IP Examiner™

Published by the Intellectual Property Law Section of the Federal Bar Association Spring 2021

Message From the Section Chair Message from the Editor On behalf of our Officers and Board, I am pleased to We are very proud to introduce the inaugural issue welcome you to the Intellectual Property Law Section of the newly re-named Newsletter of the IPLS of the (“IPLS”), and to introduce myself as Section Chair for Federal Bar Association (“FBA”). This is the Spring the leadership team that will be in place until Septem- 2021 Edition of the IP Examiner. ber of 2022. We are in the midst of our section’s renais- It is our hope and expectation to publish our IPLS sance and an exciting time it is (and will be)! We are Newsletter on a quarterly basis going forward. Our ob- committed to the following goals to ensure vitality in jective is to bring you interesting and informative short IPLS and to bring value to your memberships in the articles relating to IP subject-matter. IPLS Section. By building on the solid foundations laid We also intend to utilize the Newsletter to keep you down by past Boards and Officers, while adding our own informed and au courant regarding upcoming IPLS skill sets and energies, we pledge to deliver to you an activities and events. enhanced experience this year and for years to come. We trust that you will find this issue of the IP Exam- We will now ratchet up the publication of the IPLS iner useful and enjoyable to read. Please note that we newsletter, The IP Examiner, to a robust 4 times per welcome submissions for future issues. The next issue year. We have or will sponsor or co-sponsor events, will be published in the Summer of 2021. such as the Fashion Law Conference and a U.S. Su- Thank you, in advance, for your time and support. preme Court Admissions Ceremony. We also have presented a video program for IP legal careers and Ira Cohen Esq. look forward to more video presentations and/or CLE Editor, IPLS programs. As the COVID-19 siuation allows, we will [email protected] transition back into more live activities and events. [Chair: Continued p. 2.]

March 2021/ Inaugural Edition Save The Time: Join the IPLS and other IPLS Members in Washington, D.C., at the U.S. Supreme Court, in the spring of 2022, for a special group admissions ceremony and to hear oral arguments. For information, please contact: Board Member Oliver Ruiz, Esq: [email protected]

Disclaimer: The IP Examiner is a journal of discussion and opinion created and authored by and for IP professionals. All opinions expressed herein are those of the writers alone and do not represent the official position of the FBA, the IPLS Section, or any organization with which the writer is associated.

© 2021 IPLS All Rights Reserved. Spring 2021 2

[Message: Continued from p. 1.] COPYRIGHT LAW With the invaluable aid and assistance of FBA National staff, we will strive to create programs and Establishment of Small Claims Forum For publications to guide you, teach you, and facilitate Copyright Cases collegiality with your IP colleagues. We are certain that many of you will benefit from By H. Jared Doster, Esq. what the IPLS has to offer. And, for those of you who By mid-2022, the U.S. Copyright Office will establish want to get personally involved, we need and want a Copyright Claims Board in Washington, D.C., which your help and active participation. Please contact an will be authorized to adjudicate certain copyright Officer or Board member for more information. infringement claims, claims seeking declarations of We look forward to hearing from you and, if appli- non-infringement, as well as, associated counterclaims, cable, to working with you. Read the IP Examiner. See legal defenses, and equitable defenses. you at the events. With your help, we can grow the The Copyright Claims Board is designed to pro- IPLS not just in size, but in stature and reputation. vide a venue for Copyright holders to file small claims Chair, IPLS, Ira Cohen, Esq. while avoiding the expense of litigation in U.S. district [email protected] courts. This development is due to the recently en- acted bill H.R. 133, Consolidated Appropriations Act, 2021.1 The details about the new Board can be found IPLS BOARD (2021-2022) in Chapter 15 (pages 996-1019) of H.R. 133, which Chair: IRA COHEN, ESQ. can be found here: https://www.govtrack.us/congress/ Deputy Chair: OLIVERA MEDENICA, ESQ. bills/116/hr133/text. Treasurer: OLIVER A. RUIZ, ESQ. Below are some highlights on the nature of the new Secretary: PAUL D. SUPNIK, ESQ. Board. Note: The Board Officers’ Bios and contact information may be found at the end of this Newsletter. Damages and Filing Fees Claimants may seek monetary damages not exceed- ing $30,000 (not including attorneys’ fees and costs).2 Membership Renewal The filing fees will be set between $100 and the cost of Please do not forget to renew your membership filing an action in a U.S. district court.3 in the FBA and the IPLS Section for 2021-2022. We cannot do it without you, our members, and we [Establishment: Continued p. 3.] value your membership and participation. Thank you very much.

