Tag Archives: Arnstein & Lehr

West Palm Partners Co-Author Daily Business Review Column on Downtown Condo Projects

Joshua M. AtlasSteveDanielsby Steven L. Daniels and Joshua M. Atlas

This was published as a column called, “Downtown West Palm Condos Compete With New Luxury Units,” on August 11, 2016, in the Daily Business Review. 

Now that the Great Recession has been officially over for several years, many new residential projects are either under construction or on the drawing boards throughout Palm Beach County, particularly in and around downtown West Palm Beach.

As a result of these new projects coming online in the immediate and not too distant future, existing condominiums are facing a different problem than they faced 10 years ago: stiffer competition from their newer and more modern neighbors for buyers. The new challenge is demanding condo associations to take a proactive approach to mitigate the impact of new luxury condos being delivered in a relatively small market. Not taking action is not an option if condo owners want to protect and grow the value of their condos by remaining competitive in the market.

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USCIS Stakeholders Meeting Report – July 2016

Arnstein & Lehr Attorney Ronald Fieldstone

Ronald R. Fieldstone

This is a follow-up to the USCIS Stakeholder Engagement held in Miami, Florida on July 28.

In attendance from USCIS were the following personnel:

  • Nicholas Colucci, Director
  • Jan Lyons, Economist
  • Lori McKenzie, Deputy
  • Julia Hanson, IPO Deputy
  • Danielle Scott, Chief Intergovernmental Affairs
  • Eddie Pearson, Division Chief
  • David Leckenby, Division Chief
  • Steve Koch, Deputy Director of Miami District Office
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TTAB Proposes First Major Set Of Rule Amendments Since 2007

photo-1445365813209-5ab6d8f397cbThe Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office hears applicant appeals from the final decisions of trademark examiners, and oppositions to trademark applications, concurrent use proceedings, and cancellation proceedings against trademark registrations.  The proceedings are held on a paper record with oral arguments by counsel.  Matters before the Board are governed by the Trademark Rules of Practice.  Motions are decided by and hearings are held before panels of three administrative law judges.  On April 4, 2016, the TTAB published in the Federal Register proposed amendments to the Rules of Practice for public comment by June 3, 2016.

The proposed amendments, if adopted, would be the first major set of rule changes since 2007.  They are intended to increase the efficiency of TTAB proceedings, adopt procedures to take advantage of technology improvements, import new discovery rules from the Federal Rules of Civil Procedure (which govern federal court practice), reflect precedential decisions of courts and the Board, alter the current deposition practice, and require electronic submission of all documents except in rare cases.  The Board intends to apply the new rules to every pending case and every new case commenced on or after the effective date of the new rules.

Electronic Filing

The Board’s ESTTA electronic filing system has been active since 2002, and electronic filings now account for over 95% of submitted documents.  Where the Board has been provided with e-mail addresses, it also communicates with the parties through e-mail for notices, orders, and decisions.  Since 2006, the entire file of a Board proceeding is available through TTABVUE, the Board’s database of electronic case files.  The proposed rules make mandatory electronic filing and e-mail notices, orders, and decisions.  Rare exceptions will be made where electronic filing of a document is not possible, but the party must petition the Director to show that ESTTA was unavailable due to technical problems or extraordinary circumstances otherwise prevented electronic filing.  The Board will also make accommodations where more serious circumstances affect its filing systems, such as the disruption to service that occurred in December 2015.

In addition to continuing to require parties to begin a proceeding by choosing from a list of the relevant grounds for opposition or cancellation, the proposed rules will require the defendant to inform the Board of any related proceedings that could be viewed as a counterclaim.  Cancellation plaintiffs would have to provide contact information, including an e-mail address, for any attorney they reasonably believe is a possible representative of the owner concerning the challenged registration.  In that way, if the Board’s notice of the cancellation proceeding is returned as undeliverable, the Board will have an alternative for locating the owner of the registration.  Attorneys that are so identified will not be considered counsel of record for the defendant unless they file a power of attorney or make an appearance in the proceeding.  The Board may also give additional notice of commencement of the proceeding by publication in the Official Gazette, along with other appropriate and available means to reach the real party in interest with notice of the proceeding.

