Law & Business Video

In today’s troubled economic times, companies that fall may want to declare bankruptcy. Companies with registered trademarks may want to continue to use the trademarks and not lose any value in the brands. However, protecting the trademark from the beginning is paramount – not just registration, but understanding that it is an asset that other contracts may affect and that it must be treated like any other asset in bankruptcy.

The consequence is that there may be a loss of registered trademarks otherwise. This is especially true in a scenario in which 1) a registered trademark is not listed on the asset sheet, 2) the registered trademarks are assigned to a third party not involved in the bankruptcy, and 3) there is an agreement for a creditor to have a security interest in the trademarks.

Here is a lightly-edited transcript of the video:

Several years ago, I had a client who did something that you shouldn’t do once the company went into bankruptcy.

Number one, the trademark was not actually listed on these set of assets that the company had .  All registered trademarks should be on this set of assets once a company goes into bankruptcy, whatever chapter is being filed.

Number two, once that company went into bankruptcy, the trademarks were “transferred” to the wives of the business owners.  We call that a fraudulent transfer because the wives aren’t actually running the business.

Number three, there was an agreement.  One of the creditors of the company had the ability to take the assets of any particular part of the company and, of course, sell it in order to get money back. So therefore at the end of the bankruptcy, none of the debt was discharged.

I’m coming from the other end looking at it as well, what can, what can happen if somebody senior to that particular company comes around in trademark use and calls it trademark infringement, which is exactly what happened.

In today’s tough times for economic activity, we need to keep this in mind.

Trademarks aren’t specifically mentioned in the bankruptcy code and therefore there are some special, they do work differently than other parts types of intellectual property, but we do need to still remember their assets of a company, so registered trademarks need to be listed on the asset sheet when a company files bankruptcy and, two, if those trademarks are subject to any other agreement that the company has, they’re going to be treated with the same type of property rights that any creditor would have for any other piece of property in that particular business.

Trademarks are treated specially when there’s a license agreement and you know that that’s a topic for another time. Apart from that, they’re assets of the business treat them like they’re the assets of the business and therefore if your company goes into bankruptcy during this particularly tough time, they can be adjudicated properly just like every other asset of the business.

I’m Anthony Verna, managing partner of Verna Law where we focused on IP and advertising law, but chances are you already knew that by clicking on this video. Thanks very much, and I’ll speak to you soon.

Verna Law, P.C. currently has cases in the Trademark Trial and Appeal Board, the Southern District of New York, the Eastern District of New York, the District of New Jersey, the Central District of California, and the Western District of Washington.

The Trademark Trial and Appeal Board appears to be running normally, except that the TTAB’s building itself is closed. The United States Patent and Trademark Office’s building is closed. But the USPTO is still running, accepting applications, and the TTAB general case calendars are unaffected. Oral arguments will be heard via other means.

Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting.

The Southern District of New York, Eastern District of New York, Central District of California, and District of New Jersey courthouses are open to all except those who have visited China, Italy, Iran, South Korea, and Japan but all judges have ordered their clerks to work from home. Some judges allow conference calls for discovery matters, but dispositive, substantive hearings on motions will most likely be delayed. Deadlines for drafting motions and responses will not be delayed as the filing systems are electronic.

The Western District of Washington has closed.

However, all courts have said that motions that can be decided without an oral argument will be decided. Every judge will handle the situation differently, though.

Here is a lightly edited transcript of the video blog:

I’ve been asked how the novel coronavirus has affected the intellectual property system in the United States. And, apart from the fact that I haven’t shaved since Saturday, the answer is it really hasn’t affected the system all that much.

The United States Patent and Trademark Office, the Patent Trial

Most employees are at home already. Fighting budget woes, the

So, what about the courts?

Well, federal courts are generally, closed or the judges themselves are not

But, for many of my cases, if there’s a substantive hearing,

Yes, if there’s a trial, your trial is going to be held

But, apart from that, the Patent and Trademark Office is

We can file intellectual property without a problem. And, for

America’s favorite export, that’s right, LeBron James, and

Why were they sued for trademark infringement and what does

In other words, they’re selling clothing in order to raise funds for other charities. So it’s very tricky, actually, when it comes to trademark law because, obviously, Nike and LeBron James are using this phrase in clothing. But if you go take a look at the use, the use is really on the front of the clothing, maybe on the sides, maybe on the sleeves.

