Tampa Business Lawyer

What Business Owners Need to Know About the Children’s Online Privacy Protection Act

Salma Benkabbou — Sat, 22 Oct 2022 20:23:00 +0000

What Business Owners Need to Know About Children’s Online Privacy Protection Act (COPPA)

Keeping kids safe online is a priority for parents and business owners alike. This is why it is important to understand and follow the rules of the Children’s Online Privacy Protection Act (COPPA).

In a time when the internet is available to 95% of US children marketers, companies, and advertisers need to rethink their approach to engaging with users online.

The good news is that with the right tools and strategies in place, it’s possible to preserve the internet as a space where children can socialize, learn and play – all without having to worry about potentially age-inappropriate targeting activities from advertisers.

In this article, I will explain COPPA and what you can do as a business owner to protect children’s private information.

What is COPPA?

COPPA was enacted by the United States Congress in 1998 and is enforced by the Federal Trade Commission (FTC). COPPA gives parents control over what information websites can collect from their kids. It puts protections in place and streamlines procedures that companies covered by the rule need to follow.

Why is COPPA Important?

Complying with COPPA protects your organization from legal risk and shows that you are dedicated to keeping kids safe online.

Also, since COPPA came into effect, the fines for violating children’s privacy online have become greater and greater. For instance, WW International (previously Weight Watchers) paid $1.5 million to resolve claims from the FTC that it illegally gathered the data of underage users of its Kurbo program.

A second notable case was against the operators of the social networking app Musical.ly, now known as TikTok, which was accused of illegally withholding information of children under 13. The FTC concluded TikTok was retaining this personal information without the previous consent of the children’s parents, thus violating COPPA. The data the app was withholding included the child’s email addresses, names, and schools. Since the children’s information was public on the app, adults using TikTok were able to contact the minors. In addition, until October 2016, the app included a feature that allowed users to view other users within a 50-mile radius of their location.

TikTok, agreed to pay $5.7 million to settle Federal Trade Commission allegations that the company illegally collected personal information from children. The settlement also required the app’s operators to comply with COPPA going forward and to take offline all videos made by children under the age of 13. This is to date the largest civil penalty ever obtained by the Commission in a children’s privacy case.

Does COPPA Apply to Your Business?

The first step to complying with this rule is to determine whether COPPA applies to your business.

COPPA applies to operators of websites and online services that collect personal information from kids under 13. So, you must follow COPPA if your website or services meet any of the following conditions:

Your website or online service is directed to children under 13 and you collect personal information from them.

Your website or online service is directed to children under 13 and you let others collect personal information from them.

Your website or online service is directed to a general audience, but you have actual knowledge that you collect personal information from children under 13.

Your company runs an ad network or plug-in, for example, and you have actual knowledge that you collect personal information from users of a website or service directed to children under 13.

What Can I Do to Comply with COPPA?

If your business does meet any of these conditions, these are the steps you must follow:

Create and Post a Clear Privacy Policy that Complies with COPPA.

Your privacy policy must describe how your company handles personal information collected from children online. This policy needs to be specific and explain:

How the information is collected
What information is collected
How the information will be used
If it’s shared with third parties
A description of parental rights

Once you prepare a privacy policy you must place a link to your policy on your homepage. It should also be placed anywhere you collect personal information from children.

Notify Parents About Your Information Practices

COPPA requires that you give parents “direct notice” of your information practices before collecting information from their kids. Also, if you make a change to the practices parents previously agreed to, you have to send an updated direct notice.

Gain Parent Consent

Before collecting, using, or disclosing personal information from a child, you must get their parent’s verifiable consent. According to the FTC, acceptable methods include having the parent:

Use a credit card or another online payment system that provides notification of each separate transaction to the account holder;
Connect to trained personnel via a video conference;
Provide a copy of a form of government-issued ID that you check against a database, as long as you delete the identification from your records when you finish the verification process;
Answer a series of knowledge-based challenge questions that would be difficult for someone other than the parent to answer; or
Verify a picture of a driver’s license or another photo ID submitted by the parent and then compare that photo to a second photo submitted by the parent, using facial recognition technology.

Honor Parents’ Ongoing Rights

Parents have a right to protected information even after consent is provided. So, if a parent asks, you must:

Offer them a way to review the personal information collected from their child;
Give them a way to revoke their consent and refuse the further use or collection of personal information from their child; and
Delete their child’s personal information.

What Are the Next Steps in Protecting Children’s Online Privacy?

When COPPA was first drafted there was no YouTube, TikTok, etc. With the advancements in technology occurring at a rapid pace, it is important to make sure you stay up to date with all the changes regarding COPPA.

