What does the termination of a contract do to certain intellectual property rights that were granted, in perpetuity, from one party to another within that document? A recent ruling in the U.S. Southern District of New York can be instructive on this issue.
Typically, each party must pay its own attorney’s fees in litigation. The exception is when a contract contains a prevailing party clause or a statute provides that the prevailing party is entitled to a reimbursement of reasonable attorney’s fees.
One such statute is the Lanham Act, which permits an award of reasonable attorney’s fees only in “exceptional” trademark-related cases. The difficulty is in figuring out what it takes to label a case as “exceptional.”
NBA champion Draymond Green of the Golden State Warriors has not only been busy on the basketball court, but also off the court. He has enlisted Heitner Legal to assist him in the procurement, prosecution and licensing of valuable intellectual property, including trademarks.
Green’s first trademark application was filed in December 2014 for protection of the mark “Money Green.” He has since received registration for same.
In April 2016, Green once again asked Heitner Legal for help with acquiring the registration for another mark — “Sagnasty”. Before the end of that year, Green was the owner of that registration as well.
Athletes are quickly becoming wiser about their opportunities to benefit commercially outside of the field or court of play. Green is an excellent example of this.
With experience in trademarks and Sports Law, Heitner Legal is the perfect fit to help protect valuable intellectual property rights.
Ray and Amanda Tears Smith wanted to patent a game that was a variation of blackjack. The game utilized standard playing cards, but incorporated a new set of rules. The Patent and Trademark Office found this game ineligible for a patent.
Patent-eligible subject matter is defined as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has previously determined that laws of nature, natural phenomena, and abstract ideas do not fall under patent-eligible subject matter.
In order to surmise if a patent falls under the definition, examiners apply a two-step test. First, they determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. If the patent does not satisfy the first step the board looks to the second step. They will examine the elements of the claim to determine whether it contains an “inventive concept.” This inventive concept is enough to overcome the claimed abstract idea transforming it into a patent-eligible application.
The examiner, in the instant case, found that the game failed the first step of the test. The game is directed to rules for conducting a wagering game, which the examiner then found analogous to a “fundamental economic practice.” A fundamental economic practice is considered abstract by the Supreme Court. It is something that has a long, prevalent history in that particular market. The Board specifically reasoned that, “a wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards.”
After the game failed the first step, the examiner moved on to the second step. Abstract ideas may still be patent-eligible if they contain an “inventive concept” that can “transform” the claimed abstract idea into a patent-eligible application. The claims here require shuffling and dealing physical playing cards. The examiner found that shuffling and dealing a standard deck of cards are “purely conventional” activities. The board affirmed this decision and found the game ineligible of acquiring patent protection.
This finding does not foreclose the opportunity for patents in the gaming arts area. The Patent and Trademark Office has issued method claims on new ways of playing standard card games with a standard card deck. The board also acknowledged that a new or original deck of cards could potentially survive the second-step of the analysis.