Annual Meeting (Sept. 2021)- The IPLS is RECENT IPLS EVENTS (2020) contemplating a social gathering of members at Virtual Event: “Bright Thoughts for IP Law the Annual Meeting at a convenient place and Careers.” The Intellectual Property Law Section of time. Stay tuned! the Federal Bar Association hosted a webinar full of valuable information for law students interested FUTURE IPLS EVENTS (2022) in a career in Intellectual Property Law (Nov. 20, 2020). April 2022 SCOTUS Admission Ceremony: Join the IPLS and other IPLS Members in Washington, D.C., at the U.S. Supreme Court, in FUTURE IPLS EVENTS (2021) the spring of 2022, for a special group admissions Annual Meeting (Sept. 2021) The IPLS would like ceremony and to hear oral arguments. to submit a proposal for a CLE presentation at the For information, please contact: Board Member Annual Meeting. Innovative and practical ideas Oliver Ruiz, Esq: [email protected] welcome! 3 IP Examiner

[Establishment: Continued from p. 2.] Appeal Personnel Parties will be able to request that the Board recon- The Board will be comprised of three “Copyright sider a determination, and can challenge a determi- Claims Officers” who will preside over all proceedings.4 nation by seeking an order from a U.S. District Court Also, the U.S. Copyright Office will hire at least two vacating, modifying, or correcting the determination.15 “Copyright Claims Attorneys” to assist the Board as Conclusion well as provide assistance to members of the public with respect to the procedures and requirements of This is an interesting development in the practice of the Board.5 intellectual property law. Individuals and small busi- nesses may benefit from using this new venue. On the Jurisdiction other hand, others may face a wave of “small claims” Although this Board will provide a new avenue for lawsuits that may not have otherwise been brought in enforcement, it does not replace U.S. district courts the past. because any party will be able to “opt-out” of the Author proceeding to instead pursue a claim, counterclaim, or defense in a U.S. district court.6 Libraries and archives H. Jared Doster, Esq. is a registered patent attorney have a special status in that there will be a procedure with the intellectual property boutique firm Malloy & allowing for them to preemptively opt-out of any pro- Malloy, P.L. in Miami, Florida. He handles IP litigation ceedings before the Board.7 and prosecution matters at the firm. Like actions brought in federal district courts, the works at issue must be registered with the U.S. Copy- Endnotes right Office (with limited exceptions) prior to filing an 1 For a history of H.R. 133, see https://www.congress.gov/ action with the Board.8 Also, the statute of limitations bill/116th-congress/house-bill/133. for alleged infringing acts will be three years.9 2See H.R. 133 at § 1504(e)(1)(D). 3See H.R. 133 at § 1510(c). Procedure 4See H.R. 133 at §§ 1502(b), 1503(a). The Register of Copyrights will issue regulations 5See H.R. 133 at § 1503(a)(2). governing the procedures of the board,10 but there 6See H.R. 133 at §§ 1504(a), 1506(i). remains a question as to whether the new Board will 7See H.R. 133 at § 1506(aa). follow the Federal Rules of Civil Procedure. 8See H.R. 133 at § 1505. After a claim is filed, the assigned Copyright Claims 9See H.R. 133 at § 1504(b). Attorney will review the claim to ensure that it is 10 See H.R. 133 at §1506(a). legally sufficient to proceed.11 Although the enacted 11 See H.R. 133 at § 1506(f)(1). bill does not elaborate, it is possible that the role of 12 See H.R. 133 at § 1506(n). the Copyright Claims Attorney will be akin to the role 13 See H.R. 133 at §§ 1506(o), 1506(s). of an Interlocutory Attorney in proceedings before the 14 See H.R. 133 at § 1506(t)(1). USPTO’s Trademark Trial and Appeal Board. 15 See H.R. 133 at §§ 1506(w), 1508(c). In discovery, parties will be allowed to issue discov- ery requests, including “[requests for] the production of relevant information and documents, written in- terrogatories, and written requests for admissions, as provided in regulations established by the Register of Copyrights.”12 The Board may admit evidence without applying any formal rules of evidence and will make factual find- ings based upon a preponderance of the evidence.13 A majority of the Board will be required to reach a final determination on the merits.14 Spring 2021 4