Serving Documents

Since 2007, the Board has required the plaintiff to serve the Notice of Opposition or Petition for Cancellation on the defendant.  The proposed rules shift that responsibility back to the Board, which will provide the defendant with a link to the document in TTABVUE.  In the case of challenges to Madrid Protocol extensions of protection, the Board proposes also to service the international registration holder’s representative.

Also since 2007, parties have been encouraged to agree to serve documents on each other by electronic means.  The proposed rules will require electronic service of all Board filings and other papers (such as disclosures and discovery) that are not filed with the Board.  Nevertheless, the parties will be permitted to stipulate to other convenience and expeditious methods, such as a cloud storage file hosting service or delivery of a USB drive.  The Board will no longer provide the five additional days for responses to account for postal mail delays.  Response periods of 20 days (30 days for summary judgment motions) will run from the service date.

The Board proposes to bar service of submissions by postal mail if the party is not domiciled in the U.S. and is not represented by an attorney or other authorized representative located in the U.S.

Discovery and Pretrial Procedures

The Board proposes to adopt a new requirement from the Federal Rules of Civil Procedure that discovery requests are subject to review for “proportionality.” Parties will be allowed by stipulation to shorten discovery periods, limit the number of discovery requests, use reciprocal disclosures instead of discovery, or eliminating all discovery.  The proposed rules would also refer explicitly to the discovery of electronically stored information and tangible things.  The Board does not want to encourage burdensome and expensive e-discovery, particularly because it has a narrower scope of jurisdiction than do federal courts, and proposes to weigh heavily the burden and expense of e-discovery, while recognizing that many relevant documents are kept in electronic form.

Motions to compel initial disclosures must be filed within 30 days after the disclosure deadline.  Discovery requests must be served enough in the discovery period that responses are due and completed before the close of discovery.  An expert disclosure deadline must be set prior to the close of discovery.  Motions to compel discovery or to decide the sufficiency of responses, and motions for summary judgment, must be filed prior to the deadline for the plaintiff’s pretrial disclosures for the first testimony period, rather than the commencement of the first trial period.  The Board contemplates re-setting the pretrial disclosure deadline and testimony periods after resolving any discovery disputes, allowing time for compliance with any discovery-related orders requiring additional responses or production.  Discovery motions must show that the moving party made a good faith effort to resolve the issues.

Requests for production of documents and requests for admission will be limited to 75, the current number of interrogatories permitted.  Motions for additional interrogatories would be barred.  All parties who receive documents may serve one comprehensive request for admission on the producing party to authenticate all produced documents or specify what documents cannot be authenticated.  Any agreement by the parties about the location of a discovery deposition must be in writing.

Although many contested proceedings are quickly settled, withdrawn, or decided by default, where the parties’ interactions are contentious the Board’s Interlocutory Attorneys are encouraged to participate in the parties’ conferences, and may do so in their own discretion if they consider it useful.  The new rules would expand the circumstances under which the parties could request a conference with the Interlocutory Attorney to any circumstances where a conference would be beneficial.

Parties would have a duty throughout the discovery period and during trial to inform adverse parties if witnesses located in other countries are expected to be present in the U.S. and could be produced for deposition.

The Board’s standard protective order for confidential material, adopted in 2007, is imposed in all concurrent use, opposition, and cancellation proceedings.  Parties could stipulate to or move for alternative protective orders.  The Board further proposes to treat as non-confidential any material that cannot reasonably be considered confidential.

The proposed rules codify the Board’s practice that certain types of consented motions for extensions and suspension are granted automatically but that the Board reserves the right to require conditions to be met prior to approval.  Where paralegals act on certain matters under the designation “By the Trademark Trial and Appeal Board,” those dispositions would have the same effect as orders by the three-judge panel.  In addition, trial proceedings will be suspended if a party files a potentially case-dispositive motion. The Board would limit the number of granted extensions of the discovery period.