With the continued growth of athletes and celebrities as role models in addition to the continued importance of intellectual property in their lives, it raises the question of whether they can trademark their names. “Under §2(e)(f) of the Trademark Act, a mark that is primarily a surname [family name] is not registrable on the Principal Register absent a showing of acquired distinctiveness [secondary meaning] under §2(f).” In order to acquire distinctiveness, the applicant must provide evidence of long and exclusive use of the mark, which changes the public significance of his/her surname to that of a mark for particular goods and services. The mark’s primary significance to the public is what determines if the mark is merely a surname. There are five factors which the Trademark Trial and Appeal Board uses to determine whether a mark is deemed to be primarily a surname, which are: (1) Whether the surname is rare; (2) Whether the term is the surname of anyone connected with the applicant; (3) Whether the term has any recognized meaning other than as a surname; (4) Whether it has the “look and feel” of a surname; and (5) Whether the stylization of lettering is distinctiveness enough to create a separate commercial impression. There is case law that supports the above-mentioned statute regarding the trademark of a surname. For instance, in In re Etablissements Darty Et File, the mark was the surname of a principal of the business as well as the company name, which the court determined as highly persuasive that the public would perceive it as merely a surname. As a result, the court held that the mark was primarily a surname, thus is not worthy of registration on the Principal Register. However, there are cases where the Trademark Trial and Appeal Board has not applied the statute appropriately. For example, in In re Hutchinson Technology Incorporated, the court determined the Board made a critical error by considering the mark of Hutchinson Technology as two separate parts rather than considering the mark in its entirety. The court overturned the Board’s denial of the registration of the mark Hutchinson Technology. There are a number of celebrities that have successfully trademarked their names and recently we have seen college athletes file trademarks of their names as well as their nicknames. In 2010, presidential candidate Sarah Palin and her daughter Bristol Palin successfully trademarked their names. The mark of Sarah Palin is a service mark and includes the goods and services of information about political elections and providing a website featuring information about political issues as well as educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business, and values. The mark of Bristol Palin is a service mark and includes the goods and services of educational and entertainment services, namely, providing motivational speaking services in the field of life choices. In November 2014, Mississippi State University quarterback Dak Prescott filed for a trademark in his name. Dak Prescott is a service mark and includes the goods and services of athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms and t-shirts. Also, it includes educational and entertainment services, namely, providing motivational and educational speakers; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; educational and entertainment services, namely providing motivational speaking services in the field of sports, sports training, fitness training. Earlier this year, Heisman trophy quarterback Jameis Winston applied for a trademark registration of his nickname “Famous Jameis.” Those two applications have been filed on a 1(b) intent-to-use basis. At Heitner Legal, we are a full service law firm specializing in intellectual property. We can assist you with all of your intellectual property needs including filing and obtaining a trademark. We can you guide you through this challenging process in order to ensure that you have the necessary protection of your trademark. Resources: Trademarks registerable on principal register; concurrent registration, 15 U.S.C. §1052 http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Oct2012/TMEP-1200d1e9735.xml In re Hutchinson Tech. Inc., 852 F.2d 552, 554-555 (Fed. Cir. 1988). In re Etablissements Darty Et File, 759 F.2d 15, 17 (Fed. Cir. 1985).
Wilson Sporting Goods Co. has filed a patent infringement lawsuit against Rawlings Sporting Goods Company, Inc. in the Northern District of Illinois. Wilson holds two patents, United States Patent No. 8,460,135 which was issued for game ball cover with improved stripes and/or logos & United States Patent No. 8,905,876 which was issued for a game ball with improved stripes. According to the complaint, Douglas G. Guenther, one of the named inventors for both patents held by Wilson, became employed by Rawlings in 2014 and holds the title of Senior Director of Innovation & Product Development. Wilson argues Rawlings had notice of its patents and Rawlings acted despite a high likelihood that its actions constituted infringement of Wilson’s patents. Wilson seeks a preliminary and permanent injunction against Rawlings’ continued infringement of its patents; an award of damages for the infringement; an order trebling the amount of damages for intentional infringement; and an award of costs, prejudgment interest, and attorney’s fees and costs.
In order to support its arguments, Wilson states that it introduced its patent (8,460,135) on the GST model, which is one of its most successful footballs, while Mr. Guenther was still employed by Wilson. According to the complaint, the white stripes of the Wilson GST football are formed of a more grippable material than the rest of the football cover. Further, when Mr. Guenther commenced his employment at Rawlings, it did not sell a football with highly grippable stripes. However, after Mr. Guenther began his employment at Rawlings, Rawlings introduced the R-2 football, which is made to look like the Wilson’s GST football and contains highly grippable, stitched white stripes.
