VRP Law Group, P.C.

A Boutique Business, Employment and Intellectual Property Law Firm

Archive for the ‘Importation of Infringing Goods’ Category

Impact of the Definition of a Judicial Entity and the Principles of Corporate Citizenship on the Internet!

Tuesday, September 9th, 2014

The most important part of any inquiry into corporate citizenship and a foreign national’s international business of any enterprise is determining, which, laws will apply. It is extremely difficult for any international company to plan for expansion into new countries without considering the impact of the citizenship of each of its Members. Limited Liability Companies and C-Corporations are the most preferred type of structures for purposes of corporate expansion and acquisition of corporate funding. Unfortunately, it is very difficult to determine the citizenship of each Member or Transferee and ensure that the Operating and Membership Agreement has the proper restrictions to ensure that you do not run afoul of the LLC’s corporate Citizenship rules.

If a foreign national is doing business in the US, then its ability to take advantage of local laws and tax regulations will be subject to the citizenship of each Member. For purposes of diversity jurisdiction, each individual’s citizenship will be considered for purpose of subject matter jurisdiction. Thus, if, you have an individual from China or Brazil, the first, inquiry, is whether or not the entity will be recognized as a US citizen, corporation or partnership. Once, this is determined based on the citizenship of each individual member and at least, one individual is a US Citizen, the Corporation will qualify for US Citizenship or legal entity status of a Judicial Entity for purposes of being able to take advantage of local laws.

However, when you have international citizens that conduct business in the US or reside in the US this raises a bit of a concern about the potential conflict between corporate citizenship rules the regulations relating to taxation of the individual. Each country has an incentive to ensure that their local tax revenues are maintained; thus, this issues is particularly, important for online companies and foreign nationals looking to do business in the US. The U.S. has entered into a tax treaty with most major countries to avoid double taxation of income to the LLC or Corporation. The idea being that if, you have paid taxes overseas, then you are not required to pay more taxes on the funds that are brought into the U.S. However, with respect to individuals that live in international countries, but stay in the U.S. for less than 180 days, they are able to avoid having to pay income taxes in the U.S.

For more go to: www.corporateacquisitionsattorney.com, www.bipeblawg.com, www.iptrialattorney.com or www.chicagobusinesscounsel.com

“Dumb” Starbucks a brilliant parody or a blatant case of trademark dilution and infringement? Monitoring your brand vital to trademarks owner’s success!

Monday, March 3rd, 2014

Do you drink Starbucks coffee? Do you pay attention to the news? If so, you’ve probably heard about “Dumb Starbucks,” the coffee shop that opened in Los Angeles, California. Within hours, the store had lines out the door and plenty of social media exposure. While at first it was unclear who was behind the “Dumb” idea, it soon came out that it was Comedy Central’s Nathan Fielder.

This might sound like blatant trademark infringement to you; after all, “Dumb Starbucks” has the same name, logo, design, and drinks as Starbucks, just with the word “Dumb” added. However, Comedy Central is claiming that the use is a parody, which counts as protected free speech and does not infringe on trademark rights. Starbucks disagrees; the company has already stated that their logo is trademarked, and that this use constitutes infringement. The company’s lawyers have questioned whether this use could even count as a parody, as they aren’t making fun of Starbucks, but instead using the mark for commercial purposes.

Although the stunt may have been intended to be comedic in nature, there really is no effort to indicate that “Dumb” Starbucks is a Starbucks store, but not a Starbucks store. Moreover, it remains unclear why the use of the logo in the manner that Starbucks uses it was necessary to create comedic value or create a parody of the Starbucks brand or logo. Moreover, it may be that the stunt dilutes or tarnishes the Starbucks brand and creates a brand dilution problem for a famous brand.

Starbucks has made it known that they will likely be filing suit, and we will find out whether the use is, in fact, a parody, or if it is infringement. Either way, this stunt made huge waves on social media, and it has definitely gotten the exposure the comedian was looking for.

Defense of infringement claims, preliminary or permanent injunction proceedings and keeping your clients in business!

Sunday, January 19th, 2014

Unclean hands is often, overlooked and not asserted by any Defendant that is sued for a preliminary or permanent injunction. If you can get the Court to find that the Plaintiff has acted with Unclean Hands, then the Defendant may be able to tip the balance of equities interests in its favor. But, this doctrine can also be combined with unfair competition or deceptive trade practices to ensure that the Defendant has some counterclaims for negotiating leverage.

The Defendant must establish that the Plaintiff has acted to prevent the Defendant from engaging in competition for a product or service that it offers or is related to the Plaintiff or its affiliated companies. An overly aggressive intellectual property enforcement or policing policy can lead to IP misuse or anti-tying violations. However, these doctrines and claims can be made whether you are subject to a copyright, patent or trademark infringement suit.

Both of these defenses and the facts and circumstances that support them may also support unfair competition and deceptive trade practices claims. In addition, the consumer protection act of each state and the Federal Trade Commission’s regulations should be reviewed and incorporated into your discovery, evidence preservation, litigation, negotiation and settlement strategy, early, on in the Lawsuit.

So, why is this important? It will allow the Defendant to avoid an early temporary or preliminary injunction being entered against it. This can be the difference between the Defendant being able to generate revenues that can be used to fund its defense of the Lawsuit. Moreover, often this can be the difference between getting a settlement on your terms and continuing to operate the business, or being driven out of the market.

Making sure your litigation attorney understands the implications of the Unclean Hands, the unfair competition, IP misuse and anti-tying doctines can be the difference between staying in business and having to close your doors.

