“Merely Descriptive” Trademarks

I am often asked by clients if they can register a trademark for what they think is a great domain name that they have been offered and which would undoubtedly drive search results to their website. Sometimes the client has already swallowed the hook and purchased the domain, perhaps for many thousands of dollars.

If it looks too good to be true, of course, it probably is. When an especially catchy domain name suddenly becomes available to you, while it is conceivable that it may be a great and rare opportunity, often the corresponding trademark has not been snapped up already because it would infringe on the rights of a prior trademark owner—sometimes a powerful one—and the seller, usually a domain broker, often in a foreign country, is banking on the buyer making an impulse purchase before considering that they may have paid a lot of money for an unusable piece of virtual property.

Other times, a domain name may be a combination of a couple of words that perfectly describe your business. I get emails all the time offering to sell me domains like “AtlantaLitigationAttorney.com” or “GeorgiaTrademarkAttorney.com.” Many of these domain names have been scooped up and packaged by domain brokers hoping to turn a quick profit.  Of course, while using a domain like this might help to drive web traffic to your business (since they do contain common search terms), it will do little to help you brand your business—who would want to be called “Internet Search Engine” when they could be called “Google,” “Bing,” or “Yahoo”? When developing a name for your business, product, or service, remember that the strongest brands are usually those that come to associate your products and services with a unique set of qualities, not just to describe or name those products. Consumers think of Bud Light, Nike, or Chanel, for example, as a complete identity, even a set of lifestyle choices, not just the name of a product or company.

So I can’t register a descriptive name as a trademark?

Well, sometimes you can. But unless you have already been using and have become widely and exclusively known by a descriptive mark for at least five years, even if there were nothing preventing you from registering such a name, you still won’t be able to claim exclusive rights nationwide to a “merely descriptive” name simply through local use and federal trademark registration. “California Juice Co,” and “Saratoga Juice Bar,” for example, have both registered successfully on the Supplemental Register, a secondary trademark list for “merely descriptive” marks and which provides some, though not all, of the protections of the Principal Register.

While the Supplemental Register is sometimes seen as a stepping stone to later registration on the Principal Register, there are drawbacks to putting all of your marketing eggs into a basket you don’t yet fully own.  For example, it can be difficult to prove infringement of a mark registered on the Supplemental Register. Why? Because infringement occurs when there is a likelihood that consumers will be confused as to the source of goods or services uniquely identified under a particular mark, and registration on the Supplemental Register is by its very nature an admission that the mark is not strong enough to uniquely identify (and it therefore merely describes) the products or services in question or their source… and “mere description” is not something you can protect.

Of course, there are plenty of well-known marks that began life on the Supplemental Register and then moved on: “Five Hour Energy Drink” and “Chapstick,” for example. Such marks may be re-registered in the Principal Register in five years if they have come to identify the product or service exclusively in the marketplace and have thus achieved what trademark law calls “secondary meaning”; i.e., a unique brand identification in addition to the self-evident, descriptive meaning.

How can I create a unique trademark and describe my product at the same time?

Many companies bridge the gap between completely unique marks (which take a lot of energy and marketing expenditure to associate the mark with the product or service) and “merely descriptive” marks by opting for something of a hybrid. “Tiger Energy Drink,” “Longhorn Consulting Co.,” “Falcon Performance Products,” and “Frozen Pints Craft Beer Ice Cream” are all registered marks which are highly descriptive but have arbitrary and therefore “unique” elements grafted onto the descriptive portion of the mark to create a mark that is much more easily registrable and yet still describes the product.

Working with an experienced trademark attorney at Briskin, Cross & Sanford can help you to identify the likelihood that your proposed brand can be successfully registered as a trademark and, since the Trademark Office may take a year or more ultimately to reject an application for a mark that is not registrable, can save you a great deal of time and money as you seek to launch a successful company, product, or marketing campaign.

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Next steps for Aereo in The People vs American Cable Monopolies?

Over the weekend, a letter from Aereo founder and CEO Chet Kanojia appeared on the Aereo website and to any of Aereo’s 500,000 or so customers who logged into the Aereo ap.  While ABC might have thought that it had cut off the hydra’s head after the Supreme Court ruled in its favor last week, Aereo is clearly still pursuing the case in the court of public opinion:

A little over three years ago, our team embarked on a journey to improve the consumer television experience, using technology to create a smart, cloud-based television antenna consumers could use to access live over the air broadcast television.

