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      Thanks for following our blog.

      In an effort to consolidate our Internet presence, we moved blogging platforms from Blogger to Wix, which was hosting our website.  Unfortunately, Wix doesn't allow us to link our subdomain blog.henryparklaw.com to a page on our website.  Thus, if you are looking for our blog, it is now at www.henryparklaw.com/blog.

- Henry Park

Trademark - Dosenbach and Deichmann

     If you live in Switzerland, you would see this logo associated with the store chain Dosenbach.



     I was recently in Germany, and I saw what appeared to be the identical logo.

 

However, it was associated with a shoe chain called Deichmann. I assumed that the store chains were related, and research confirmed it. Deichmann acquired Dosenbach in 1973 (see Dosenbach link, Wikipedia link). How fortunate was that acquisition? Deichmann acquired a competitor with a name that started with a "D". Now, it could use the same logo for both businesses create a connection between the businesses / brands (see my posts on Aquafresh / Odol-med3 and Crest / Blend-a-Med for examples of how businesses created connections between their brands).

- Henry Park

Warning notices

     I was at Burger King restaurant in Switzerland and I bought a kid's meal. It came with a toy that was packaged in a plastic bag, and there were, of course, the required warning notices -- in 21 languages.




- Henry Park

USPTO and Java v8 update 144 build 01

    Just a few days ago, I wrote about a new Java update (see link).

    I wasn't expecting another update for a while, when I received this message.  It turns out that on July 26th, they released another update to Java v8 update 144 build 01.





- Henry Park

Trademark - Coca-Cola Zero Sugar

     I like Coca-Cola.  When I heard that Coke was launching a "new" product, my interest was piqued.  What would they do?

     I feel let down. 

     It isn't a new product.  They reformulated an existing product, and repackaged it (link).

Old packaging

New packaging

     Apart from small tweaks to the formula, its appears that they added more red to the black packaging, and changed the name from "Coca-Cola Zero" to "Coca-Cola Zero Sugar". From a trade dress perspective, retaining the black and adding more red makes sense.  However, from a name perspective, adding a generic descriptor or, at best, a merely descriptive descriptor to the name doesn't make sense.

- Henry Park

The Pirate Bay - Walking the plank of copyright infringement

     Last month, on June 14, 2017, the European Court of Justice (ECJ) found that The Pirate Bay website directly infringed the copyrights of various copyrightholders (InfoCuria link). 

     The Pirate Bay argued that it did not link or host any infringing content.  Rather, it hosted BitTorrent "tracker" files.  These .torrent files tell a user which other BitTorrent users to link to in order to download a file, and do not participate in the downloading of a file.  Additionally, The Pirate Bay argued that the trackers were uploaded by its users, and that it should be protected by safe harbor provisions.

    The ECJ rejected both of these arguments (link, at paragraphs 30-35, 36-37).  The ECJ went on to find that

in circumstances such as those at issue in the main proceedings, the making available and management, on the internet, of a sharing platform which, by means of indexation of metadata referring to protected works and the provision of a search engine, allows users of that platform to locate those works and to share them in the context of a peer-to-peer network

(link at paragraphs 47-48) constitutes a "communication to the public" in violation of a copyright holder's rights under Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

     As there are no further appeals possible, The Pirate Bay may be nearing the end. It shouldn't take long for copyright holders to request that ISPs within the EU block user access to the The Pirate Bay.

- Henry Park

College throwdown - OSU

  vs. vs. 

    Ohio State University recently filed another federal trademark application for the "OSU" mark.  The OSU mark currently is used by Ohio State, Oklahoma State and Oregon State.

     Apparently there is a concurrent use agreement between Ohio State and Oklahoma State for their respective federal registrations (see Reg No. 1121595 and 1121596).  Oregon State does not have a federal registration for the OSU mark.

     Will Oklahoma State demure to Ohio State for this application?  Probably not (see link).  But, given the existing agreement between these two parties, it would be safe to assume that another agreement will be reached.

- Henry Park

Chimpanzees are not monkeys

     In an earlier set of posts, I wrote about a case where an attorney in New York was arguing that two chimpanzees should be treated as a legal persons (link 1) and how the New York court ruled against that attorney (link 2).