According to the United States Patent and Trademark Office, patent infringement is the act of making, using, selling, or offering to sell a patented invention, or importing into the United States a product covered by a claim of a patent without the permission of the patent owner. When deciding if a patent has been infringed, the patent’s claims, which are statements of the scope of the invention, must be examined and the elements of each claim must be compared to that of the elements of the alleged infringer’s invention. If the elements of a patent claim match that of the alleged infringer’s invention, then an infringement has occurred. Moreover, under the Doctrine of Equivalents, if the patented invention and the alleged infringer’s invention are sufficiently equivalent in what they do and how they do it, then the patent has been infringed.
Wilson Sporting Goods Co. v. Rawlings Sporting Goods Co., Inc. (Case: 1:15-cv-06760)
United States Patent and Trademark Office website, http://www.uspto.gov/patents-maintaining-patent/patent-litigation/about-patent-infringement
Enforcing a Patent FAQ, NOLO, http://www.nolo.com/legal-encyclopedia/enforcing-patent-faq-29148.html
HEITNER LEGAL filed the trademark application and handled all necessary follow-up tasks with the U.S. Patent and Trademark Office for New England Patriots running back LeGarrette Blount. The trademark, ‘Blount Force Trauma’ has received full registration on the principal register. Blount will be able to move forward with federal protection when he uses the phrase in conjunction with the sale, marketing and promotion of t-shirts containing the popular words.
SB Nation’s Pats Pulpit interviewed HEITNER LEGAL’s Darren Heitner about the trademark and other intellectual property issues in the world of sports.
From the interview:
“[The trademark will] protect against others illegally using it for their own financial gain,” Heitner explained. “It also gives him the ability to license it to others and earn royalties from the sale of goods and products, if he so chooses.”
All of this makes plenty of sense, but it’s surprising how few athletes understand, or are advised, how to protect themselves.
“Not enough athletes understand intellectual property issues nor are properly guided by their advisors,” Heitner continued. “Heitner Legal has had the unique opportunity of working with many athletes on the protection of their valuable intellectual property, but not any athletes currently on the Patriots’ roster.”
In the eyes of the law, a properly formed and maintained limited liability business structure is a separate entity or “person” from its owners and employees. This legal benefit allows for the limited liability of individuals who seek to invest, start up, or become a part of the business structure. Consequently, in the event the entity is sued, the personal assets of those who have a stake in the business are often protected from judgment creditors who have prevailed in a court of law, leaving only those assets wholly owned by the company subject to being taken.
A holding company is a prime example of a business organizational structure that may be used to shield investors and owners from personally incurring debts and liabilities as result from the operation of an entity. Holding companies can be defined as a corporation (C-Corp or S-Corp) or limited liability company (LLC) that exists for the sole purpose of owning and/or controlling another company that may also be a corporation or LLC. Holding companies also exist for the purpose of owning and maintaining particular assets of its subsidiary or sister company, such as real estate, stocks and other forms of proprietary information and/or possessions. Intellectual property holding companies are those specifically designed for owning another’s intellectual property – i.e. patents, copyrights, trademarks, service marks, trade secrets, etc. – for the purpose of managing, selling and/or licensing same to third parties for the right to exploit said intellectual property in a given or agreed upon manner.
To envision how an intellectual property holding company can shield intellectual property assets, imagine the following example: you’ve developed a valid and protectable trademark in conjunction with your business – let’s call it “Green Socks Delivery, LLC” – and have also copyrighted materials pursuant to your enterprise. As a result, you have decided to create a separate intellectual property holding company – called “Green Socks Intellectual Holdings, LLC” – to manage your trademarks and copyrights. You now utilize Green Socks Intellectual Holdings, LLC to license your trademark and copyrights to Green Socks Delivery, LLC, or any third party for that matter, which in turn pays licensing fees and/or royalties to Green Socks Intellectual Holdings, LLC. In the event Green Socks Delivery, LLC is sued, because you formed a holding company to serve as a separate entity from your business, the intellectual property will be protected under Green Socks Intellectual Holdings, LLC and should not be subject to Green Socks Delivery, LLC’s creditors.