On Wednesday, June 25, the United States Supreme Court reversed a lower court decision in favor of Aereo, dealing a massive setback to consumers.

As a result of that decision, our case has been returned to the lower Court. We have decided to pause our operations temporarily as we consult with the court and map out our next steps. 

The cornerstone of the Supreme Court 6-3 ruling was the holding, as reported by Scotusblog, that “Aereo publicly performs copyrighted works, in violation of the Copyright Act’s Transmit Clause, when it sells its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over the air.”

If you know anything about the Copyright Act of 1976, you probably know that copyright owners are given a bundle of rights with respect to original works of authorship, among them the exclusive right to perform the copyrighted work publicly. At the heart of this case is whether Aereo, as it claimed, merely rented a small antenna and a digital DVR to each of its customers so that they could grab “free” TV signals off the air and watch them later, or whether Aereo was acting more like a cable company and actually retransmitting copyrighted broadcasts in violation of the Act.

The majority in the Supreme Court decided that it was the latter, relying on Congress’s express emendation of the Copyright Act in 1976 to encompass cable TV companies. The basis for their reasoning was the so-called “transmit” clause, which maintains that the exclusive right to “perform” a work covered by the Copyright Act includes the exclusive right to “transmit or otherwise communicate a performance . . . of the work . . . to the public, by means of any device or process, whether the members of the public capable of receiving the performance . . . receive it in the same place or in separate places and at the same time or at different times.”

Dissenting, Justice Scalia filed an opinion joined by Justices Thomas and Alito expressing the belief that Aereo does not “perform” because Aereo’s subscribers determine their own programming selections just as a copy shop serves consumers by providing machines capable of copying anything that the consumer brings in to copy, whether it is subject to copyright or not, and it would be wrong to blame the technology for the fact that it is capable of facilitating law-breaking uses (is anyone thinking of handguns here?).

Scalia goes on to criticize the Court’s holding as stitching together a few fragments of legislative history and lacking solid foundation:

“What we have before us must be considered a ‘loophole’ in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude ‘looks-like-cable-TV’ solution the Court invents today.”

While the Supreme Court ruling may appear to have ended the two-year legal battle between ABC and the feisty tech start-up, Aereo, although it originally said that there was no “plan B,” now claims that while it may be down, it is not out. As Forbes contributor Mark Rogowsky notes, Aereo “didn’t have time to seek changes to federal law. Instead, it took the path of an Uber or AirBnB: operate in a legal grey area and hope the law moves with you or affirms your actions. Unlike those other companies, however, Aereo faced big national entities who could take the matter before the ultimate Court in the land.”

While Fox and the big broadcasters may be delighted with the ruling for the time being (Fox is currently suing Dish Network in a similar case involving its Dish Anywhere app, a case that is up before the Ninth Circuit Court of Appeals next month), the blogosphere is already alight with Aereo alternatives, and it may well be that, having plucked a single dandelion head, ABC’s efforts to put down one upstart in the popular rebellion against astronomical cable fees will merely spread the seeds of innovation beyond even the reach of the large cable monopolies’ power to control.

The Fair Labor Standards Act: A Primer

The Fair Labor Standards Act (FLSA) is a federal law that governs minimum wage and overtime, record keeping, and youth employment laws.

Since July, 2009, the federal minimum wage for “covered,” “non-exempt” workers has been $7.25 per hour.  In addition, unless they are “exempt employees,” workers covered by the Act must receive overtime pay equal to at least time-and-a-half for hours worked in excess of 40 in a workweek.  Kids younger than 14 can only usually be employed by their parents, as actors or performers, as casual babysitters, or delivering newspapers.  Older kids have fewer restrictions, but are still usually restricted as to hours and prevented from working in certain hazardous occupations.  Employers of non-exempt workers are generally required to keep accurate (though not particularly extensive) records containing identifying information about the employee and data about the hours worked and the wages earned.

Sound simple?

If only it were.

Let’s start with a short quiz.

  • How many employees does a company have to have before it is required to offer health care under the Affordable Care Act?

If you said 50, you would be correct, for the time being anyway.

  • How many employees do you have to have to be liable for Title VII discrimination based on race, color, religion, sex (including pregnancy), national origin, age (40 or older), disability or genetic information?

Are you up on your anti-discrimination law?  If you said at least 15, you are probably right (though the Immigration Reform and Control Act of 1986 (IRCA) prohibits discrimination on the basis of national origin by smaller employers with 4 to 14 employees).