Pre-trial conferences for resolution of complex issues would be convened only by the Board, and only on the Board’s initiative.

Trial Procedures

The Board’s Accelerated Case Resolution System (ACR) has commonly been used to permit the parties to submit their case on cross motion for summary judgment in place of a trial record and hearing briefs with the Board resolving issues of fact that otherwise might be subject to dispute.  Parties have also used ACR to make agreements to limit discovery, shorten trial periods, stipulate to facts or admissibility of documents or other evidence, offer testimony through declarations or affidavits rather than depositions, and rely on summary judgment materials as trial evidence.  The Board proposes to codify those practices by specifically providing for such stipulations and, most importantly, by allowing a unilateral right to present trial testimony by declaration or affidavit, subject to the other party’s right to oral cross examination.

Two proposed practice changes made necessary by court decisions permit certain documents to be made of record by notice of reliance – pleaded registrations and registrations owned by any party and Internet materials.  The registrations would be made of record either by attaching them to the Notice of Opposition or Petition for Cancellation or by attaching to a notice of reliance printouts from the USPTO database showing the current status and title of the registration.  Internet materials could be submitted under notice of reliance. The notice of reliance must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. However, to curtail motions being filed on this point, failure to do so would be a curable procedural defect.  In addition, although the file history of the challenged application or registration is automatically of record in the proceeding, the proposed rules clarify that statements in affidavits or declarations in that file history are not evidence in the proceeding.

A motion to use a discovery deposition at trial must be filed with the party’s pretrial disclosure.  Adverse parties could prevent the taking of a testimony deposition or move to strike testimony presented by affidavit or declaration if the witness was not included in the pretrial disclosure.

Parties would be required to disclose if a prospective trial witness located outside the U.S. will be within the U.S. during the trial period.

Additional proposals cover technical details for filing testimony deposition transcripts, the right of the Board to grant judgment for the defendant when the plaintiff fails to submit evidence, the form for submitting evidentiary objections outside the page limit for the trial brief, evidence and reply brief rules for appeals of examiner final decisions, video conference options for hearings, automatic tolling of deadlines when no answer is filed, pleading grounds for opposition to a Madrid Protocol application, and requirements for timing and manner of filing appeals of Board decisions.

COMMENTS

A controversial change is the right to present evidence by affidavit or declaration, subject to the adverse party’s right to cross-examine.  A little-noticed but potentially useful change is the opportunity to take oral depositions of foreign witnesses traveling in the U.S. in place of the cumbersome requirement to take their testimony by written questions.  Application of the new proportionality discovery rules can be expected to spawn large numbers of motions by individuals or small companies responding to discovery by large companies, so it remains to be seen whether the Board will accomplish its plan to streamline discovery and speed up proceedings with these rules.

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“Selfie” Copyright Does Not Belong To Monkey Who Took It

420756_10150707953167792_2140268877_nWhen is a photographer not the “author” of a photograph for copyright purposes?  According to a federal judge in San Francisco, when the photographer is a monkey!

Sometime in 2011, a crested macaque monkey living on the island of Sulawesi, Indonesia, used the camera of nature photographer David Slater to take a number of self-portraits, which became famous as the “Monkey Selfies.” Slater claimed to be the author and the copyright owner of the Monkey Selfies and self-published a book through Blurb, Inc. containing copies of the photographs.  Slater’s company, Wildlife Personalities, Ltd., also claimed an authorship interest in the Monkey Selfies, through ownership of the U.K. copyright.

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What Judith Grubner is Saying About the Next Big Thing in IP Law for 2016

ILN IP Insider is starting a new series – we’re featuring interviews with ILN IP lawyers, asking them questions on the state of IP Law in 2016. These will typically be one to two-question interviews with our practitioners from around the world. Our first interview is with Arnstein & Lehr lawyer, Judith Grubner:

What’s the next big thing on the horizon for intellectual property law in 2016?