In addition, it’s important to be aware of state-specific regulations. For example, according to The New York Times, California will soon adopt the California Age-Appropriate Design Code Act. This measure will require sites and apps to block features that pose a risk to children, such as chat. It will also require online services to turn on the highest privacy settings by default for children.

The California measure could apply to a wide range of popular digital products that people under 18 are likely to use including social networks, game platforms, connected toys, voice assistants, and digital learning tools for schools. The California law will take effect in 2024. In addition, Congress is working to boost online safety for children.

ABOUT THE BENKABBOU LAW FIRM

The Benkabbou Law Firm, PLLC, is a boutique law firm located in Tampa, Florida. Our firm focuses on business law, immigration law, business immigration law, and intellectual property law. At our firm, we treat our clients like family and treat their interests and dreams as our own.

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Hästens is suing a small business for using a checkered pattern. Can they really “own” a pattern?

Benkabbou Law Firm — Thu, 24 Mar 2022 09:00:17 +0000

Background:

The owners of Coco & Dash Home, a family-owned furniture store in Dallas, are unexpectedly being targeted by Hästens, a Swedish producer of high-end mattresses.

A blue and white checkered pattern is at the center of this trademark dispute.

The Dispute:

Hästens, a Swedish luxury mattress maker, holds exclusive rights to its blue-and-white checkered pattern in the U.S. for use on everything from furniture to curtains and table coverings.

So, when Hästens learned that the owners of Coco & Dash Home created a custom blue-and-white checkered sofa they sent a cease-and-desist letter. The letter states that the products Coco & Dash Home offers feature an almost identical design to the Hästens Check Designs.

An attorney for Hästens said that Coco & Dash’s use of a blue-and-white checkered pattern on a sofa represents an unauthorized use of “Hästens Check Design” that is “likely to create confusion in the marketplace as to the source of the goods.”

Teddie and Courtney Garrigan, the mother-daughter team that owns the award-winning home decor retail shop, disagree with the notion that any and all uses of blue-and-white checked fabric should be considered and referred to as Hästens Blue Check. They are taking the Sweden–based company to court in the hopes that a judge will issue an order that cancels some of the registered trademarks Hästens has on file with the U.S. Patent and Trademark Office.

Hästens has demanded that Coco & Dash Home not only stop selling the item but “provide a full accounting of all products sold bearing the Hästens Check Designs.” If the case goes to litigation and the court finds that Coco & Dash willfully produced a “counterfeit,” damages could range up to $2 million.

In a past case, the Swedish brand went to court against a Texas home goods retailer, Caitlin Wilson, which is located down the street from Coco & Dash. The items at the center of the case included a pillow and a roll of fabric.

Wilson fought back in court, arguing that blue gingham originated in the 17th century, 200 years before Hästens was founded. Furthermore, it had been used as everything from the material for Dorothy’s costume in The Wizard of Oz to Marianne’s dress on Gilligan’s Island. Still, the lawsuit progressed through the court system, and eventually settled before reaching a trial.

Takeaway

Under US trademark law a fabric design may be protected. However, designs of this type are not considered “inherently distinctive,” and acquired distinctiveness or secondary meaning must be demonstrated before protection can be claimed.

Interestingly, in November of 2018 Hästens failed to register its blue-and-white checked pattern as a European trademark. The Board of Appeal of the European Trademark Office EUIPO concluded that consumers would primarily have seen the pattern as a decorative or style element rather than as a trademark.

This reflects the differences in approach that IP Offices in different countries may have to issues such as distinctiveness and demonstrates that subtle changes can mean the difference between acceptance and rejection of a trademark.

Trademark site:Trademark Status & Document Retrieval (uspto.gov)

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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A Small Business is Not Backing Down Over a Trademark Dispute With Nike

Benkabbou Law Firm — Thu, 17 Mar 2022 09:00:04 +0000

Background

Is this small business name too similar to Nike’s famous slogan?

JUST DO IT vs. JUST SUCC IT

Andrea Galbreath created an LLC using the name, Just Succ It, in July 2020 for her succulent business. In the years since she launched the shop, Andrea has expanded her products to include custom planters, gift boxes, and succulent-themed novelty items with phrases inspired by the shop’s name.

After seeing another online store copy the name she filed to trademark JUST SUCC IT in April 2021. Then on Jan. 4, the trademark was published. The mark is intended to be used for “on-line retail store services featuring clothing, novelty items, home decor, plants and a wide variety of goods of others”.

The Dispute:

Soon after publishing her trademark, Galbreath received a notice from the United States Patent and Trademark Office (USPTO) that Nike had filed an opposition notice because of the name’s similarity to Nike’s “Just Do It” slogan.

Galbreath argues that no one would consider her small business to be similar to Nike. In addition, she states that when people hear ‘Just Succ It’ they’re not thinking of the word ‘do.’