Preservation of Client-Attorney Privilege & neys and law school course lectures. The presentation of material from these conferences and lectures via Evasion of Copyright in the Zoom Age share screen and the possibility of being recorded By Veronica Oviedo, 2L raises the question of copyright infringement. The U.S. Copyright Office defines copyright as, “[a] body The novel world of COVID-19 has resulted in the of exclusive rights granted by law to copyright own- world working remotely, including attorneys. In the ers for protection of their work.” As such, Zoom has quest to maintain business, attorneys have relied upon incorporated within its copyright rights to entail, “You video-conferencing services. Zoom Video, the most may not post, modify, distribute, or reproduce in any popular of the video-conferencing services, grew from way copyrighted material, trademarks, rights of pub- 10 million to 200 million users from March 2020 to licity or other proprietary rights without obtaining the June 2020.1 Zoom has facilitated to transform kitch- prior written consent of the owner of such proprietary en countertops into conference rooms. Nonetheless, rights. Zoom may deny access to the Services to any Zoom breaches have become a new norm attaining User who is alleged to infringe another party’s copy- awareness from its consumers. As a result, Zoom has right.”10 Zoom goes even further to provide a direct expansively created ethical implications for the legal link to report any copyright infringement claims. One profession for the privacy of client information and of the issues that arise is it is unclear if Zoom would attorney-client privilege. automatically deny the user’s access or the methods it In this newfound “online age of lawyering,” attor- would take to decide on infringement.11 Furthermore, neys need to not only take into consideration their how can one evade for their research presentation to 2 advice but also the forum it is given. In the ABA not be recorded and be reproduced? Also, what is the Model Rules of Professional Responsibility, there is no line that lecturers and professors can go to present specific rule for video-conferencing, however, there material and not undergo a copyright infringement must be consideration of three rules: Rule 1.1, Rule suit? Zoom has incorporated a watermark feature for 3 1.6, and Rule 5.1. The client-lawyer relationship ABA its users. The watermark feature permits its users to Model Rule 1.6(a) states, “A lawyer shall not reveal have their email names appear as a stamp at the top in information relating to the representation of a client the presentation of shared materials while also display- 4 unless the client gives informed consent.” The “heart” ing a video of the presenter. Furthermore, it is import- of the attorney-client privilege is a client’s trust that ant to note one can share a copyrighted work on Zoom their communication is confidential. An intimate office that does not violate copyright laws such as fair use or conversation is now held at home, subjecting for posting only excerpts.12 But is Zoom itself also keeping household members to be around, who are unaware of a copy of the recordings? the confidentiality of these conversations. Moreover, There are two methods on how Zoom recordings are the imposition of Zoom hackers by third parties on stored, including on one’s personal computer or the Zoom conferences can also prevent the attorney-client Zoom cloud for paid users.13 The Zoom cloud attains privilege to attach.5 It was reported the Apple macOS the stored information in its database, which upon version of Zoom permitted hackers to install spyware selection can be shared either publicly or internally granting access to webcams and microphones.6 Zoom (account members only). The Zoom recordings for 30 responded alongside Apple with a release updated days are stored, and then it’s automatically deleted.14 version. However, Zoom recorded conferences can also Afterward, Zoom permanently erases the recording be stored by third parties.7 Zoom “name[d] every video from its database. Moreover, the cloud settings also recording in an identical way, a simple online search permit to control if the shared users can download, [was] reveal[ing] a long stream of videos elsewhere request permission, or input a password selected by that anyone [was able to] download and watch.”8 The one. But while Zoom does provide this private cloud videos being downloaded and watched ranged from and protection features, the administrator’s controls therapy sessions and private company meetings dis- are limited, enabling room for breaches. It is more cussions about its financial statements.9 As a result, worrisome the usage of unauthorize views, downloads, many Zoom consumers began to fear the imposition of or shares can occur without the administrator’s knowl- their privacy without their consent. But is Zoom also edge.15 Fortunately, there are preventive measures serving as an open door for copyright issues? that can be taken by attorneys and firms. Zoom has served not only for private meetings but As per the ABA Model Rule 1.6 (c), “A lawyer shall also to substitute for national conferences for attor- make reasonable efforts to prevent the inadvertent or 5 IP Examiner unauthorized disclosure of, or unauthorized access 5 David Greenwald & David Saunders, INSIGHT: Zoom- to, information relating to the representation of a ing and Attorney-Client Privilege, BLOOMBERG LAW, May client.”16 The ABA Model Rule 1.1 states an attorney’s 22, 2020, https://news.bloomberglaw.com/us-law-week/in- duty to provide competent representation, including sight-zooming-and-attorney-client-privilege 6 the usage of technology. Moreover, ABA Model Rule Whiteford Taylor Preston, LLP, Client Alert: Zoom-Users 5.1 imposition on the firm to ensure its lawyers are ad- Beware! Reports of Significant Privacy and Data Security Flaws, April 7, 2020, https://www.wtplaw.com/news-events/ hering to the rules of professional responsibility. Law client-alert-zoom-users-beware-reports-of-significant-priva- firms and their attorneys should implement policies to cy-and-data-security-flaws ensure client information remains private and privi- 7 David Greenwald & David Saunders, INSIGHT: Zoom- 17 leged. Zoom has been proactively amending its pri- ing and Attorney-Client Privilege, BLOOMBERG LAW, May vacy settings and has itself acknowledged that “[they] 22, 2020, https://news.bloomberglaw.com/us-law-week/in- have fallen short of the community’s – and [their] sight-zooming-and-attorney-client-privilege own – privacy and security expectations.”18 Currently, 8 Drew Harwell, Thousands of Zoom video calls left Zoom offers settings like password-protection, waiting exposed on open Web, WASH.POST, April 3, 2020, https:// rooms, watermarks, and limiting what participants can www.washingtonpost.com/technology/2020/04/03/thou- do, such as initiating a recording. Furthermore, a sim- sands-zoom-video-calls-left-exposed-open-web/ 9 ple remedy an attorney can take to prevent household Id. 10 members from overhearing confidential information is Recording and Sharing Zoom Meetings, Digital Learn- securing one isolated part of the house or coordination ing Institute Resources, https://digitallearning.davidson.edu/ recording-and-sharing-zoom-meetings/#:~:text=Zoom’s%20 with everyone’s schedule. Acceptable%20Use%20Policy%20also,of%20others%2C%20 Thus, as Zoom users, much like attorneys, get including%20copyrights.%E2%80%9D adjusted to the Zoom-age, niches will be discovered 11 Clark Wilson LLP, Two Thoughts on Zoom’s Copy- throughout the process. It is not to go unnoticed Zoom right Clause, April 9, 2020, https://www.cwilson.com/two- is quick to act upon remedying any security, privacy, thoughts-on-zooms-copyright-clause/ and copyright issues. However, Zoom’s attempt is not 12 Id. sufficient to pervade the holes within its policies and 13 Devon Delfino, ‘Where does Zoom save recordings?’: measures. Both attorneys and firms must do their part How to find your Zoom meeting recording in 2 ways, BUSI- and take all preventive measures they can to ensure NESS INSIDER, Mar 18, 2020, https://www.businessinsider. their ethical obligations are upheld for their clients. com/where-does-zoom-save-recordings 14 Ian Aberle, Zoom Cloud Recordings Limited to 30 Author Days, SMU, June 24, 2020, https://blog.smu.edu/itcon- Veronica Oviedo is a 2L at the University of Pitts- nect/2020/06/24/zoom-cloud-recordings-limited-30-days/ 15 burgh School of Law. She also is a Research Assistant How To Share Zoom Meeting Recordings Securely In The Cloud, PANOPTO VIDEO PLATFORM (2020), https:// at the University’s Cyber Division, as well as a Legal www.panopto.com/blog/how-to-share-zoom-meeting-record- Fellow at a business/wealth management law firm. ings-securely/ (last visited Oct 12, 2020). 16 Model Rules of Prof’l Conduct R. #1.6 (2020). Endnotes 17 David Greenwald & David Saunders, INSIGHT: Zoom- 1 Subrat Patnaik, Zoom’s daily participants jumped from ing and Attorney-Client Privilege, BLOOMBERG LAW, May 10 million to over 200 million in 3 months, VENTURE- 22, 2020, https://news.bloomberglaw.com/us-law-week/in- BEATS, April 2, 2020, https://venturebeat.com/2020/04/02/ sight-zooming-and-attorney-client-privilege zooms-daily-active-users-jumped-from-10-million-to-over- 18 Whiteford Taylor Preston, LLP, Client Alert: Zoom-Us- 200-million-in-3-months// ers Beware! Reports of Significant Privacy and Data Security 2 David Greenwald & David Saunders, INSIGHT: Zoom- Flaws, April 7, 2020, https://www.wtplaw.com/news-events/ ing and Attorney-Client Privilege, BLOOMBERG LAW, May client-alert-zoom-users-beware-reports-of-significant-priva- 22, 2020, https://news.bloomberglaw.com/us-law-week/in- cy-and-data-security-flaws sight-zooming-and-attorney-client-privilege 3 Ellen Rosen, The Zoom boom: How videoconferencing tools are changing the legal profession, ABA J., June 3, 2020, https://www.abajournal.com/web/article/ethics-video- conferencing-tools-are-changing-the-legal-profession 4 Model Rules of Prof’l Conduct R. #1.6 (2020). Spring 2021 6