Of course, if you have any concerns or questions, then please contact us at: www.vrplawgroup.com

How do you trademark a name, logo, design, or business name? What does the USPTO require for trademarks?

Friday, September 6th, 2013

Unfortunately, there is no simple answer to this question. To trademark anything, first, it has to be something that serves as a designation of the origin, source or quality of a product or service. If this requirement is met, then there is a requirement that the Mark be arbitrary, fanciful, suggestive or descriptive with a secondary meaning. However, the Mark (name, logo, design or business name) cannot be generic for the type of product or service that you provide under the mark.

If the Mark is generic, then the USPTO will not allow you to register it as your trademark. If the Mark involves a person’s name, then you may not be able to register it, or depending on the name register it, subject to rights of individuals that have that particular name. With respect to design, logos or business names, you may be able to register them, if, you can demonstrate that you are using the Mark in commerce or have a bona fide good faith intent to use the Mark in commerce with particular goods or services. However, this may subject to common law or registered rights of other trademark owners. This will depend on whether there is a crowded field for your Mark, or if, it is being used by another person, business or company.

Assuming that the Mark passes through a clearance search and is not being used with the goods or services that you provide; and it meets the aforementioned requirements, then you may be able to register it with the USPTO on the Principal or Supplemental Register. If the Mark is a descriptive mark and you cannot demonstrate a secondary meaning, then you may be forced to register the Mark on the Supplemental Register. If the Mark is not descriptive or you can establish a secondary meaning with sufficient evidence, then you should be able to register the Mark on the Principal Register with the USPTO.

If your application to register the Mark is based on an intent to use, then you will not have to provide a specimen of the use of the Nark in commerce to register it. However, the Mark must still
go through the examination, publication, opposition, and notice of allowance process with the USPTO. The Mark will be examined based on the Trademark Manual of Examining Procedures (TMEP) and you may have to respond to objections raised by a Trademark Examiner. The process for getting a response from a Trademark Examiner with the USPTO can take up to six (6) to thirteen (13) months.
Moreover, you will have to comply with the International Classification of Goods and Services (ICGS) system. You will have to review the USPTO’s ICGS Manual to determine what class or classes your goods and services will fall under, and pay a $325 per class fee to file the application.

After you are through the initial examination period with the USPTO’s Trademark Examiner, then you will proceed to publication for opposition. This allows current trademark holders or users to object to your application within a thirty day (30) window, but this thirty day window can be extended. If your application is able to go through the publication for opposition period, without an objection by a third party, then your application should proceed to allowance. Once, you receive a Notice of Allowance from the USPTO, then you should receive a Certificate of Registration of your Mark on the Principal Register from the USPTO. However, if your application was based on an intent to use basis, then you will be required to file an Affidavit of Use within six months of the issuance of the certificate of registration. However, this six month period can be extended.

If your application was based on a use in commerce of the Mark, then there is a requirement that you provide a specimen of your use of the Mark with the goods or services you describe in your goods and services description and classes that you select. Often individuals that provide services have difficulty in providing a specimen demonstrating use of the mark in commerce, but the Trademark Examiner will object or reject your specimen if, it does not comply with the TMEP. If your specimen was accepted, you cleared the publication for opposition period, were issued a Notice of Allowance and received a Certificate of Registration, then you will have to file an Affidavit of Continuous Use and Police the infringement of your Mark.

If you have any concerns or questions about the registration of your mark, responding to an objection, opposition or a cancellation proceeding filed against your mark or application, then please feel free to contact us.

Apple Acquires A Potential Ban on Samsung Electronics Importation of Mobile Device Related Products!

Tuesday, August 13th, 2013

Last Friday, the International Trade Commission (“ITC”) ruled that South Korea’s Samsung Electronics infringes on portions of two patents owned by Apple Inc. These two patents cover digital mobile devices relating to the detection of headphone jacks and operation of touchscreens. The ITC Panel moved to prohibit Samsung from importing, selling and distributing devices in the United States that infringe on certain claims of these two patents. Four other patent infringement claims were asserted, but were denied, and the ITC declared that its investigation closed.

The ITC’s Exclusion Orders were sent to President Barack Obama, who has 60 days to review them. If President Obama does not veto the Exclusion Orders, then they will go into effect immediately. This Ruling comes less than a week after the Obama Administration overturned an ITC decision from June that would have banned the sales of some older model Apple iPhones and iPads for violation Samsung’s patents.

U.S Trade Representative, Michael Froman, vetoed the ban on Apple iPhones and iPads on Saturday, citing its “chilling effect on competitive conditions in the U.S. economy and the effect on U.S. consumers.” Allowing the Exclusion Orders on Samsung’s devices after having intervened in the Apple case, could spur allegations that the Obama Administration is showing favoritism towards domestic companies, such as, Apple. The key difference between the cases is that the patents Apple was said to have infringed were so-called “standard essential” patents, which cover technology that must be used to comply with industry standards. The patents in the latest case are considered commercial and non-essential patents.

A U.S appeals court earlier on, wrestled with a request by Apple for a permanent injunction on sales of some phones made by Samsung for other alleged violations. At stake, is whether judges can permanently ban the sale of a complex device like a smartphone, if, a court finds that it violates a patent that covers just one of the device’s hundreds of features. Samsung and other smartphone makers say a decision in favor of Apple could cripple the smart phone and mobile devices market. Apple is appealing a lower court ruling that rejected the iPhone maker’s request that some older-model Samsung phones be permanently banned. The appeals court is expected to issue a written opinion but did not indicate any timeline for its decision.

If you have any concerns or questions regarding the Apple and Samsung Patent dispute or your own patent dispute, then please feel free to contact us.

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