Business and Tax Lawyer Blog

Recently, The North Face Apparel Corp. initiated a trademark infringement claim against The South Butt, LLC. The North Face is an international clothing and outdoor equipment company. The South Butt is based in Missouri and also markets a number of T-shirts and a jacket displaying the logo, which resembles that of The North Face because both marks use a similar font and display a similar "rainbow graphic." However, the graphic in the South Butt mark is rotated 180 degrees to appear upside down and is positioned to the left of the name instead of the right, as it is with The North Face. South Face has also adopted the slogan "Never stop relaxing," which may be found similar to The North Face's slogan, "Never stop exploring."

The company's founder is a student at the University of Missouri and is said to have created South Butt as a parody of "all the people who mindlessly wear North Face gear because everyone else they know wears it." South Butt clothing is sold exclusively at a local pharmacy in Missouri.

In its Complaint, The North Face alleged that the South Butt mark is confusingly similar to its own mark and that the company has taken advantage of The North Face's reputation and consumer good-will in selling merchandise with the similar mark. South Butt maintains its products are not affiliated with The North Face.

To succeed in a claim of trademark infringement, The North Face will have to show the South Butt mark confused consumers about the source of the products' origin. So far the case does not look good for South Face because a Federal District Judge stated he "did not find it implausible that the marks cannot cause a likelihood of confusion," and denied the defendant's motion to dismiss.

You may have heard it is possible to circumvent the legal process and obtain a patent or a copyright with a postage stamp. Myth. The "poor man's patent" allegedly involves mailing a description of an invention to yourself or someone else. According to the myth, the postmarked date provides the date of the invention thereby granting superior rights to the "patent holder." However, this only proves a letter was sent on a certain date, not the contents of the letter. More importantly though, patent protection only comes from filing a federal patent application with the USPTO and is based on whether an invention is novel, useful, and non obvious and whether the inventor was, in fact, first to reduce it to use.

Along the same lines, the "poor man's copyright" is equally useless. It is based on the same principle, that sending your work to yourself through the mail somehow grants protection. Similarly, this only proves a letter was sent on a certain date and fails prove the contents of the letter. There is nothing to prevent an unscrupulous practitioner from mailing a self-addressed unsealed letter and inserting the potential work at a later time. Also, the fact that material is sent through the mail does not show the work is original, which is an important requirement for copyright protection.

For more information about protecting your works, contact an intellectual property attorney to arrange a consultation.

Turning an idea into reality, whether it's for a novel product or a unique business venture, may involve pitching to a firm with greater resources. Through this process, you can be exposed to serious risks. For example, the potential developer might misappropriate your secret by selling it to one of your competitors or may even begin manufacturing and marketing your invention as if it were their own. Because of this, it is necessary to first enter into a confidentiality agreement.

A confidentiality agreement is also known as a non-disclosure agreement and maintains the ownership of the information by preventing the recipient from disclosing valuable secrets or using them without authorization. The agreement works by providing the disclosing party with legal and/or equitable remedies. In the case of a breach, the disclosing party can sue for monetary damages or file for an injunction.

The specific terms of confidentially agreements vary, but usually address exactly what information is and is not intended to be confidential, how the receiving party may use the confidential information, and a time period for which confidentiality must be maintained.

If you are considering disclosing proprietary information to a developer or investor, it will be wise to first contact an attorney and discuss how a confidentially agreement can protect your secrets.

Hotel heiress Leona Helmsley is perhaps the most famous example of a person remembering a favorite pet in her will with a twelve million dollar trust fund, but Florida along with forty-one other states and the District of Columbia currently have laws that specifically allow pet owners to create trusts for the care of their pets after the owner passes on.

For the average Florida resident, planning for the care of your pet in your estate does not have to be complex. A trust along with simple instructions in your will can suffice, or you can be more explicit as to who the trustee will be, who the caretaker will be, and what will happen to any leftover funds after the animal passes. For those with large estates to consider, a lawyer can draw up a custom pet trust that fits within the guidelines of Florida's estate laws.

A pet trust can be funded through a will or while you are still living. Funding with a will is perhaps the easiest and cheapest, but creating a trust while you are alive would provide support for your pet should you become incapacitated. It is also important to consider who should take care of the pet in the immediate aftermath of your death and before the will is read. If you live alone, consider carrying a card in your wallet that lists your pets and some simple emergency instructions should you die or become incapacitated unexpectedly.