     I opened up my copy of the Bostonia magazine, the Boston University alumni magazine, and there is an article about that case (see Bostonia Magazine link).  As it happens to turn out, the attorney who argued that case, Steven Wise, is a BU Law graduate from 1976.

- Henry Park

USPTO and Java v8 update 141 build 15

    On my Macintosh, I received a notice that there is an updated version of Java v8 update 141 build 15 (released on July 18).

 


     Because I am now accessing the USPTO website using Java Web Start (see my post on connecting to the USPTO with Web Start), I'm not concerned about installing updates.

- Henry Park

A Business Perspective on Horse Racing Partnerships

Photo by Noah Silliman on Unsplash.

     Horse racing partnerships have increasingly become a part of the “sport of kings”. It is well recognized that horse racing partnerships allow for greater inclusion of participation for the general public; no longer is the “sport of kings” limited to the great racing families of Kentucky or the very wealthy. In 2017, each leg of the Triple Crown (Kentucky Derby, The Preakness Stakes, and The Belmont Stakes) was won by horses owned by horse racing partnerships.  Horse racing partnerships appeal to a wide audience of people who have different desires and familiarity regarding horse racing and therefore, it is important to appreciate the business aspects of horse racing partnerships. The greater inclusion of the general public propels the need for education on the important aspects of the business issues of a partnership.

     In selecting a partnership, a potential member needs to consider many aspects, but two considerations stand out: communication and victory.  A member should maintain an open dialogue with the partnership manager so that the member can continually expand its knowledge and experience regarding key decisions, such as 1) selecting a horse to purchase; there are different issues involved in purchasing a yearling versus a two-year-old, 2) whether to purchase through a private sale or claim, 3) selecting a trainer, and 4) selecting races to give the horses and members the best opportunities for victory.  Victory for the members is not limited to financial gain but must recognize the social and entertainment aspects of the sport.  Most partnerships include members who enjoy racing and the ability to attend the track meetings, participate in the paddock and be involved in the discussion and development of the horses (recognizing this may be a limited amount as the manager must have “final decision” ability).

     As a general overview, the business issues regarding partnerships can be divided into three groups.  First, decisions regarding the amount to be paid for a horse, the percentage of ownership a partner may want of the horse and recognizing the “mark up” to the partnership members to cover the expenses and evaluating a horse prior to purchase. Second, the members of the partnership must understand the level of communication and participation they desire regarding the development of the horse and racing. While the partnership manager will have the final decision, being in a partnership wherein the manager appreciates and considers the comments of each member makes the experience more enjoyable and fulfills a great sense of satisfaction. Third, understanding a member’s status and goals, such as whether the member is in the midst of a busy career, a retiree or investor. By understanding these, you can maximize the business benefit of the partnership venture through tax deductions, business expenses, investment accounts, etc. Recognizing these key business issues provide the “bridge” which serves as a conduit to provide beneficial business advantages simultaneously with enjoyment of horse racing.

     Being a lifelong horse racing enthusiast and having a legal practice that includes gaming law, and more particularly equine law (directed to thoroughbred and standard bred issues), it was imperative for me to become involved with a partnership that recognized my limited time to participate but also allowed me to use my legal experience to contribute to my investment in the partnership. In my particular situation, I invested in Zilla Racing Stables (www.zillaracingstables.com).  The approach taken by Zilla, and its manager Michael Piazza, allows me to continually learn the aspects of selecting and training horses while giving me a thorough understanding of the business and legal issues involved in horse racing. Michael Piazza provides a continuous flow of information to the members of the partnership regarding the partnership’s horses and horse racing generally, answers specific questions, and is the conduit to the trainers, grooms and bloodstock agents to provide an understanding of the issues of the sport.

     The evolution of horse racing partnerships has provided an opportunity for racing enthusiasts, such as myself, to participate at various levels that can be coordinated with their personal and business goals.  Potential members should obtain an appreciation of each particular partnership and match its characteristics to  their specific needs.

- Joseph J. DiDonato

The soaring cost of a college education

     I've seen the stories about how expensive a college education had become.  But, the cost didn't sink in until I saw this chart showing the rise in tuition at the University of Minnesota, my alma mater.

 

Thus, over 25 years, the annual tuition for a undergraduate resident increased almost five times.