Galbreath said that fighting the opposition will be prohibitively expensive. She is still trying to figure out a strategy and plans to keep using the name for her business in the meantime. She has filed for an extension and has turned to TikTok to gain support. Her first video about her plight has 471,000 views. Her follow-up video garnered 2.1 million views.

In order for Nike to succeed they would need to prove that consumers would likely confuse Galbreath’s “Just Succ It’ branding with their “Just Do It” trademark.

They would also need to consider whether Galbreath intended to create an association with the famous mark and if there is an actual association between the mark or trade name and the famous mark.

What Should You Do If Your Trademark Application is Opposed?

After your trademark application has been reviewed and approved by an examining attorney, the mark will be published in the Original Gazette for opposition. During this thirty-day period, anyone with an interest in the proceeding can oppose the trademark application and attempt to stop the trademark from being registered.

If a notice of opposition has been filed against your trademark application, you must file an answer within 30 days. If you fail to respond then the Trademark Trial & Appeal Board (TTAB) will issue a Default Judgment sustaining the opposition and refusing the registration of the opposed application.

Once your answer is filed, the TTAB will set a trial calendar with the deadlines for each stage of the opposition proceeding. At this point, it’s recommended that you hire a trademark attorney. Filing a response and representing yourself as a trademark owner (or applicant) before the TTAB is complex.

When your attorney prepares your case for the trademark opposition proceedings, the objective will be to gather evidence that supports your case and which the opposing party may or may not be ordered to disclose for discovery. During the proceedings themselves, each side will present their points in briefs as well as optional oral arguments.

The TTAB will then deliberate. Generally, it takes several months for them to do so. At the end of the deliberation period, they will issue a decision. If they decide to reject your application, you can appeal to Federal or district courts with jurisdiction over the trademark process.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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Nike Requests NFTs To Be Destroyed In This Ongoing Trademark Infringement Case

Benkabbou Law Firm — Thu, 10 Mar 2022 09:00:48 +0000

NFTs present new opportunities for businesses to engage new audiences and grow their brands. Yet, there are potential risks that trademark attorneys and business owners need to be aware of in order to protect intellectual property. Nike is suing StockX for trademark infringement, unfair competition, trademark dilution, injury to business reputation.

Background

While NFTs were originally created to represent art, GIFs, and videos they are now used for tangible items including designer sneakers and real estate. In essence, they can be used to represent ownership of any unique asset, like a deed for an item in the digital or physical realm.

Although they’ve been around since 2014, NFTs are becoming increasingly popular. In fact, a staggering $22 billion was spent on NFTs in 2021, up from $100 million in 2020.

One business that has taken advantage of NFTs is StockX, an online marketplace where you can buy, place a bid on, or sell products like sneakers, apparel, electronics, and collectibles. In addition, StockX recently introduced Vault NFTs.

According to Stock X, “Vault NFTs are digital tokens that represent ownership of physical items. Each Vault NFT is backed by a physical item held in StockX’s custody, tied directly one to one via the blockchain. Any item in the StockX Vault is “Verified Authentic”.

This means that if you buy an edition of a Vault NFT, you are the owner of the corresponding physical good which is secured and stored in StockX’s Vault.

You can trade that NFT to someone else, which will also transfer ownership of the corresponding physical good, you can hold it for any length of time, or you can redeem the item from the StockX Vault and take possession of the actual item.

All of this allows you to invest in a current culture like never before, giving you the ability to own an item without ever taking possession of the item and without ever paying shipping fees. Plus you can sell it without having to send it to us and with fewer seller fees.”

At the time of this post, StockX includes Nike and Adidas sneakers along with sports collectible cards in its Vault Marketplace.

The Dispute:

In Feb 2022 Nike Inc. filed suit against StockX due to the alleged unauthorized and infringing use of Nike’s famous marks in connection with StockX’s entry into the NFT market.

According to court documents, StockX has chosen to compete in the NFT market by “blatantly freeriding, almost exclusively, on the back of Nike’s famous trademarks and associated goodwill”.

Specifically, without Nike’s authorization or approval, StockX is “minting” NFTs that prominently use Nike’s trademarks, marketing those NFTs using Nike’s goodwill, and selling those NFTs at heavily inflated prices to unsuspecting consumers who believe or are likely to believe that those “investible digital assets” (as StockX calls them) are, in fact, authorized by Nike when they are not.

Examples of StockX’s infringing NFTs appear below.

StockX claims that its authentic Nike-branded “Vault NFTs” do no more than track ownership of a physical Nike product safely secured in its “vault.” The Vault NFT exclusively functions as a traceable digital receipt that can be traded or resold. If you purchase a StockX Vault NFT, you also have the right to exchange that NFT for the physical shoe.