1996: Google (search) PATENTS Cloning 1903: First Fully Practical Airplane — The Wright DVDs brothers successfully launch the first powered, sustained, 1997: Hybrid Car (Gas/Electric) and controlled airplane flight. Netflix 1938: Chocolate Chip Cookies — Created by Ruth Wakefield with the help of Susan Brides at the Toll House Inn Flat Screen Display in Massachusetts. 1938 is the first year the recipe appeared MP3 Players in print. 1998: International Space Station 1999: WiFi Chronology of Inventions/Patents That Have 2000: Virtual Reality Generator Changed Our Lives Over the Last 50 Years: Camera Phone 1969: Laser Printer USB Flash Drive Mouse Pad PlayStation 2 Taser 2001: iPod Magnetic Levitaion (Maglev) Human Genome Map 1970: Fiber Optics Wikipedia 1971: Personal Computer (P.C.) 2002: Blu-ray Disc E-Mail 2004: Facebook Anti-Lock Brakes 2005: You Tube Universal Product Code (UPC) (Bar Code) Google Maps 1972: Video Game Console 2006: Twitter Magnetic Resonance Imaging (MRI) Wii 1973: Cellular Telephone 2007: iPhone Voice Mail 2008: Android Smart Phone 1974: Post-It Notes 2009: Fitbit GPS Bitcoin 1975: Digital Camera 2010: Siri 1978: Electronic Spreadsheet 2012: Google Glass Microwave Popcorn Bag 2013: Self-Driving Car 1979: Sony Walkman 2015: Tesla Model X 1981: Space Shuttle Reusable Rockets Graphical Use Interface (clicking icons and images 2016: Oculus Rift with a mouse) 2018: Metal 3-D Printing 1982: Computer Virus 1983: Microsoft Word 1984: Macintosh (Apple) Personal Computer DNA Sequencing 1986: 3-D Printing 1988: Disposable Contact Lenses Stealth Bomber 1989: WorldWide Web (HTML) and (URL) 1990: Hubble Space Telescope Photoshop Caller ID Portable GPS 1991: Mobile Broadband 1992: E-Mail Text-Messaging 1994: Predator Drone Bluetooth (2000: incorporated into products) 7 IP Examiner