And in trademark law we call that ornamental use.  Ornamental use of a phrase where people are not really expecting a trademark is not really trademark use. We have to have in clothing use of a trademark on hang tags, on the back tags maybe where consumers expect it like on a breast pocket or maybe on the back of jeans.

Those particular areas show us that, that that’s where

The other issue that I have is if I’m the plaintiff, also

The lesson here is if you’re an apparel company of any sort,

Those particular areas show that your mark is not, ornamental, if it’s just on the front, that’s going to be ornamental and therefore not a trademark.

I’m Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. Visit us vernalaw.com. See you next time.

I’m Anthony Verna, managing partner of Verna Law. But

Hey, it’s the middle of February and what does everyone say

Like, nobody says that about the middle of February, but it

There we go.

So ,what are some of the results that Verna Law has had for

We actually have recently received, our team has received

The fact remains is that there’s plenty of intellectual property for the toy

And, of course, any new toy, any new product line falls

A lot of times in today’s world, we see toy companies taking one particular product, like a plush toy, and making that a character and then taking back stories and making comic books and making books and videos.

So, all of that falls under copyright law as well. Don’t

So there’s a whole lot to think about from IP and advertising for the toy industry, and I’m thrilled to be a part of it. I am going to have very, very painful feet at the end of toy fair, but it’s just a great industry to go to. Again, I’m Anthony Verna, managing partner Verna Law. www.vernalaw.com Thank you.

Video Blog 24: Why Were the Chicago Cubs Sued for Copyright Infringement? And what does it mean for the small business going into court?

Recently, the Chicago Cubs were sued for copyright infringement.

I kind of find it weird that I’m going to be suing a

Because the Cubs retweeted a tweet that was already the

So, the author and plaintiff of the original copyright

I think it’s ridiculous as well, but it survived a motion to

Why?

The judge in the case said . . .I personally don’t know if

For those of us who have bachelor’s in computer science, we already know that that retweet doesn’t create another copy. It points to it. But I think this is the ultimate thought on intellectual property in the court system.

Judges aren’t gods, they’re people.

If a judge isn’t going to understand the situation, then you

There are multiple levels here where I think copyright

That’s really, I think, our biggest frustration as IP

So that’s what we’re really looking to do when we’re in

I’m Anthony Verna, managing partner of Verna Law. We focus

Here at Verna Law, one of our goals of 2020 is to keep

Recently we’ve had a couple phone calls with potential

The reason for this is as time has gone on, a case has gone

What happened in Alice a few years ago? The Supreme court said

And where did the Supreme court decide to get this language?

Nobody really knows, but it’s an extra speed bump for algorithmic and business

So, it requires making sure that the algorithm that is being presented in a patent application is really and truly new and novel, which is what the statute already says, but now whatever an “inventive step” still means, while we’re still not 100% sure even three or four years down the down the line after that decision, but we need to make sure that we do our patent search.

We need to make sure that we’re thorough with that search.

That’s something that we try to do very well and especially

I’m Anthony Verna, managing partner Verna Law, focusing on IP and advertising law. Visit us at vernalaw.com, click on patents and you’ll see everything that we have to do with patents.

Thanks very much.

That’s really the key there. It’s on the process. Now, a lot

It’s a color that’s so black that Spinal Tap would have

Color is technology. And in that technology, there’s a new way of creating all

Now, for the smaller business, what does that actually mean?

It means that every time there’s a new way of creating

That’s the lesson for the smaller business: when something

And other prior art, the a business has to make sure that

Here at Verna Law, we have an excellent patent agent named Wil Jacques, who has a Bachelor’s in Mechanical Engineering. I have a bachelor’s in Computer Science. Therefore, we cover all sorts of areas of technology. We look forward to hearing from you and seeing your particular technology to see if there’s a patent in there. Thank you very much.