Yet, the StockX website states as of February 23, 2022, that the “redemption process is not currently available,” but maybe sometime in the “near future.”

The Vault NFTs’ inflated prices and vague terms of purchase and ownership have already led to public criticism of StockX and allegations that the Vault NFTs are a scam. This could harm Nike’s reputation and the immense goodwill that Nike has amassed in its brands.

StockX’s misappropriation of Nike’s famous trademarks also deprives Nike of its exclusive right to use its marks in connection with NFTs.

Interestingly, on October 27 and 28, 2021, Nike filed applications to register its famous trademarks with the United States Patent and Trademark Office for use in connection with, inter alia, “[d]ownloadable virtual goods, namely computer programs featuring footwear,” (i.e., digital sneaker NFTs) and “[r]etail store services featuring virtual goods, namely footwear” (i.e., a digital sneaker NFT trading platform.

In addition in January 2022, Nike announced to its employees the formation of Nike Virtual Studios, a new division that will operate as an independent studio to further develop Nike’s business around virtual products and partner with its core business to deliver best-in-class Web3, metaverse, and blockchain-based experiences.

Nike has requested:

That StockX be required to deliver to Nike for destruction any and all Vault NFTs, associated footwear, digital files, packaging, printed graphics, promotional materials, business cards, signs, labels, advertisements, flyers, circulars, and any other items in any of their possession, custody, or control bearing Nike’s Asserted Marks, any marks substantially indistinguishable therefrom, confusingly similar marks.
An order granting an award of damages suffered by Nike according to proof at the time of trial;
An order that StockX account to Nike for any and all profits earned as a result of StockX’s acts in violation of Nike’s rights; and
An award of three times the amount of compensatory damages and increased profits.

This will be an interesting case to watch play out and will be a huge loss for StockX if Nike succeeds.

Takeaways

Nike is suing StockX for trademark infringement, unfair competition, trademark dilution, injury to business reputation.

What can we learn from this?

Brand owners should review their trademark protections and apply for additional trademarks if their rights don’t cover brand usage in NFTs and cryptocurrency services.
For NFT creators, it is best practice to steer clear of utilizing any trademarks you do not own.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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SONY Pictures Enters Trademark Dispute Over “Baking Bad”

Benkabbou Law Firm — Thu, 03 Mar 2022 09:00:16 +0000

It can be a challenge to obtain a trademark, especially if your mark is a spoof of an award-winning TV series. This case is a reminder that it’s best practice to ensure that your mark is not likely to cause confusion or blur the original famous mark.

Background

Since Breaking Bad debuted there have been a number of products that imitate the show and its unique name. Sony Pictures Television Inc. owns the trademark rights for the BREAKING BAD franchise which has received widespread critical acclaim and won several Emmy Awards.

Breaking Bad first debuted in 2008 by introducing Walter White as a chemistry teacher who is diagnosed with Stage III cancer. With a desire to secure his family’s financial security he chooses to cook methamphetamine (“meth”) as a way to pay for his treatment and provide financial security for his family. 

Along the way, he partnered with Jesse Pinkman and often gained assistance from con artist and lawyer, Saul Goodman. After Walt met his demise when Breaking Bad ended in 2013, the franchise expanded with the spinoff prequel series based on Saul’s life. In addition, El Camino: A Breaking Bad Movie, was released in 2019 which serves as a sequel and epilogue to the television series Breaking Bad.

With two series and a movie under its belt, it’s no surprise that Sony wants to protect its rights to the trademark BREAKING BAD.

The Dispute:

In March 2021 an application for BAKING BAD was filed by an attorney, Thomas Mihill, with the intention to use the mark for a continuing cooking show broadcast over television, satellite, audio, and video media. The client’s name has not been disclosed. 

During the mark’s review process, Sony discovered that this trademark application had been submitted and filed an opposition on December 7,  2021. 

In the notice of opposition, Sony claims that a likelihood of confusion exists. For this to be true, the marks and the goods and/or services for which they are used must be so related that consumers would mistakenly believe they come from the same source.

While BREAKING BAD and BAKING BAD are both TV shows, would consumers really mistake a cooking show for one of the most popular series ever?

Within their opposition, however, Sony points out that they have used BREAKING BAD within the food and beverage category. These ventures include Heisenberg Blue Ice Vodka, Schraderbrau beer, and Los Pollos Hermanos pop-up restaurants.

With that said, it’s easy to see how the mark, BAKING BAD, may lead consumers to mistakenly think that Sony is the source of the cooking show. 

Interestingly, a separate trademark application was filed by Amy Tharpe in July 2021 for use of the mark, BAKING BAD, for a catering business and bakery. This mark has not yet been approved or opposed. 

WHAT HAPPENS NOW?