For comparison sake, here is the annual change in inflation over the same period of time (from here).  As you can see, tuition increases were almost always much greater than inflation.

- Henry Park

Happy Fourth of July

In memory of all those who have gone before us. Let us not forget their sacrifice.

- Henry Park

This photo was taken by a colleague Brian R. Fitzgerald.  More of his photos are available, here.

Trademark - Chuck Norris

     When I was a kid, there were lots of Chuck Norris jokes.  You know the ones where Chuck Norris dominates someone or something (see link for Chuck Norris jokes).

      When I was in Iceland, I saw this establishment.



     I guess Chuck Norris has set his sights on the restaurant industry.

- Henry Park

Data security - Myths busted

     Last year, I wrote about a security myth that frequently changing passwords is good for security (see blog post).

     The Trusted Identity Group at the National Institute of Standards and Technology released on March 31, 2017 a revised version of its Special Publication 800-63B, Authentication & Lifecycle Management. Although the NIST Guidance is only intended for Federal agencies, its influence is felt throughout the IT sector. Among its recommendations, this document addresses two security myths concerning passwords and updates current best practices.

     First, the Publication states that passwords "SHOULD NOT ... be changed arbitrarily (e.g., periodically) and SHOULD only require a change if the subscriber requests a change or there is evidence of compromise of the authenticator" (section 5.1.1.2).

     Second, the Publication states that other a minimum length requirement "no other complexity requirements for memorized secrets SHOULD be imposed" (section 5.1.1.1) and "composition rules (e.g., mixtures of different character types)" SHOULD NOT be imposed on passwords (section 5.1.1.2).

     The Publication defines:

The terms “SHOULD” and “SHOULD NOT” indicate that among several possibilities one is recommended as particularly suitable, without mentioning or excluding others, or that a certain course of action is preferred but not necessarily required, or that (in the negative form) a certain possibility or course of action is discouraged but not prohibited.

- Henry Park

Privacy - Google to stop scanning Gmail messages for ads

     Earlier today, Google announced that it will stop scanning messages received by users of its free Gmail services for purposes of ad personalization (see blog post).

     According to Google, this change was brought about because there was some confusion by users of its G Suite services, which are paid services, as to whether their messages were being scanned.  The answer was and still remains -- no, users of its G Suite services never had their messages scanned for ad personalization.

- Henry Park

Copyright - US Copyright Office Review Board Decisions

     At the beginning of June, the U.S. Copyright Office launched a database of copyrightability decisions by the Copyright Office Review Board. The database contains decisions from April 2016 through the present, and new decisions will be added.

 
     If a copyright application is refused registration, the applicant has two administrative appeals (see 37 CFR 202.5). The first appeal or reconsideration request is within the Copyright Office's Registration Program. The second appeal or reconsideration request is to the Review Board, which consists of three members: the Register of Copyrights and the Copyright Office’s general counsel, or their respective designees, and a third appointee named by the Register.

     If the Review Board affirms the earlier deciisons, then an applicant still has one last appeal. The applicant can file a court action alleging a violation of the Administrative Procedure Act (APA).  Under this claim, the applicant is alleging that the Copyright Office's decision was "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law". This is a tough hurdle to clear.

- Henry Park

Pokemon Go - sponsorship opportunities

     I was in New York City last week, and I saw this PokeStop in Pokemon Go.

     I knew that McDonald's had struck a deal with Niantic to sponsor PokeStops in Japan, but I hadn't realized that Starbucks had done a similar deal.
 
- Henry Park

Trademark - This seems familiar...

     I saw this wandering around in Iceland.



     It seems to be a riff on someone else's trademark (see link for the other trademark).

- Henry Park

Trademark - Free Speech triumphs

     Last year, I blogged about how in Switzerland there were seven trademark registrations that included the word FU*K. And, that in the U.S., there was an appeal to the U.S. Supreme Court to the law that prohibited the registration of a trademark that may disparage any person.

     The Supreme Court just ruled (see decision). 

We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.

     This decision should have an immediate impact on the Washington Redskins American football team's trademark dispute (see link 1, link 2).  Additionally, this decision may affect adversely the other prohibitions in the Lanham Act (see 15 U.S.C. 1052(a)).