In light of In Re Tam, where the Federal Circuit just struck down as unconstitutional the non-disparagement clause in Sec. 2(a) of the Lanham Act, the US Patent and Trademark Office may soon be forced to register brand names for medical marijuana strains, currently banned under Sec. 2(a) because as federally illegal substances, marks for such goods are immoral or scandalous.

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Beware of vote and “like” buying for promotional contests

Social media sites are becoming increasingly popular for marketing a company’s goods or services. Facebook is commonly used to promote sweepstakes and contests intended to attract new customers and increase “likes.”  However, if a contest contains a popularity feature, such as a photo contest where the public can vote on which image they prefer, it is ripe to be overrun by fraudulent votes.

There are numerous businesses organized to deliver votes or “likes” for a fee to participants in such contests, even though Facebook prohibits such practices.  These companies create thousands of fake Facebook profiles and sell their votes for small amounts.  In addition, there are “vote exchanges” operating on Facebook where participants offer to vote for each other’s entries in contests.

A contest that attracts a large number of fraudulent votes is not accomplishing the company’s goal of obtaining actual new customers and is likely to anger legitimate customers who are playing fair.  Although contest rules often prohibit the use of “bots” and fraudulent activity in general, they do not usually contain specific prohibitions of vote or “like” buying or vote/like exchanges.  Detecting the fraudulent activity can be time-consuming and hit-or-miss.  There may even be entrants who are buying votes for their competitors, hoping that the company will detect those votes and disqualify the competitor!

Running a contest where the company rather than the public chooses the winner(s), using voting criteria for the judging that are specified in the contest rules, is more likely to attract legitimate customers for the company’s goods or services and legitimate fans for its Facebook or other social media pages than a straight popularity contest.  The judging criteria can be as simple as the quality of the submission and creative use of the company’s product.  Low monetary value prizes will also discourage entrants from paying for votes.  The lower the prize, the less the entrant will be willing to pay to buy votes.

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U.S. Federal Circuit Appeals Court sets standards for determining bona fide intent to use mark in commerce

iStock_000011353685_LargeA recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application was filed. Lanham Act § 1(b).

Legislation

Prior to amendment of the Lanham Act in 1988 to permit intent-to-use filings, U.S. law required proof of use in commerce at the time of filing the application.  For such use-based applications, the applicant must show a “bona fide use of a mark in the ordinary course of trade.”  Lanham Act §§ 1(a), 45.  However, an intent-to-use applicant must only have “a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” at a later date.

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EB-5 program status – observations on China’s project activity

Arnstein & Lehr Attorney Ronald Fieldstone

Ronald R. Fieldstone

Summary of Conference and Business to Beijing, China

As a follow-up to my recent March 2015 trip to China, I have several observations concerning the status of the EB-5 program and, in particular, the reaction in China with respect to same.

The good news is that the market in China still seems very robust, even with retrogression estimated to take place in May or June. There seems to be a tremendous demand for the EB-5 green card program, notwithstanding the fact that the Chinese nationals are also migrating to other countries around the world that have a much easier entry policy than the United States.

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Significant Risks Related to EB-5 Disclosure Documents

Arnstein & Lehr Attorney Ronald Fieldstone

Ronald Fieldstone

Arnstein & Lehr Miami Partner Ronald Fieldstone recently authored, “Significant Risks Related to EB-5 Disclosure Documents – Guidance Concerning Disclosure Obligations,” which was published in EB5 Investors Magazine’s 2014 Special Edition. In his article, Mr. Fieldstone focuses on some of the key disclosures required in EB-5 offerings and how to navigate the risk assessment and manner of disclosure related to such disclosures.

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Ronald Fieldstone speaks at 2014 Fall/Winter EB5 Conference


On November 17, Miami Partner Ronald Fieldstone was a guest speaker at the 2014 Fall/Winter EB5 conference. The conference covered all aspects of the EB5 Foreign Investor Visa program and marketing to foreign investors. He participated in two separate panels, Security Law Considerations and Sourcing EB5 Investors & Bridge Funding.

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