The applicant for BAKING BAD has until March 12, 2022, to respond to Sony’s opposition. Failure to do so will result in the Trademark Trial and Appeal Board (TTAB) finding in Sony’s favor.

If Mihill does decide to move forward with the trademark application a proceeding will be held before the TTAB and the case may not conclude until 2023.

Takeaway

A parody must be obvious enough that consumers will not assume the original trademark owner is connected with or approved the parody but will realize that it is a “take-off” on the original. If not, a likelihood of confusion might be demonstrated, in which case the defense of parody is defeated. 

Secondly, a parody must be clever enough to avoid the dilution of famous marks. For example, when Ilan Moskowitz filed an application to register the mark MILLENNIAL FALCON as a parody of the famous mark, MILLENNIUM FALCON, the USPTO Board affirmed that the public would believe that Moskowitz’s musical performances and recordings are sponsored and associated with LucasFilm.  Therefore, the USPTO refused the registration of the trademark to Moskowitz. 

With the case of BAKING BAD, we’ll have to wait and see how the Baking Bad creators respond.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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Snap Sues the US Patent and Trademark Office Over the Word Spectacles

Benkabbou Law Firm — Thu, 24 Feb 2022 09:00:20 +0000

Can you trademark a common word or phrase? Snap Inc., the company behind Snapchat, Spectacles, and Bitmoji is convinced that you can and has sued the US Patent and Trademark Office for rejecting their trademark application.

The Dispute:

Snap Inc. (Snap) is suing the US Patent and Trademark Office (USPTO) for rejecting its application to trademark the word SPECTACLES for its digital eyewear camera device.

The corporation has attempted to trademark this word since the release of its first generation of Spectacles in 2016. The first (and second) product were sunglasses with a single camera in the corner of the frame. They let you snap videos and photos in a unique, spherical format. You could then transfer the media to your phone and post it to Snapchat or another social network.

The current version that is available for purchase has two HD cameras that capture 3D photos and videos while four built-in microphones record immersive, high-fidelity audio.

Snap has also created an augmented reality (AR) version of Spectacles. According to Snap Inc., this version “brings augmented reality to life” and allows you to build and interact with an expansive AR ecosystem. This edition is only being released to creators so that they can experiment with the eyewear and create buzz for the product.

Snap has registered the domain spectacles.com and is determined to register SPECTACLES as a mark to prevent other digital eyewear companies from using their name.

In the complaint, Snap claims that:

The SPECTACLES name evokes a paradox between an 18th-century term for corrective eyewear and Snap’s high-tech 21st-century smart glasses.
SPECTACLES is suggestive of the camera’s purpose, to capture and share unusual, notable, or entertaining scenes (i.e. creating a spectacle).
There’s been enough media coverage to support its claim that consumers associate the word “spectacles” with the Snap brand.

Yet the USPTO has upheld the decision, restating that the word “spectacles” is a generic term for a product category.

The evidence showed that the media and product users refer to the glasses as “smart glasses” or “camera glasses”, not as spectacles. The board also noted that Spectacles’ social media accounts have an underwhelming number of followers.

Snap filed a complaint in the U.S. District Court for the Central District of California, claiming that the USPTO was wrong in denying its trademark application for its Spectacles.

Can you register a trademark for a common word?

It is possible to register a trademark for a word, yet it must distinguish your products/services from the similar goods/services of others in the marketplace. The word cannot be too generic or likely to be genuinely needed by others. It can also not be seen as conflicting with any earlier filed trademarks.

For example, the word ‘latte’ if filed in relation to a coffee or espresso product would not be approved as it is too generic. Yet, if ‘latte’ was applied for in relation to a clothing company it may be accepted on the basis that it’s not a word normally used to describe clothing.

Takeaways

Generic terms cannot receive trademark protection if they are a common name for a product or service. If you are thinking of registering a mark for a word you should consider (1) what is the class of goods or services at issue and (2) does the relevant public understand the term or designation primarily to refer to that class of goods?
It is possible to combine a generic mark with other words to have a trademark approved. For instance, in this case, they may be able to file for the trademark SNAP SPECTACLES.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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A Video Marketing Agency Survives a Dispute with Muhammad Ali Enterprises

Benkabbou Law Firm — Thu, 17 Feb 2022 09:00:56 +0000

Do you think these trademarks are too similar?

FLOAT LIKE A BUTTERFLY, STING LIKE A BEE vs. FLOAT & STING

Background

It’s been over five years since Muhammad Ali passed on, yet he will be forever regarded as one of the greatest athletes of the 20th century.

Muhammad Ali Enterprises, LLC (“Ali”) is responsible for controlling the intellectual property linked to the boxing legend and has found itself in various lawsuits regarding these rights.