- Henry Park

Not monkey business - Chimpanzees are not persons

     In March 2018, I wrote a blog post about a New York attorney who was arguing that chimpanzees should be treated as a legal persons for purposes of habeas corpus.

     A few days ago, on June 8th, the New York state appellate court, the Supreme Court, Appellate Division, First Judicial Department ruled against the petitioner attorney (see Matter of Nonhuman Rights Project, Inc. v. Lavery, 2017 NY Slip Op 04574).

    In its ruling, the appellate court stated:

The gravamen of petitioner's argument that chimpanzees are entitled to habeas relief is that the human-like characteristics of chimpanzees render them "persons" for purposes of CPLR article 70. This position is without legal support or legal precedent.

     The court found that:

petitioner does not cite any sources indicating that the United States or New York Constitutions were intended to protect nonhuman animals' rights to liberty, or that the Legislature intended the term "person" in CPLR article 70 to expand the availability of habeas protection beyond humans. No precedent exists, under New York law, or English common law, for a finding that a chimpanzee could be considered a "person" and entitled to habeas relief. In fact, habeas relief has never been found applicable to any animal.

      The court dispatched the argument that other jurisdictions have recognized non-human entities to be 'persons' stating:

Petitioner's additional argument that "person" need not mean "human," as evidenced by a river in New Zealand designated as a legal person owning its own riverbed pursuant to a public agreement with indigenous peoples of New Zealand and pre-independence Indian court decisions recognizing various sacred entities as legal persons is not relevant to the definition of "person" here in the United States and certainly is of no guidance to the entitlement of habeas relief by nonhumans in New York.

     The court found an additional problem with the requested relief:

Even assuming, however, that habeas relief is potentially available to chimpanzees, the common-law writ of habeas corpus does not lie on behalf of the two chimpanzees at issue in these proceedings.... Since petitioner does not challenge the legality of the chimpanzees' detention, but merely seeks their transfer to a different facility, habeas relief was properly denied by the motion court.

     The court then went on to acknowledge the petitioner's goals, but referred them to the legislative  process stating:

While petitioner's avowed mission is certainly laudable, the according of any fundamental legal rights to animals, including entitlement to habeas relief, is an issue better suited to the legislative process.

- Henry Park

Marketing fail

     I send out a monthly e-newsletter. I always am afraid that I will make a mistake in the newsletter, not notice the error, and then send out the newsletter. Fortunately, I have yet to make any serious errors.

     I received the following marketing email (see screenshot).  Can anyone spot the marketing fail?



     One of my fears is that I will send out the newsletter with a similar issue.

- Henry Park

Startup Iceland 2017

Another great Startup Iceland event!



- Henry Park

Trademark - Such a familiar coffee shop

     I was walking with my colleague Heather Balmat.  She pointed out this coffee shop, and I didn't think anything about it until she emphasized look. See anything odd?
















     In the US, this store is called Dunkin' Donuts (compare Spanish store link to US store link). As I mentioned in a prior blog post, this is a another good example, of a trademark owner using other identifying marks to connect different brands, in this case regional brands, to an overarching brand. It appears that the reason Dunkin' Donuts rebranded into Dunkin' Coffee is that DONUTS was trademarked in Spain (see Wikipedia link)

- Henry Park

Trademark - Brooklyn Brewery

     One of my favorite beers is the Local 1 from Brooklyn Brewery, but all of their beers are pretty good.  I was at the restaurant As de Pikas in Barcelona, Spain and look what I found.



- Henry Park

INTA Annual Meeting

Day 1 of the INTA Annual Meeting.

Freelance Isn't Free Act

     Last year, the New York City Council passed a law known as the Freelance Isn't Free Act that specifically addressed issues facing gig economy workers. The law takes effect today, May 15, 2017 (a copy of the law as enacted is here). The law amended Title 10 of the N.Y.C. Administrative Code (see link) and will be enforced by the New York City Office of Labor Standards (see § 20-927).

     The law defines "freelance worker" as "any natural person or any organization composed of no more than one natural person, whether or not incorporated or employing a trade name, that is hired or retained as an independent contractor by a hiring party to provide services in exchange for compensation." The definition specifically excludes commissioned sales representatives, lawyers, and licensed medical professionals (see § 20-927).