Another option to provide for your pet is to leave the pet and a bequest to someone else in your will. Or, you can look for a veterinarian with a continuing care program; they can house and care for your pet or find it a new, loving home after you are gone. Find out more options for estate planning that includes your best friend at Caring For Fido After You're Gone.

If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with estate planning, please contact Wood, Atter & Wolf for estate planning legal counsel.

The latest efforts in patent law reform have yielded results in the form of tentative legislation in the Senate.

Until now, the most recent patent law revison was a bill in the House of Representatives in 2007, which ultimately stalled because opposing industry leaders could not agree on damages to be paid in the case of infringement suits. The current proposed legislation eliminates this conflict. Instead of determining an amount for fees or allowable damages in lawsuits, the committee plans to empower the Patent Office with that task. In this manner, the Patent Office will act as a "gatekeeper," with the power to adjust fees and lawsuit damage amounts depending on the importance of the subject matter. For example, if a drug company has developed a new treatment that is highly important, the patent judge may allow that company to collect more damages in an infringement suit.

Hopefully these new ideas will pass both the Senate and the House and become law. It seems reasonable that the Patent Office is in the best position to determine fees and damages. Also, judges allowing more damages for more important inventions will encourage innovation in those areas.

For more information regarding patents, contact a patent attorney to set up a consultation.

Recently, the Small Business Administration has proposed a new rule pertaining to the Business Development Program, which is intended to help underrepresented and disadvantaged small businesses obtain more opportunities to compete for federal contracts.

A study by the SBA found that women-owned small businesses in particular were unequally represented in 83 industries such as software publishing and wireless telecommunications carriers. Under the new rule, certain government contracts will be set-aside for WOSBs.

Under this proposed plan, businesses must first be certified to be eligible to compete for the set-aside contracts. To be certified, a business must be more than half owned by women and must be primarily managed by women. Also, the new rule has abolished the requirement that businesses demonstrate past discrimination to become certified. In addition, WOSBs will be able to receive certification from a third party or may self certify.

Law makers are accepting public comments on the proposed ruled until May 3, 2010 either at this web address or by mail to Dean Koppel, Assistant Director, Office of Policy and Research, Office of Government Contracting, U.S. Small Business Administration, 409 3^rd St. SW, Washington, D.C 204156, reference RIN 3245-AG06.

Ben Franklin may have been overly optimistic for the Internal Revenue Service when he said that the only two certainties in life are death and taxes. For many people, avoiding their tax responsibility is an art form. From offshore accounts, to hiding income, to simply not paying the bill, the following six people have made the tax evasion hall of fame.

Walter Anderson

This telecom entrepreneur was at the center of the largest tax evasion case in United States history. A 2005 probe revealed that Anderson had used an elaborate network of offshore companies to hide money from the IRS. In the end he was found to owe $200 million to the government, and was ordered to pay $400 million after pleading guilty to the charges against him.

Sinbad

Celebrity and comedian Sinbad reportedly filed federal income tax returns every year between 1998 and 2006, but never actually sent in the money he owed on the returns. His total delinquent tax bill is $8.5 million, which may be hard for the IRS to collect, since Sinbad's 2009 bankruptcy filing reveals that he has a negative net worth.

Dionne Warwick

The California Franchise Tax Board has named Ms. Warwick one of the worst tax debtors in California. She reportedly owes $2.67 million to the state of California. She has apparently not been prosecuted, and sources report that she is in the process of paying what she owes.

OJ Simpson

Simpson is perhaps better known for more serious charges than tax evasion, but he has been accused by the state of California of owing the state $1.44 million in unpaid taxes, which he tried to avoid by moving to Florida.

Marc Anthony

Latino singer Anthony failed to pay his taxes from 2000 to 2004, saying that he had hired a firm to handle his finances and was unaware that he owed $2.5 million in taxes to the federal government. The firm pleaded guilty to tax felonies and was punished; Anthony paid his tax bill and was not prosecuted.

Leona Helmsley

In 1989 this billionaire hotelier was charged with one count of conspiracy to defraud the United States, three counts of tax evasion, three counts of filing false personal tax returns, sixteen counts of assisting in the filing of false corporate and partnership tax returns, and ten counts of mail fraud, according to Wikipedia. She was sentenced to sixteen years in prison but only served 19 months behind bars and two years on house arrest.