Ali owns numerous trademarks associated with the boxer including RUMBLE IN THE JUNGLE, THE GREATEST OF ALL TIME, AND FLOAT LIKE A BUTTERFLY, STING LIKE A BEE for a variety of goods.

The most recent case Ali has encountered is against Chris Botvison, the founder of Ascend Concepts, who filed a trademark application for FLOAT & STING.

Dispute Against Ascend Concepts:

Chris Botvison, the founder of Ascend Concepts, named his advertising and media business FLOAT & STING after checking with a US Patent office examiner who indicated that there was no conflict in using the name.

Yet, when Botvison filed a trademark application for FLOAT & STING, Ali sent a cease and desist letter stating that the use of “Float & Sting” would infringe upon the “Float Like a Butterfly, Sting Like a Bee” trademark. They expressed that they would use any means necessary to pursue their case.

So, what would you do if Muhammad Ali Enterprises picked a fight with you?

Botvison decided that he did not want to go toe to toe with Ali. He immediately changed the name of his company to Fuel & Spark Media.

If Botvison had decided to fight for his trademark, Ali would have had to prove that the use of “Float & Sting” by the applicant is likely to confuse consumers, dilute its trademarks, or imply a false connection to the Ali brand.

Takeaways: How can a small business avoid a trademark dispute?

Chris Botvison consulted with a patent officer, yet trademarks and patents are two different types of intellectual property. Make sure to consult with a trademark attorney when filing your application.
Consider the likelihood of confusion when naming your business. Considering the global reach of the Muhammad Ali brand it’s very likely that the courts would have concluded that “Float & Sting” infringed upon the “Float Like a Butterfly, Sting Like a Bee” trademark.

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MILLENNIAL FALCON Didn’t Stand a Chance in Its Battle with Lucasfilm

Benkabbou Law Firm — Thu, 10 Feb 2022 14:00:00 +0000

It can be difficult to obtain a trademark, especially if you are attempting to parody a well-known brand. This case is a reminder that business owners should consult with a trademark lawyer to decrease the possibility of costly legal problems.

Background

Ilan Moskowitz aka Captain Contingency, filed an application to register the mark MILLENNIAL FALCON with the intent to use it for live visual and audio performances by a live musical performance group, multimedia entertainment services, and production of sound and music video recordings.

Lucasfilm Entertainment Company Ltd. LLC, opposed registration of the mark MILLENNIAL FALCON, alleging prior use and registration of the mark MILLENNIUM FALCON for “toy vehicle[s],”2 and prior use at common law for entertainment services; sound recordings; live musical concerts; films; television programs; computer and video games; comic books; books; amusement parks; toys; games; clothing.

The Dispute:

Lucasfilm alleges that registration of Moskowitz’s mark for the recited services would likely cause confusion and dilution of their famous mark, MILLENNIUM FALCON. Millennium Falcon is the name of a spaceship from the Star Wars series which was first introduced in 1977 and has grown in popularity over the past 40 years.

Since 1977, Lucasfilm has, itself or through licensees, produced, marketed, distributed, and sold a wide range of consumer products and merchandise tied to STAR WARS films, its characters and elements, including the Millennium Falcon spaceship.

Moskowitz denied the allegations and explained that he decided to use the Millennial Falcon trademark for his musical performances beginning in May 2016 as a parody of, and satirical comment on, corporate culture, and in particular the culture of the entertainment behemoth, Disney, which he claims “swallowed the entire Star Wars franchise in the preceding years.”

He “envisioned his band as a kind of privateering ship, where he played the role of captain (Captain Contingency) with a crew of like-minded musicians, all of whom identified as members of the Millennial generation and “wanted his band name to make a statement about millennial-age attitudes toward Disney and Star Wars corporate culture.”

In their review, the USPTO commented that the marks are almost identical in appearance, sound, connotation, and commercial impression (differing only in the last two letters of their respective first 9-letter words). A “millennium” is “a period of 1000 years while “Millennial,” means “of or relating to a millennium.”

Although Lucasfilm does not specify its use of the mark for musical recordings, it is clear that the MILLENNIUM FALCON spaceship is associated with its STAR WARS films, television series, musical recordings and concerts. Moskowitz, in addition to identifying musical performances in the opposed application, identifies multimedia entertainment services of musical and sound recording, production and post-production services in the fields of music, video, and films.

The USPTO Board affirmed that in this marketing environment the public will believe that Moskowitz’s musical performances and recordings are sponsored and associated with LucasFilm.

Lucasfilm also argues that Applicant adopted the MILLENNIAL FALCON mark in bad faith. Due to the fact that the timing of Moskowitz’s use of the MILLENNIAL FALCON as a mark was just a few months after release of the blockbuster film STAR WARS: The Force Awakens, which predominantly features the MILLENNIUM FALCON spaceship and was accompanied by MILLENNIUM FALCON-branded products.