This separation in business structure is also ideal for those business owners wishing to franchise based on the fact said owners can license their intellectual property thorough their holding company to a third party seeking to open the business in another state. Furthermore, in the event the owner wants to sell his business, he may still reap the benefits of owning intellectual property by continuing to license his trademark or copyrights to the person who bought the business or to any person or entity who wishes to solely use the intellectual property despite the fact there is no longer an actual business in place.
Historically, the most cited to factor for creating an intellectual property holding company was the favorable tax laws. While the tax advantages tax may no longer be in effect in some state jurisdictions, there are still a litany of other factors to consider when determining whether forming an intellectual property holding company is right for you. These factors include: (1) whether you need and/or desire to own an entirely separate business entity in order to manage and exploit your intellectual property; (2) whether you have the adequate resources or funds to own, start up, or run multiple entities; and (3) whether you have any intellectual property worthy of protection in the first place.
Given the relatively low cost required in order to form a business entity in the state of Florida, the formation of a holding company to manage and maintain one’s intellectual property is a step more business owners should look into pursuing. For questions regarding the incorporation process of a holding company or the level of protection afforded by same, do not hesitate to contact Heitner Legal, P.L.L.C.
 This legal theory does not apply to sole proprietorships or general partnerships.
 A C Corporation refers to any corporation that is taxed separately from is owners under United States federal income tax law.
 A S Corporation refers to any corporation that elects to be taxed under Subchapter S of Chapter 1 of the Internal Revenue Code. Generally speaking, S corporations do not pay federal income taxes and the corporation’s income and/or losses are divided among and passed through the corporation’s shareholders who must report the income on their personal tax returns.
 Costs to form a corporation or limited liability company in Florida can be found at: https://www.incorporate.com/florida.html
On the heels of the recent Trademark Trial and Appeal Board (TTAB) decision to cancel six federally registered trademarks of the Washington Redskins, a Native American group has stated its intention to file a federal lawsuit against the Cleveland Indians. The advocacy group, People Not Mascots, led by Robert Roche, plans to initiate litigation challenging the baseball team’s name and mascot, Chief Wahoo. The group will request that the name and mascot be changed based upon the belief that it is disparaging toward Native American populations. The lawsuit is expected to be filed by late July and will seek $9 billion in damages.
In light of the Washington Redskins’ decision and the potential litigation that may surface not only from that case, but from others brought by advocacy groups such as People Not Mascots, it is important to fully understand what it means for a trademark to qualify as disparaging in nature. Section 2(a) of the Trademark Act states that the TTAB may refuse or cancel an application upon a finding that the trademark “[c]onsists of or comprises…which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” To make this determination, the TTAB employs a two factor inquiry:
1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols , whether that meaning may be disparaging to a substantial composite of the referenced group.
Furthermore, a trademark may be disparaging when it “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” A finding of disparagement is a conclusion of law based upon the underlying factual examination of evidence presented by both the trademark owner and the challenger.
Following this test, the TTAB analysis regarding whether the Cleveland Indians’ name and logo should be cancelled as disparaging would ask: 1) what is the meaning of “Cleveland Indians” as it appears in the marks and in connection with the goods and/or services identified in the registrations; and 2) is this meaning one that may disparage a significant amount of Native Americans? As one would imagine, the Cleveland Indians have a number of goods and services related to its various trademarks, ranging from sports programs to jewelry. Therefore, it will be up to the TTAB to decide if the meaning of team’s name and logo, in association with its good and services, is one that may be found offensive to the Native American population.