C – Cancellation grounds in USPTO inter partes pro- TRADEMARK LAW ceedings are delimited. The Zen of Being ®: Cease and desist letters can be more easily addressed. U.S. Trademark Registration Advantages from A Civil damages and criminal sanctions are available to Z in federal courts. By Ira Cohen, Esq. Colors can be protected as marks. Combat against cyber squatters is more effective. The brand, designation, mark, or name of a compa- Constructive notice to third parties of your ny can be one of the company’s most valuable assets. company’s mark(s) is afforded. How much can a brand be worth? Consider this: Customs enforcement is available to a registered according to Interbrand’s March 2011 Report, among owner of the mark(s). the world’s most valuable brands are the following: Court remedies are available to a registered Coca-Cola ®, $70 billion; IBM ®, $65 billion; Microsoft owner of the mark(s). ®, $61 billion; Google ®, $44 Billion; and GE ®, $43 Confusing marks can be thwarted with greater billion. ease and less cost. To be sure, the overall value of a business, in large Counterfeiters can be more easily and measure, is the sum of the assets it secures and holds. economically deterred. Assets can be tangible, such as cash, realty, equip- D – Damages for infringement are available in federal ment, machinery, physical plant, or vehicles. Among courts. other things, on the intangible side of the property Decreased likelihood of infringing others where spectrum, your company can amass its intellectual the mark has been registered. property portfolio, consisting of its brands, designa- Destruction of counterfeit goods is an available tions, logos, names, service marks, slogans, trade- judicial remedy. marks, and trade names. Deterrence against knock-off goods is enhanced. There is a panoply of advantages, benefits, justifica- Differentiation from competitors and their goods tions, and reasons for applying for a Federal trademark and services is achieved. or service mark registration. For ease of reference (and Disgorgement of infringer’s profits is an available not denoting any particular degree of significance or judicial remedy. rank order, owing to sequence), the following list is Distinguishing the goods and services of your more or less alphabetical, so that we may casually refer company becomes easier and cheaper. to the list as the Zen of Being ® or, in the vernacular, Domain names owned by your company can U.S. Trademark Registration Advantages from A to Z. better be protected. A – Additional income opportunities (e.g. licensing/ Due diligence will reveal your mark(s) to third- franchise); parties through proper searches. Application fees are modest. E – Enhanced judicial damages for willful or mali- Assets (intangible) of a company are increased. cious conduct by others. Attorney’s Fees is an available statutory remedy Establishment of your company’s trademark for infringement. rights is based upon use. Avoidance of legal disputes over rights with Exclusive nationwide ownership of your competitors and other third parties. company’s mark(s) is gained. Avoidance of business headaches, in general. Exclusive right to use your company’s mark(s) in Avoidance of conflicting third-party rights as connection with certain goods or services is concerns marks. obtained. B – Benefit of the doubt is accorded to the Registra- F – Foreign counterfeit goods are more easily tion owner. stopped, seized, confiscated, or destroyed. Building your brand with your company’s designs, Foreign mark registration basis is established for logos, names, marks, and slogans. your company with your mark(s). Business identity protection afforded, in general, Franchising options are created for your to your company. company. Spring 2021 8