The USPTO also stated that the MILLENNIUM FALCON mark is commercially very strong and enjoys a high level of recognition. So, they found a likelihood of confusion between the marks.

Due to these factors, the USPTO found that the Opposition is sustained and registration to Applicant is refused.

Takeaway

Clearly, the argument that Millennial Falcon is a parody and a satirical comment on the pop culture of Star Wars did not work out for Moskowicz.

What can we learn from this?

Even if you have a clever idea for a business name that doesn’t mean it’s trademark-able. It’s important to hire an experienced trademark attorney for your business who can conduct a comprehensive search and provide a legal opinion as to whether your trademark should be available for your use and registration. This will decrease the possibility of costly legal problems. It’s also a good idea to avoid using another brand to build your business.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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Individuals with Extraordinary Ability or Professionals with Advanced Degrees Can Now Self-Petition for a Green Card Under the National Interest Waiver

Benkabbou Law Firm — Tue, 01 Feb 2022 11:00:00 +0000

The Departments of State and Homeland Security have announced new actions to advance the course for international scholars, students, researchers, and experts to contribute to innovation and job creation efforts across America. These announcements build on the Biden Administration’s efforts to remove barriers to legal immigration.

In accordance with this action, the U.S. Citizenship and Immigration Services (USCIS) has updated policy guidance to clarify the eligibility requirements for national interest waivers for advanced degree professionals or persons of exceptional ability.

What is a National Interest Waiver?

A National Interest Waiver is a provision in the immigration law that permits an individual to apply for permanent residency in the United States, even if they are unable to meet certain requirements of the law.

This waiver was introduced for foreign nationals with extraordinary abilities and advanced degree professionals. Prior to USCIS’s latest policy, these individuals had to request that an employer file an Immigrant Petition for Alien Workers (Form I-140).

Yet, the Immigration and Nationality Act (INA) that went into effect on January 21, 2022, now provides that USCIS may waive the job offer requirement, and therefore the rigid labor certification process, if it’s in the national interest of the United States to do so. This national interest waiver essentially allows immigrants to petition for themselves, without an employer as their sponsor.

What Is Being Waived?

Normally, an EB-2 category green card process requires an employer to sponsor someone by offering a permanent job and “testing” the labor market to see if there are any qualified U.S. workers who are available instead.

This process, known as labor certification, can be lengthy and expensive. With the national interest waiver, on the other hand, United States Citizenship and Immigration Services (USCIS) decides that the person’s work is so important to our country that there’s no need to give first priority to a U.S. worker. It will thus “waive” or set aside the requirements of employer sponsorship and labor certification.

Who is Eligible for a National Interest Waiver?

Individuals seeking a national interest waiver must show evidence of an advanced degree or exceptional ability and must also meet three factors that USCIS uses to determine, in its discretion, whether it is in the national interest that USCIS waive the requirement of a job offer, and thus the labor certification.

Extraordinary Ability

A noncitizen may qualify for the exceptional ability visa classification if:

He or she has exceptional ability in the sciences, arts, or business; and
He or she will substantially benefit the national economy, cultural or educational interests, or welfare of the United States in the future.

The applicant must provide evidence that they have achieved national or international acclaim and the achievements are recognized in the field of expertise.

Advanced Degree Professionals

To meet the Advanced Degree requirement the applicant must hold a baccalaureate or foreign equivalent degree plus 5 years of post-baccalaureate, progressive work experience in the field. You must meet any other requirements specified on the labor certification as applicable.

To qualify for the national interest waiver, USCIS considers 3 factors:

The person’s proposed endeavor has both substantial merit and national importance.

The person is well-positioned to advance the proposed endeavor.

It would be beneficial to the United States to waive the job offer and thus the permanent labor certification requirements.

How Can Applicants Apply for the Waiver?

Those seeking a national interest waiver may self-petition using Form I-140, Immigrant Petition for Alien Worker along with supporting documents directly with the appropriate Immigration Service Center. You do not have to file anything with the Department of Labor. 

Processing times for national interest waivers depends on the caseload at the Immigration Service Center, which can vary greatly over time.  Current processing times are estimated by the Service Centers.

Keep in mind that USCIS offers immigration services that may help people affected by unforeseen circumstances such as natural disasters. For instance, you may request to extend a nonimmigrant stay for an individual currently in the United States.  Or you may receive an expedited replacement of lost or damaged immigration or travel documents issued by USCIS.  Visit the USCIS Special Situations page for a list of measures that can be taken to assist individuals affected by unforeseen circumstances.