     The law defines "hiring party" as "any person who retains a freelance worker to provide any service," with a few exceptions (see § 20-927).

     What does this mean going forward for freelancers and hiring parties?

1.  A Written Contact May Be Required.

     The law only affects agreements entered into after May 15, 2017.

     The law requires that a hiring party execute a written contract with a freelance worker when the value of the services is $800 or more, either by itself or in aggregate over the preceding 120 days (see § 20-928.a). The contract must include at least: (1) the name and mailing address of both the hiring party and the freelancer; (2) an itemization of all services to be provided by the freelancer, (3) the value of the services to be provided, (4) the rate and method of compensation, (5) the date on which the hiring party must pay the contracted compensation or the mechanism by which such date will be determined (see § 20-928.b).

     All freelance worker should request a written contract before starting work because that is a requirement if you are alleging only a violation of the written contract requirement (see § 20-933.a.5).


     A freelancer has two years to bring a claim asserting a violation of the written contract requirement (see § 20-933.a.2).

     If a hiring party fails to provide a written contact after being requested, the freelancer may be awarded statutory damage of $250.00 (see § 20-933.a.5, b.2(a)). Additionally, the freelancer may be awarded damages equal to the value of the underlying contract (see § 20-933.b.2(b)).

     Furthermore, if the freelancer prevails on any damage claim under this Act, the freelancer shall be awarded their reasonable attorney's fees and costs (see § 20-933.b.1).

2.  No Forcing Freelance Workers To Accept Less Compensation.

     The law requires that a hiring party pay the freelancer by the date in the contract, or no later than 30 days after completing the services under the contract (see § 20-929.a). In any case, the hiring party is forbidden from conditioning timely payment on the freelancer accepting less than the contracted compensation (see § 20-929.b).

     A freelancer has six years to bring a claim asserting a violation of the timely and complete pay requirement (see § 20-933.a.3).

     If a hiring party violates this requirement, than the freelancer is entitled to double damages (see § 20-933.b.3).

3.  No Retaliation.

     The law prohibits a hiring party from retaliating against a freelancer from attempting to exercise their rights under this law, or from obtaining future work opportunity because the freelancer has done so (see § 20-930).

     A freelancer has six years to bring a claim asserting a violation of prohibition against retaliation (see § 20-933.a.3).

     If a hiring party violates this prohibition, the freelancer is entitled to damages equal to the value of the underlying contract (see § 20-933.b.4).

Don't Rely On The Administrative Complaint Process.

      When a freelance worker believes its rights have been violated, the freelancer has two choices to seek redress.

     Choice One. The freelancer can initiate a complaint procedure with the Office of Labor Standards (see § 20-931.a). However, this is a toothless procedure. Once a complaint is filed, the Office has 20 days to send the hiring party a written notice of the complaint (see § 20-931.d). The hiring party will then respond with: (a) a written statement that the freelancer has been paid in full and proof of such payment; or (b) a written statement that the freelancer has not been paid in full and the reasons for the failure to provide such payment" (see § 20-931.e.1). The Office will forward the response to the freelancer within 20 days of receiving it, along with a materials informing the freelancer that they can bring a civil action (see § 20-931.e.2).

    Choice Two. The freelancer can initiate a civil action in a court (see §§ 20-931.c, 20-933).

    As the complaint procedure appears to be little more than a pro forma process, I would expect that most freelancers would skip this option and instead immediately file a civil action.


- Henry Park



updated on 5/16, 8/13

OMG - The sky is falling. Laptops may be banned in cabin from in Europe to US flights

    In March, the U.S. prohibited passengers heading to the U.S. from carrying any electronic devices larger than a smartphone in the passenger cabin from 10 countries in the Middle East and Northern Africa (link 1). The U.S. reportly will expand its large electronics ban to include all flights from Europe to the U.S. (link 1, link 2, link 3). Almost all of the articles, not surprisingly focus on lost productivity, increased theft risks, and the risks from storing large quantities of lithium ion batteries in the cargo hold of the aircraft.

      After years of being told not to put valuables in checked luggage, the thought of potentially having to check my laptop is worrisome. Although my laptop is password locked and encrypted, losing it would cause major trouble when traveling.

