visit here.