G – Goodwill is created for your company. N – Name can, and should, be your company’s “MVA” “Gravitas” is gained by registration of your (Most Valuable Asset). company’s mark(s). Nationwide priority of your company’s mark(s) is Grounds for cancellation of your company’s afforded. mark(s) at USPTO are severely proscribed. Negotiation positions of your company are H – Hold mark(s) as company asset(s) (i.e., part of strengthened vis-à-vis third parties. intangible intellectual property portfolio). Nominal costs to register and maintain your I – Identical marks by your competitors or trademark company’s mark(s) with USPTO. pirates can be stopped. Not a mandatory process; the registration Identification of your company’s name in the procedure is elective. marketplace is increased. Notice (constructive) of trademark rights is Improvement of your company’s image is disclosed to third parties. experienced. O – Official constructive notice, to the world, of your Incontestable mark opportunity is created for company’s mark(s). your company’s I/P portfolio. Option to expand the use of your company’s Injunctive relief is available in federal courts as an marks to other geographic areas. infringement remedy. P – Permanent injunctive relief is an available judicial Innocent infringement defense is eliminated after remedy in federal courts. five (5) years. Prestige in your company’s local, and industry- Intellectual property portfolio of your company is wide, commercial communities is witnessed. enhanced. Prevention of unauthorized imports harmful to Internet domain name protection is afforded to your business is enhanced. your company. Prima facie evidence of ownership and the J – Judicial preference for nationwide service and validity of your company’s marks are created. enforcement is typical. Principal USPTO Register’s prestige is accorded Jurisdiction of federal courts can be invoked by to your company’s marks. your company. Processing time, overall, is reasonable for USPTO Jury preference is to find in favor of the owner of mark applications. the registered mark(s). Profit disgorgement by infringer(s) is an available K – “Knock-off” goods can better be deterred, if not judicial remedy. eliminated. Proof of Ownership is accorded to your company L – Legal presumption of ownership, validity, and for its marks. right to use mark nationally is gained. Property agglomeration for your company’s Licensing opportunities are created so that your portfolio is enhanced. company can enhance its income. Public registration serves as a visible deterrent to Logo(s) of your company is (are) better third parties regarding marks. protected and enforced. Q – Quality of your company’s image and reputation M – Marketing and media tool for your company to is enhanced. utilize in commerce. R – ® symbol serves as a clear and unequivocal warn- Madrid Protocol. International marks’ registration ing notice to third parties. basis is created. Refusal of registration, by USPTO, to others Modest cost to your company as compared to the with identical, similar, or confusing marks is maintenance of other assets. assured. Money saved for your company (e.g., stationery, Registration filing and processing fees are printing). relatively modest at USPTO. Post-registration (maintenance) fees to USPTO Registration symbol ® can be utilized lawfully are rather modest. only by mark registrant. Remedies are enhanced in federal courts as against willful infringers. Reputation protection is provided for your company. Right to sue in federal court is afforded to your company. 9 IP Examiner