     I recently read an article by Carolyn Elefant about privacy issues at the U.S. border. In it, Ms. Elefant notes that those privacy concerns caused her to switch to a low cost laptop (a Google Chromebook) and rely more on cloud services. As a result, her new laptop is more secure and her files are similarly more secure. When the laptop ban comes into effect, I suspect more people will shift to systems similar to Ms. Elefant for exactly those reasons.

- Henry Park

Trademark - Adrenalin®

     I was reading about a recent court decision granting attorneys fees in an Abbreviated New Drug Application (ANDA) pharmaceutical patent case (Par Pharmaceutial, Inc. v. Luitpold Pharmaceutical, Inc., D.N.J. Civ. No. 16-02290 (WHW) (CLW) (April 24, 2017), hosted on Mega.nz to prevent link rot). The case involves a branded drug product called Adrenalin®, which contains epinephrine (see link 1, link 2).

     If you are like me, you immediately paused and asked yourself, how did they register that trademark because epinephrine is more commonly known as adrenalin (see Wikipedia link).

     Unfortunately, the records of the trademark prosecution are not available through the USPTO Trademark Status and Document Retrieval (TSDR) service because the mark was registered in 1906. However, we do know that they registered the mark for "hemostatic, astringent, blood-pressure raising and stimulating preparations for medicinal or surgical purposes" and that the original product specimens contained epinephrine because the registrant accidentally submitted the original specimens during a Section 8 and 9 filing (see May 3, 2016 Specimen filing on TSDR).



- Henry Park

Endorsements - Influencers disclose your brand relationships

     "If at first you don't succeed, try, try, try again."  The Federal Trade Commission (FTC) appears to be taking this proverb by William Edward Hickson to heart.

     With the rise of social media, the FTC has been concerned that influencers have been using social media to influence consumers without adequately disclosing the business relationship between the influencer and a brand. The FTC officially addressed this issue in July 2015 with the release of its revised Endorsement Guides. In the Guides, the FTC's position is that if:

there is a “material connection” between an endorser and an advertiser – in other words, a connection that might affect the weight or credibility that consumers give the endorsement – that connection should be clearly and conspicuously disclosed, unless it is already clear from the context of the communication. A material connection could be a business or family relationship, monetary payment, or the gift of a free product. Importantly, the Endorsement Guides apply to both marketers and endorsers.

Since then, the FTC settled with some parties over the lack of disclosure (e.g., link 1, link 2, link 3). The FTC has gone on record as saying that they were concerned about the potential lack of disclosure from influencers (see Bloomberg link). And, last month, the FTC sent out over 90 letters to influencers reminding them of their duty to disclose the business relationship between the influencer and a brand (see Press Release).

    If you are a social media influencer, you need to disclose your relationship with your brands. Brands are aware of the potential issues when the FTC begins to investigate them, and they have reacted by revising their sponsorship agreements to put the onus on you (the influencer) to be aware of and compliant with the FTC Endorsement Guides.
 - Henry Park

US Trade Report Section 301

    At the end of April, the Office of the United States Trade Representative (USTR) published the 2017 edition of its Special 301 Report (link to report). The Report is an "annual review of the state of IP protection and enforcement in U.S. trading partners around the world" and calls out "foreign countries and expose[s] the laws, policies, and practices that fail to provide adequate and effective IP protection and enforcement for U.S. inventors, creators, brands, manufacturers, and service providers" (Report, at page 1).

    Of the 34 countries listed, two countries on the lists surprise me: Switzerland and Canada. Switzerland is on the list because of difficulties in online copyright protection and enforcement, and Canada is on the list because the US has issues with its copyright, trademark and patent systems.

- Henry Park

Trademark - The Circular Towel

    Last month I was doing some trademark research and I saw some articles about a trademark on a circular towel that was invalidated (see link 1, link 2).

    And, as happenstance would have it, earlier this week I saw an advertisement (in German) for a circular beach towel.




- Henry Park

Trademark - Principal versus Supplemental Register

     At the U.S. Patent & Trademark Office, there are two federal trademark registers - the Principal Register and the Supplemental Register.