Read about some other top tax dodgers at The 12 Most Notorious Tax Evaders of All-Time.

If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with tax planning, please contact Wood, Atter & Wolf for tax planning legal counsel.

Recently, the popular internet search engine, Google, was awarded a design patent. Soon afterward critics emerged, touting that Google had abused the patent system. Such critics may not be familiar with the fine distinctions between design and utility patents. Whereas a utility patent protects an invention's function, a design patent protects the "ornamental design." A design patent's protection is narrower than that of a utility patent. For example, Google's ornamental design consists of the arrangement of search buttons and the text input bar. This patent prohibits others from creating websites that appear "substantially similar" to the Google layout, but does not prevent anyone from merely creating websites with a similar function or with a clean appearance.

The only requirements for a design patent is that the design is new, original, and is not functional. Google's layout certainly seems new and original when compared to the layouts of other search engines like Yahoo, Excite, or Webcrawler. Finally, the layout does not serve a function; it is merely aesthetic.

Design patents can be particularly valuable in protecting ornamental expression. For more information about design or utility patents, contact a competent patent attorney.

What's in a brand? This chart claims Pepsi has changed its logo its multiple times over the past decades. However, both Pepsi and its competitor Coca-Cola have changed their logos over time. With that said, is a consistent, "timeless" logo stronger? Or is it better to be dynamic and change with the times?

On one hand, rebranding benefits a product or company by increasing its presence in the market. However, a changing logo gives off the impression that the company lacks confidence. "The first choice was wrong, let's try something else." Further, rebranding by a large, widely recognized corporation may open the door to criticism and parody.

In some cases, an altered image can even evoke consumer outrage. For example. Tropicana tried out a new look for its orange juice containers. The new image was sleek and omitted the familiar orange punctured by a straw. Shortly after Tropicana revealed the new packaging and logo, they received overwhelming negative feedback calling the new look ugly and describing it as looking like a "generic bargain brand."

Choosing a trademark or logo is important. It is crucial to develop a mark that is truly representative of the product or service. It is equally important to develop a logo that will transverse through time and will be easily recognized throughout the market

That's right, removing a UPC can amount to trademark infringement in some instances. Such was the case between retailer CVS and luxury fragrance company, Zino Davidoff. Davidoff packages and distributes luxury products like the Cool Water fragrance, which is preferably placed in similar high-end luxury retail outlets.

In order to maintain high quality and prevent counterfeiting, Davidoff uses a unique UPC with its products. The barcodes contain information such as the ingredients of the product, where it was made, and information about the product's line of distribution. This way, Davidoff is able to easily determine where all its products are in the event of a merchandise recall due to defects.

Davidoff discovered that CVS was selling its merchandise with the barcodes removed and brought a lawsuit for trademark infringement. The matter ended up in the United States Court of Appeal, which ruled in favor of Davidoff. The Court did not accept CVS's argument, that the goods being sold were genuine products, but rather held that removing Davidoff's unique barcodes would "subvert [a] quality control measure," reducing the value of the company's trademark as well as altering the distinctive packaging.

What this case means is that retailers should think twice before altering the appearance of a vendor's merchandise. Additionally, manufacturers now have greater trademark protection. For more information about how a trademark could protect your business, product, or service, get in touch with a trademark attorney to arrange a consultation.

Most inventors are probably aware of patent application and maintenance fees. In order to keep a patent legally active, maintenance fees are required 3, 7, and 11 years after issuance of the patent and vary in amount depending on the entity filing classification. Although the maintenance payments seem steep, reviving an expired patent is even more costly. For example, in addition to paying the most recent maintenance fee, a petition and a revival surcharge is required to have the patent reinstated. The surcharge is either $ 700.00 for an unavoidable failure to pay the maintenance fee or $1,640.00 for an unintentional failure. Furthermore, if more than two years lapse after the patent's expiration, it can only be reinstated in the case of an unavoidable failure.

Additionally, before the Patent Office will accept the delinquent maintenance fees and surcharges amounts, a petition must adequately explain the reasons for the delay. The petition must allege specific facts as to why the delay in payment was either unintentional or unavoidable. For example, an unavoidable delay requires the petitioner to list the steps he or she took to ensure timely payment. Furthermore, it must demonstrate there was no additional delay after discovery of the expired payment. Though unavoidable failure to pay cost less to revive, the standard of proof is more difficult to meet and is thus rarely granted.