S – Sale of business opportunities is broadened (i.e., is enhanced. marks act as an assurance to purchasers). U.S. is a signatory to the Madrid Protocol Sale and purchase of mark(s) are treated like any concerning registered marks. other kind of property. USPTO will not register similar, identical, or Save for your company on commercial printing confusing marks to third parties. costs. V- Validity of your company’s mark(s) will legally Scope of protection to your company’s mark(s) is be presumed. expanded. Valuable asset(s) of your business will be created. Search fees, as part and parcel of pre-application Valuation of your business will be enhanced. due diligence, are modest. Value increase in your company’s net worth will Search reports will reveal mark(s) to third result. parties. Visible deterrent to trademark infringers, knock- Seizure of counterfeit goods is an available off artists, and pirates is generated. judicial remedy. W – Willful/malicious infringers can be punished with Slogans used by your company as marks can be an award of treble damages. protected and enforced. X – Extraterritorial rights and registrations can be Sophistication is shown by your company as to based on U.S. mark registration(s). intellectual property issues, in general. Y – Yield of a mark is concrete business, commercial, Sounds and smells can, in appropriate cases, be financial, and legal benefits for your company. protected as marks. Z – Zealous protection and enforcement of your State law offers additional trademark protection company’s slogans, designs, logos, marks, to your company. and trade names are aided and facilitated by Statutory protections available to your company registered mark(s). as a result of registration. Stop infringers, pirates, and knock-off artists. Suing in federal court is a right if your company has one or more registered mark(s) at issue. Symbols and logos can be safeguarded and enforced by your company. T – Temporary injunctive relief is a judicially available remedy. Term of registration of your company’s mark(s) (i.e., 10 years) is renewable. Territorial coverage (U.S. and U.S. Territories) for your company’s mark(s) is granted. Tool for marketing and public relations is fashioned for your company. Trademark Attorneys’ fees are relatively modest. Trademark search(es) should reveal your mark(s) to third parties. Transfer of rights to and from your company is less complicated. Treaty benefits are accorded to the owner(s) of the registered mark(s). Treble damages, for willful infringement, is an available judicial remedy. U – Upper hand is gained in ICANN (domain name) proceedings and enforcement. U.S. protection is afforded, in all 50 States and U.S. Territories (e.g., USVI, Guam, Puerto Rico). U.S. Coast Guard and Border Patrol enforcement Spring 2021 10

