Saturday, May 20, 2017

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.

Monday, May 15, 2017

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

Sunday, May 14, 2017

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

Friday, May 12, 2017

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 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

Tuesday, May 9, 2017

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

Monday, May 8, 2017

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

Friday, May 5, 2017

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

Tuesday, May 2, 2017

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