If you currently own a patent or are thinking of obtaining one, contact a skilled patent attorney to learn more about the various fee and requirements in order not to miss any important deadlines.

Earlier this month, Walter Frederick Morrison, the inventor of the modern-day Frisbee passed away at the age of 90. The Frisbee has had an interesting history and did not always consist of the same sleek, plastic, far flying device as it does today. Morrison's earliest versions of the Frisbee consisted of a popcorn lid and later a cake pan tossed back and forth between friends in 1937.

After learning about aeronautics as a fighter pilot in World War II and then becoming a carpenter, Morrison took a more aerodynamic route and designed the plastic molded Pluto Platter. The Pluto Platter flew further and more accurately than previous models due to its lighter construction and aerodynamic design. Wham-O purchased the production and manufacturing rights to Morrison's Pluto Platter in 1957, thereafter renaming it Frisbee.

The company's owner barrowed that name from college students who had been tossing empty Frisbie Pie Co. pie tins in the same manner as a Pluto Platter. The name Frisbee was trademarked with the alternate spelling to avoid trademark infringement lawsuits , and the device was also patented. Finally, Wham-O began manufacturing and marketing Frisbees, which were extremely popular due to the national fascination with flying saucers and UFOs. Morrison's story is a great example of how one person's idea can emerge into one of the world's most popular toys. Today, people all across the world enjoy the flying disc, no matter whether it is through a tossing it back and forth or through a game of Ultimate Frisbee or Frisbee Golf.

In the wake of the New Orleans Saints' recent Super Bowl victory, a new battle has begun. This intellectual property contest will take place in the courtroom instead of on the football field, however, and involves two athletic apparel producers and the phrase "Finish Strong."

Finish Strong, LLC, claims that Reebok International Ltd. is infringing on its trademark by illegally using the phrase in a line of T-shirts (pictured here) that promote the Super Bowl victors and proclaim, "We Finish Strong! We Are Saints." Trademark infringement exists when one party has a registered trademark and another party uses a similar mark with products in such a way that consumers are confused as to the products' origin. Finish Strong, for example, may argue that Reebok's use of the phrase on T-shirts may lead customers to believe the shirts are distributed by Finish Strong instead of Reebok. A suit filed in the United States District Court for the Northern District of Illinois on February 25th demands Reebok to stop using the phrase on merchandise. The suit also requests all profits from shirt sales plus other damages.

Finish Strong registered the trademark with the United States Patent and Trademark Office in 1998 and markets various athletic products bearing the phrase.

During the 2009 football season, Saints' quarterback Drew Brees used the slogan to motivate teammates before games. Brees also sold T-shirts with the phrase for the Brees Dream Foundation, a charity supporting cancer research and providing for children in need. He is not a party to the lawsuit, however, because his use of the phrase is pursuant to a licensing agreement and therefore legal.

At this point, it is unclear how the conflict will turn out. Reebok has not legally responded to the claim, but has remarked that it did not know about the company and that the phrase is used only to "describe the Saints' style of play." Whether this would be a viable defense is up to the court, however, the standard for trademark infringement is the likelihood of confusion. Stay tuned for updates.

More than eighty percent of American households use either a paid tax preparer or tax preparation software to help them file their taxes. The Internal Revenue Service (IRS) recently announced that they are proposing new registration, testing, and continuing education of tax preparers for the 2010 tax year.

The IRS believes that higher standards will serve to protect taxpayers and increase compliance with tax laws. The goal of the new program is to ensure that taxpayers receive competent, ethical service from qualified professionals.

The requirements will include:

• All paid tax return preparers will have to register with the IRS to obtain a preparer tax identification number (PTIN). They will be subject to a limited tax compliance check to qualify.

• Competency tests for all paid tax return preparers who are not attorneys, certified public accountants (CPAs) or enrolled agents.

• Continuing education for all paid tax return preparers who are not attorneys, CPAs, or enrolled agents.

• The ethical rules which currently only apply to attorneys, CPAs and enrolled agents who practice before the IRS will now be required of all paid preparers.

Read more about the new requirements for paid tax preparers at IRS Proposes New Registration, Testing and Continuing Education Requirements for Tax Return Preparers Not Already Subject to Oversight.

If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with tax planning, please contact Wood, Atter & Wolf, P.A. for tax planning legal counsel.