     The primary difference between the registers is the type of trademark eligible for each register. Marks that are distinctive (i.e., fanciful, arbitrary or suggestive) or marks that have acquired distinctiveness are eligible for the Principal Register (see our Trademark Primer post on trademark strength). Marks that are non-distinctive but capable of acquiring distinctiveness are eligible for the Secondary Register.

     When registering a federal trademark, most people want their trademark to be on the Principal Register because of its procedural and substantive benefits and not the Supplemental Register. However, being on the Supplemental Register, is better than not being registrable (see below for two reasons).

Application process

     There are differences concerning the application process.

1. Applications for the Principal Register can be both in-use and intent-to-use applications. However, applications for the Supplemental Register can only be in-use applications.

2. Applications for the Principal Register are published for 30-days allowing third-parties to initiate opposition proceedings. However, marks for the Supplemental Register are not published. 

Benefits of a registered mark

     The following table summaries the additional benefits a trademark receives for being on the Principal Register compared to the Supplemental Register.

     The following table identifies the benefits that are identical regardless of which register a mark is upon.



Why the Supplemental Register

      First, registration on the Supplemental Register blocks other confusingly similar marks that are later filed from registration on either the Principal or Supplemental Registers. Second, registering the mark starts a clock on your mark acquiring distinctiveness. As mentioned earlier, a descriptive mark that has acquired distinctiveness can be registered on the Principal Register. When arguing that a mark has acquired distinctiveness, the USPTO requires, at a minimum, that a mark be used for at least five years and may require additional proof.

- Henry Park

Trademark - Something familiar (part 4)

     I was in Germany and I bought some toothpaste.  It looks familiar.



      Remind anyone of Aquafresh?

      And, here is the actual packaging.



     Similar to Crest / Blend-a-med, Aquafresh / Odol-med3 are trademarks used on the toothpaste products in different territories by their respective owners. However, in each case, the owners continue to use other identifying marks -- such as the three color toothpaste -- to help customers recognize the products.

 - Henry Park

East Coast Gaming Congress & Next Gen Gaming Forum

     My colleague Joseph DiDonato will be attending the 21st Annual East Coast Gaming Congress & Next Gen Gaming Forum in Atlantic City, NJ on May 24-25, 2017.

- Henry Park

A Copyright Primer for Startups

     Jessica VanderVeen and I co-authored a blog post "A Copyright Primer for Startups" that was just published on the Startup Iceland blog.

      Here is a short snippet from that post.

In our previous post, we discussed what a trademark is, how you select one, and how you protect it. In this post, we examine copyright protection. Again, this post concerns a startup business’s intellectual property from a U.S. perspective, and although U.S. law (17 U.S.C. § 101), is different from Icelandic law, this information generally is applicable in Iceland.

And how might copyright protection be relevant for a startup? Here are some scenarios discussing the relevancy of copyright.

Scenario 1. You launched your revolutionary computer software product. All of a sudden a competitor appears that is doing the same thing you are. One of your team members screams, “they cannot do that because we have a copyright”. Is that correct?

...

- Henry Park

USPTO and Java v8 update 131 build 11

    On my Macintosh, I received a notice that there is an updated version of Java v8 update 131 build 11 (released on April 18).

 

     Because we can now access the USPTO website using Java Web Start (see my post on connecting to the USPTO with Web Start), I'm not as concerned about installing updates.

- Henry Park

Steve Jobs and Jeffrey Bezos on product development

     Perhaps Steve Jobs and Jeffrey Bezos have some shared ideals.

     I just read Jeff Bezos's annual letter about Amazon.com and its business ethos.  As I read it, there were two statements about product design which seem to echo one of Steve Jobs' more noteable quotations -- "It's really hard to design products by focus groups. A lot of times, people don't know what they want until you show it to them." (see Forbes link).

     Here are the two statements:

There are many advantages to a customer-centric approach, but here’s the big one: customers are always beautifully, wonderfully dissatisfied, even when they report being happy and business is great. Even when they don’t yet know it, customers want something better, and your desire to delight customers will drive you to invent on their behalf. No customer ever asked Amazon to create the Prime membership program, but it sure turns out they wanted it, and I could give you many such examples.