COMMITTEE POSTS Deputy Chair: Olivera Medenica IPLS Deputy Chair Olivera Medeni- IPLS Member Participation at Monthly ca is a member of Dunnington Bar- Meetings thalow & Miller LLP’s intellectual property, advertising, art and fashion The Board of the IPLS is going to experiment with law, international, and litigation and opening Monthly Meetings to all Members. Meetings arbitration practice groups. Olivera generally are held on the second Monday of each started her legal career with a federal clerkship at month, from about 11:00 to 11:30 a.m. We now have the U.S. Court of International Trade. For the past 15 our Board Meetings of the IPLS commence at 11:00 years, Olivera has led litigation teams as first chair in a.m. At 11:30 a.m., general Members may join the state and federal courts, in both New York and New Meetings as well. Jersey (admitted in both), and in arbitration and medi- ation proceedings. She has successfully handled com- Articles Wanted plex commercial litigation matters that require review and analysis of documents in French, and Serbo-Cro- If you are interested in submitting an article to The atian (native speaker). Matters that she has handled IP Examiner, we want to hear from you. All manu- include, but are not limited to matters involving New scripts submitted for consideration should be sent to York banking laws, shareholder disputes, defamation, the Editor, Ira Cohen, Esq. at ic@miamibusinesslitiga- fraud, breach of contract, and business torts. tors.com. IP subject matter only. Article length: 1,000- 2,000 words. Once an article is accepted for publica- Olivera’s intellectual property practice consists of tion, editorial changes may be necessary. “soft IP”: copyright, trademark, and trade secrets. In addition to her litigation practice, she prosecutes Meet Your IPLS Board (2021-2022) trademarks before the Patent and Trade- mark Office and first chairs contentious opposition and cancellation proceedings before the Trademark Trial Chair: Ira Cohen and Appeals Board. IPLS Chair Ira Cohen, Esq. is a Olivera’s fashion law practice consists of advising Partner of Henkel & Cohen, P.A. in individuals and companies in the fashion and beauty Miami, FL. Ira is a Member of the industries on a variety of matters, including commer- Florida and New York Bars, the vari- cial litigation matters, trademark litigation and prose- ous District Courts in FL and NY, the cution, trademark licensing, and serving as outsourced First, Second, Sixth, Seventh, Ninth, in house counsel for smaller companies unable to Eleventh, and Federal Circuit Courts of Appeal, as maintain permanent in house counsel (e.g. company well as the United States Supreme Court. He has been formation, partnership agreements, consulting and rated AV Preeminent® by Martindale Hubbell. He has IP licensing agreements, IP and rights clearance on been practicing Intellectual Property Law for almost advertising campaigns in print, TV, and internet, social 40 years. Ira served from 1982-1985 as Judicial Law media counseling, employment and sales agent agree- Clerk to the Honorable Harold J. Raby, United States ments, distribution agreements). Magistrate (Judge) for the Southern District of New Olivera has taught legal writing at Brooklyn Law York (1982-85). He is a proud and active Member of School and has lectured widely on issues dealing with the Federal Bar Association (“FBA”), a Life Fellow of intellectual property, e-commerce, social media, and the Foundation of the FBA, an FBA Moot Court Judge, wearable technology. Lecture engagements have in- and Columns Editor for The Federal Lawyer, the pub- cluded Lawline.com, the Federal Bar Association, New lication of the FBA. He may be reached at 305-971- York County Lawyers’ Association, the 9474, or by e-mail at [email protected]. Bar, the New York State Bar Association, Harvard Law School, Brooklyn Law School, New York Law School, South by Southwest Interactive, Cardozo Law School, the School of Visual Arts, Manhattan School of Music, Direct Marketing Association Conference (Geek-End), and the New York Foundation for the Arts. She has also written articles for a variety of publi- 11 IP Examiner cations including the New York Law Journal, National Secretary: Paul D. Supnik Law Journal, Ecommerce Law and Strategy, Brooklyn IPLS Secretary Paul D. Supnik Journal of International Law, Cardozo Arts and Enter- practices trademark and copyright tainment Law Journal, Loyola of Interna- law in Beverly Hills, California. He is tional and Comparative Law Review, and the Internet a member of the bars of the Central Law Journal. She also co-authored the American Bar District of California, and the Ninth Association’s Legal Guide to Fashion Design, and and Federal Circuit Courts of Appeal. Thomson Reuters’ Aspatore, Inside the Minds, 2015 He has practiced in the intellectual property area for Edition of Navigating Fashion Law. over 40 years. Paul is a former president of the Los Olivera is an Advisory Board Member of the New Angeles Copyright Society and a former chair of the York Law School Innovation Center for Law and Tech- Entertainment and Intellectual Property Section of nology, Fashion Law Initiative. She is also the founder the Los Angeles County Bar Association. He serves of an annual Fashion Law Conference hosted by the on the ADR Mediation Panel for the Central District of Federal Bar Association, in New York and . Both California for copyright and trademark matters and on were featured in the Huffington Post, Forbes, and the Independent Film and Television Alliance panel of Intellectual Property Watch. arbitrators. Paul is a co-author of the publication: The Olivera has also co-authored several books in the Essential Guide to Entertainment Law: Intellectual field of fashion law: Navigating Fashion Law, Aspa- Property (2018). Paul may be reached at (310) 859- tore’s Inside the Minds Series, Thomson Reuters (2015 0100 or by e-mail at [email protected] Edition); the American Bar Association’s Legal Guide to Fashion Design (2013); The Business and Law of Fashion and Retail, Carolina Academic Press (2020); The Routledge Companion to Copyright and Creativity in the 21st Century, Taylor & Francis Group (2020); The Fashion Designer Survival Guide (chapter cover- ing IP) (2020). Treasurer: Oliver A. Ruiz IPLS Treasurer Oliver A. Ruiz is a partner with the law firm of Malloy & Malloy, P.L., where he handles intel- lectual property disputes and litiga- tion matters, as well as trademark prosecution/registration matters. He has been rated AV Preeminent® by Martindale-Hub- bell. Mr. Ruiz is admitted to practice law in Florida and North Carolina state courts, as well as, in the United States District Court for the Southern District of Flori- da, the United States District Court for the Middle Dis- trict of Florida, and the United States Court of Appeals for the Eleventh Circuit. He also represents clients in U.S. Trademark Trial and Appeal Board proceedings. Mr. Ruiz is a Past President of the Federal Bar Associa- tion’s South Florida Chapter, is the Chair of the chap- ter’s 2021 Annual Meeting and Convention Committee, and currently serves as an FBA Eleventh Circuit Vice President. He may be reached at 305-858-8000 or by e-mail at [email protected]. 1220 N. Fillmore Street, Suite 444 Arlington VA 22201

The IP Examiner is published by the Federal Bar Association, 1220 North Fillmore Street, Suite 444, Arlington, VA 22201, 571.481.9100, (fax) 571.481.9090. ©2021 Federal Bar Association. All rights reserved. The views expressed in this newsletter are not necessarily those of the Federal Bar Association. Ira Cohen Esq. Editor, IPLS, [email protected]