Some statistics for 2019 are coming in in the trademark

Three quarters of trademark infringements also led to litigation,

46% of respondents said that a rebrand was a result of the

With brands filing infringement matters, what does this tell

One, the registration of a trademark is very

Two, planning matters as well. If you’re a smaller

So make sure that you’re clear as a trademark owner what your costs are going

If your mark could infringe on somebody else’s mark, maybe

Three, when you’re dealing with the budget, make sure

I’m Anthony Verna, managing partner of Verna Law, P.C, but

Hi, I’m Anthony Verna, managing partner of Verna Law, but

One of the perils of advertising law is the fact that there

Number one, if you’re not doing business in California,

If none of those apply to you, then the CCPA does not apply

You must update your privacy policies with newly required

Again, California always believes that you’re doing business

Certainly, we try to help our clients avoid any particular

Most cases settle. Most lawsuits settle. We at Verna Law, P.C. have settled most of our trademark infringement lawsuits or trademark oppositions or trademark cancellations.

Navigating Trademark Disputes: A Guide to Alternative Dispute Resolution

Trademark disputes are a common challenge in the business world, arising from conflicts over rights to specific trademarks, allegations of infringement and dilution, or trademark opposition proceedings or trademark cancellation proceedings. These disputes are not only complex but also potentially disruptive and expensive if they escalate to prolonged legal battles. Fortunately, litigation is not the sole path to resolution. Alternative dispute resolution (ADR) offers several efficient and cost-effective methods for resolving such conflicts amicably. This article explores the ADR options available for trademark disputes, highlighting their advantages and practical considerations.

Mediation is a voluntary and confidential process where a neutral third party—the mediator—helps disputing parties negotiate a resolution. The mediator assists by clarifying interests, fostering mutual understanding, and guiding the parties toward a compromise.

Advantages of Mediation:

Mediation Considerations:

In arbitration, one or more arbitrators (neutral third parties) hear the evidence and arguments from all involved parties and then make a binding decision. Arbitration can be managed through independent procedures or organized by entities like the World Intellectual Property Organization (WIPO).

Advantages of Arbitration:

Arbitration Considerations:

Expert determination appoints an independent expert to resolve specific technical or legal issues within a trademark dispute. This method relies on the expert’s specialized knowledge for a binding decision.

Advantages of Expert Determination:

Expert Determination Considerations:

Negotiation involves direct discussions between the disputing parties, either independently or through legal representatives, aiming to reach a mutually acceptable resolution without third-party intervention.

Advantages of Negotiation:

Negotiation Considerations:

While trademark disputes can be daunting, ADR offers several pathways that can lead to efficient and effective resolutions, allowing businesses to continue their operations with minimal disruption. Whether through mediation, arbitration, expert determination, or direct negotiation, these methods provide substantial benefits over traditional litigation, preserving resources and relationships. When faced with a trademark dispute, businesses should consider these alternatives as strategic solutions to protect their brand integrity and market position.

If you have any questions about your trademark dispute, please contact Verna Law, P.C. at [email protected] or call at 914-908-6757.

Here is a lightly-edited transcript of the video blog:

Right before Christmas, my wife had to pick me up from the airport and it’s not fun to go from the airport straight to my parents. Where was I? I was in Los Angeles at a mediation.

While I have the philosophical problem with a federal court ordering the parties to a private mediation, that’s what happened in this case. So let’s talk about what happens if you have a trademark infringement suit and are going to mediation.

Number one, you need to expect to be compromising on your

Number two, you need to understand the weaknesses for that

Number three, you’re also going to be sitting down with

I want to show you the strengths of the case, but I also am obligated

Number four, understand that also there’s going to be a lot

Don’t expect a whole lot of action, expect a lot of downtime

Understand your case, understand the weaknesses of your case. Expect the private mediator to talk to both sides in order to get that resolution and ultimately expect to compromise on that resolution. But during that private mediation, get the resolution and then your case will be settled and then both sides can move on with the business that that, that they’re doing. I’m Anthony Verna, managing partner of Verna Law, where we focus on IP and advertising law. Thank you.