Another example: market research and customer surveys can become proxies for customers – something that’s especially dangerous when you’re inventing and designing products. “Fifty-five percent of beta testers report being satisfied with this feature. That is up from 47% in the first survey.” That’s hard to interpret and could unintentionally mislead. Good inventors and designers deeply understand their customer. They spend tremendous energy developing that intuition. They study and understand many anecdotes rather than only the averages you’ll find on surveys. They live with the design.

- Henry Park

Reference - Startup Playbook

   I recently saw this great blog post, Startup Playbook, by Sam Altman about building a startup business.  It has a lot of great advice about starting and running a startup business.

Best regards,
Henry

Tip - Microsoft Word - Showing revisions by a particular reviewer

     Have you ever had a Microsoft Word document filled to the point with so many reviewer comments and track changes that it is difficult to examine them?

     Well, it turns out that Microsoft Word will let you filter reviewer comments.

     The following instructions are based on Microsoft Word for Mac 2011.

1.    Make sure the Review toolbar is shown.



2.   Go to "Show Markup", and select "Reviewers".





3.   After selecting "Reviewers", a drop down menu will appear with the names of all reviewers in the document listed.  Select the reviewer or reviewers for whom you want to see their changes.

- Henry Park

Big Mac Index

    A colleague recently visited and commented on how expensive the food was in Switzerland, especially at McDonalds.  Because of his comment, I mentioned the Big Mac Index. This index was created in 1986 and is based upon price of the Big Mac sandwich at McDonalds.

It is based on the theory of purchasing-power parity (PPP), the notion that in the long run exchange rates should move towards the rate that would equalise the prices of an identical basket of goods and services (in this case, a burger) in any two countries.

      Here is McDonald's price for a Big Mac sandwich in Zug, Switzerland.

     Yes, you read that correctly, 6.50 CHF (including 8% VAT). While in Roseville, Minnesota, the price of a Big Mac sandwich is $4.47 ($4.15 + 7.625% sales tax). Once you factor in the current exchange rate of 1 CHF = $1.01 (according to Google, on March 26, 2017), a Big Mac sandwich in Zug, Switzerland costs the equivalent of $6.57. Thus, the Swiss Franc is about 47% overvalued.

    If you find the cost of a Big Mac sandwich a bit steep, then you will find the cost of the meal deals a bit more out of touch.

    Yes, a small meal deal is 11.70 CHF, and a medium meal deal is 13.00 CHF.  And for comparison, a meal deal in Minnesota costs $6.35.

- Henry Park

Daylight Saving Time will start in Europe on March 26

     On Sunday, March 26th, Europe will start daylight saving time, and the standard difference of hours between New York, NY (ET) and Central European Time (CET) will return to six (6) hours.

- Henry Park

USPTO - Java Web Start primer

     If you haven't tried using the new authentication method, Java Web Start, to access the USPTO PAIR and EFS systems, the following primer (Macintosh computer running Mac OS X (El Capitan) 10.11.6, updated Safari and Firefox web browsers) should help.

     Please note that using the Java Web Start method still requires having Java installed on your computer.


1.   On the USPTO website, you will have these options.

2.  Select the "Authenticate with Java Web Start (new method)".

3.  You will be greeted by this message


4.   In the background, a file will have downloaded to your "Downloads" folder.



5.  Depending on the security settings on your Macintosh, it may not run automatically.  If you run the file and get the following error message:



Then, the following steps should allow it to run.


OPTION A - SLOWER METHOD

6A.  Go to your "System Preferences" --> "Security & Privacy" Pane.

7A.  Give permission for the application to run by clicking "Open Anyway".


8A.  You will get the following message, click "Open".



9A.  Java should run, and another pop-up message will appear.  Click "Run".



10A.  Another pop-up window should appear.  After you enter your sign-in information, click "Authenticate".


11A.  The window should close.  You should be returned to your web browser, and you should be logged into the appropriate USPTO system.


 OPTION B - FASTER METHOD

6B.   Press Control key and Right click Open the file.

7B.  Java should run, and another pop-up message will appear.  Click "Run".



8B.  Another pop-up window should appear.  After you enter your sign-in information, click "Authenticate".


9B.  The window should close.  You should be returned to your web browser, and you should be logged into the appropriate USPTO system.


     Hats off to Robert Rose for reminding me about the faster option.


- Henry Park