Advantages of National Interest Waivers

A National Interest Waiver does not require a labor certification or a permanent job offer in the United States. This allows a greater degree of flexibility and career opportunity.
You can self-petition. That is, the form does not require the signature of anyone at a university of business.
The updated guidance serves to promote effective and efficient processing of benefits.

Our Tampa Immigration Lawyers Can Help

The national interest waiver is available immediately and qualified individuals should act as soon as possible.

If you would like to discuss your business and immigration status options including potential qualifications for the National Interest Waiver, please contact our office for a consultation. We can help assess your eligibility and assist with the process.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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2 ADVERTISING PRACTICES A SOCIAL MEDIA INFLUENCER CAN BE SUED FOR IMPLEMENTING IN THEIR PAID PROMOTIONS

Benkabbou Law Firm — Fri, 28 Jan 2022 16:49:50 +0000

What happens when an influencer promotes a brand that violates a registered trademark?

In the following example (currently pending a resolution), we will illustrate the liability exposure for influencers related to their advertising practices in paid promotions of companies who may be held liable for trademark infringement.

Background

Petunia Products, Inc. (“Petunia”), an international cosmetics company, owns the BROW BOOST® trademark, which it uses in connection with its “Billion Dollar Brows” eyebrow primer and conditioner product.

In July of 2020, Rodan & Fields, LLC (“R+F”), a cosmetics company in competition with Petunia, began to sell a product called “Brow Defining Boost.” This did not fare well with Petunia.

Dispute against R+F:

Petunia filed a complaint which alleges that the R+F’s “Brow Defining Boost” product, which performs a similar function as Petunia’s brow product, improperly utilizes their Trademark, “Brow Boost”, on product packaging and in their advertising practices.

Here are the 2 ways a social media influencer can find themselves liable for damages in their advertising practices:

1. SEO Ad Words

Petunia alleged that R+F used Google’s AdWords service to bid on search terms that use the Trademark, Brow Boost. As a result, customers who search for “Brow Boost” on Google are directed to hyperlinks for R+F’s product.

2. Social Media Hashtags

Petunia alleged that R+F’s Independent Consultants improperly and deceptively promoted their brow product by using the hashtag “#BROWBOOST,” which also causes dilution of Petunia’s social media presence.

Dispute against beauty blogger and social media influencer:

Petunia also named model and beauty influencer, Molly Sims (“Sims”), as a co-defendant in the lawsuit. Petunia accuses Sims of: (1) direct trademark infringement, (2) contributory trademark infringement, (3) false advertising, and (4) unlawful and unfair business practices.

Sims promotes various beauty products on her beauty blog, Molly Sims: Beauty Everywhere, and on her Instagram account @mollybsims. Sims allegedly published a blog post on her site to promote R+F’s product using the “Brow Boost” mark. She also provided a link to R+F’s website where the product was available for sale.

In a second blog post, Sims opens by thanking R+F for sponsoring her post and favorably reviews the product. At the end of the post, she includes a link to R+F’s website for those who want to “learn more about how to purchase Brow Defining Boost.” Petunia claims that Sims used the mark “Brow Boost” in this blog post, however, Sims denies this. The blog posts have since been removed from her website.

Petunia claims that in her sponsored blog post, Sims “promoted a product which competes with their product, sounds like their product, and is marketed through similar channels as those used by the plaintiff.”

Sims moved to dismiss Petunia’s claims against her and argued that:

liability for trademark infringement should not cover third parties, like her, that author sponsored blogs about a product;
her blog post is not likely to confuse customers about the source of the product; and
she did not use the trademark in commerce.

The Court refused to dismiss all of the claims against Sims, and only dismissed the claim for contributory trademark infringement since she was not aware of the alleged infringement. However, the Court allowed the other claims to proceed and determined that Sims’ posts were paid advertisements, and thus, “crossed from protected consumer commentary to commercial use.”

We will follow this case and see where the dust settles when it’s resolved. Although, we may never get to a court’s ruling on these specific issues if Sims and Petunia settle the matter without the Court’s intervention. Only time will tell.

Here are 2 tips for social media influencers and bloggers to mitigate some of their liability exposure on the issues raised above:

Contracts: social media influencers and bloggers should always only accept any paid advertising opportunities where iron-clad contracts are signed. The contracts should, at the minimum, require the company to take the full liability of any of their wrongdoing and represent and warrant that the company is not infringing on the intellectual property rights of others or violating any laws.
Research: social media influencers and bloggers should always do their due diligence on the companies they are associating themselves with to ensure that they are aligned with the right companies.

This case is a sobering reminder of how easy it is to get caught up in the wrong opportunity when we miss the most prudent step of any business transaction, which is to hire a business lawyer to help you finalize the advertising deals.

If you want to learn more about other legal topics, feel free to check out our Articles page on our site.

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