The impetus for advocacy groups to stand up and speak against what many feel has been overt denigration in the aftermath of the Washington Redskins’ decision leads one to believe that more lawsuits are coming. Some critics believe that the recent TTAB decision will not have a domino effect due to the notion that the Redskins’ name is considered a unique racial slur and carries a checkered past. Yet, these people are not in the minds of Native Americans. This upcoming college football season, the Florida State Seminoles will sport a new logo while defending their BCS National Championship; who’s to say that a claim challenging the latest design will not arise at some point in the future? The Redskins’ decision may not be one that carries heavy precedential value due to its history and the actions taken by the media to encourage change. However, if the lawsuit filed by Robert Roche and People Not Mascots against the Cleveland Indians is able to gain traction, it may mark the beginning of numerous lawsuits challenging team names and logos that may be viewed as unfavorably representing particular groups across the nation.
 See In re Geller, — F.3d —, 110 U.S.P.Q.2d 1867 (May 13, 2014).
 See Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96,124 (D.D.C. 2003) (internal quotations omitted).
Those familiar with HBO’s hit show, Game of Thrones, undoubtedly are familiar with the term “Milk of the Poppy,” the medical drink used as both a painkiller and an anesthetic to help those throughout the Seven Kingdoms who have suffered from severe injuries. Recently, the term was used in the Season Four finale, “The Children,” when Grand Maester Pycelle suggests giving The Mountain the opiate after his gruesome battle with the “Red Viper,” Prince Oberyn Martell of Dorne.
Milk of the Poppy is not only viewed as the healing drug of choice for the Seven Kingdoms; it also viewed as another way for HBO to bank off the success of the network’s most popular show since Tony Soprano was struggling to juggle the conflicting requirements of his “two families.” HBO is the registered trademark owner of “Milk of the Poppy” for international classes 21 and 25. This allows the network to exclusively use the phrase on mugs and clothing (namely t-shirts), respectively.
A trademark is a word, phrase, symbol or design, or combination thereof that allows consumers to identify and distinguish the source of the goods or services of one party from those of another. As the exclusive owner of a trademark, a registrant is granted the exclusive right to use the trademark in connection with the goods and/or services listed within his or her’s registration. Those seeking to register a trademark may apply do so on the United States Patent and Trademark Office’s (USPTO) website. In addition to the exclusive right to use the mark nationwide, owning a federal trademark registration provides several advantages, such as: (1) public notice of your claim of ownership to the mark; (2) the use of the registration as a basis to acquire registration in foreign countries; (3) the right to use the federal registration symbol ®; and (4) the ability to bring an action concerning the mark in federal court.
A federal registration is not the only means in which a person or entity can protect the use of their trademark. Owners may also seek to protect their mark through common law. In order to benefit from this route, the owner must be currently using the mark in commerce and must show that he/she/it was the first to use the mark within the geographical region. However, common law trademark rights are not preferred as they apply only to the geographical area where the mark is currently being used and do not offer the aforementioned benefits of a federal registration. Furthermore, common law trademark rights do not grant the ability to recover statutory damages (as defined within the Lanham Act), attorneys’ fees, or treble (triple) damages for willful infringement.
It is not uncommon for celebrities or networks responsible for high-profile shows to seek federal registration for words or phrases that they have made popular. In 2010, hotelier and socialite, Paris Hilton, sought federal registration for her catchphrase, “That’s Hot,” for use in the fields of music, video, and film; she further supplemented her application in 2013 in order to use the phrase in connection with alcoholic beverages such as wine and champagne. Another example is Mike Sorrentino of the hit MTV reality show, Jersey Shore. The reality star sought federal registration for his nickname, “The Situation,” for exclusive use in association with smartphone applications regarding fitness and exercise, as well as exclusivity for bathing suits, underwear, and other merchandise.
Now that total viewership for Game of Thrones has reached 18.4 million people per episode, expect HBO to seek registration for other phrases and words made popular from the show in order to exclusively benefit by placing aspects of the show in stores worldwide, thus allowing the network to keep the show at the tip of viewers’ tongues as they impatiently wait for the show’s fifth season. As intellectual property lawyers say: “Trademarks are Coming.”