Ok, let’s get back to the FLSA.

  • How many employees do you have to have to be subject to the minimum wage and overtime, recordkeeping, and youth employment laws of the FLSA?

50?  No.

15?  No again.

Well, it’s a trick question, really.  The answer is that it really doesn’t matter how many employees you have.  All you have to be to be subject to the FLSA is to be engaged in a “covered enterprise.”

  • So, what’s a covered enterprise?

One that has at least 500,000k in annual revenue; OR one that runs a hospital, old-age home, home caring for the sick or mentally ill or a school; OR one that carries out the work of a public agency.

At this point you may be asking yourself why, under this definition of a covered enterprise, are minimum wage and the rest of the FLSA requirements are such a big deal?

Oh, yes… even if your business is not a “covered enterprise,” your employees will be likely still subject to the FLSA if they are (1) engaged in interstate commerce or in the production of goods for interstate commerce, or in any closely-related process or occupation directly essential to such production; (2) if they work in communications or transportation; regularly use the mails, telephones, or telegraph for interstate communication, or keep records of interstate transactions; handle, ship, or receive goods moving in interstate commerce; regularly cross State lines in the course of employment; or work for independent employers who contract to do clerical, custodial, maintenance, or other work for firms engaged in interstate commerce or in the production of goods for interstate commerce.

As you probably suspected, if that’s not quite everyone, it’s certainly a fairly large segment of the 155,613,000 or so members of the US workforce.

Of course there are a few wrinkles.

You may have heard that salaried employees are exempt from the FLSA, but just because an employee is paid a salary, this does not necessarily mean the employee is automatically exempt from the requirement to pay overtime, otherwise employers could simply pay all hourly employees an equivalent weekly salary and get around the law.

In fact, exemption from the wage and hour laws is only gained under one of these specific exemptions, each of which requires a salary of at least $455 per week :

  • Executive Exemption (requires that the employee be engaged primarily in managing the business or a business subdivision, directing at least two full-time employees and have authority to hire and fire or at least recommend hiring and firing).
  • Administrative Exemption  (requires that the employee be engaged in the performance of office or nonmanual work directly related to the business and the performance of tasks that include discretion and independent judgment in matters of significance).
  • Professional Exemption  (requires that the employee be required to use advanced knowledge,intellectual in character, requiring the consistent exercise of discretion and judgment–sometimes called the “learned professions” exemption).
  • Creative Professional Exemption  (requires that the employee be engaged in work requiring invention, imagination, originality or talent in a recognized field of artistic or creative endeavor).
  • Computer Employee Exemption  (requires that the employee be a computer systems analyst, computer programmer, software engineer or other similarly skilled worker making the equivalent of at least $27.63 an hour).
  • Outside Sales Exemption  (requires that the employee engaged in sales away from the employer’s place of business).
  • Highly Compensated Employees. (requires that the employee performs at least one other duty of an exempt employee).

So what sorts of jobs are typically non-exempt?

  • Blue collar workers, NO MATTER HOW HIGHLY PAID, in production, maintenance, construction and similar positions, trades such as carpenters, electricians, mechanics, plumbers, iron workers, craftsmen, operating engineers, longshoremen, construction workers and laborers.
  • Public Safety, police, fire, first responders, paramedics, prison officers, park rangers, EMTs, ambulance personnel, hazmat workers, parole officers, probation officers… all regardless of rank or pay.

Other frequently asked questions:

What is Georgia’s minimum wage?

  • $5.15/hour.  In fact, only Minnesota, Arkansas, Georgia and Wyoming have minimums below the federal level at the moment.

If the Federal minimum wage is $7.25/hour, does it really matter if Georgia’s minimum is $5.15/hour?

  • Generall, no.  Federal law will trump state law in most if not all cases.

What about wait staff and bar tenders?  Do they have to earn minimum wage?  Are there any other exceptions?

  • The Georgia minimum wage for tipped employees is $2.13 per hour, the same as the federal minimum wage for tipped employees. The Georgia tipped wage applies to employees like waitresses, waiters, bartenders, valets, and other service employees who earn more than $30 in tips a month, BUT they must still earn at least minimum wage for the number of hours worked.
  • “Youth Minimum Wage Program” allows Kids under 20 to be paid a special minimum wage of $4.25 per hour for the first 90 days of employment with any employer. After the first 90 days have passed (or when the employee turns 20, whichever comes first) the employee must be given a raise to the full minimum wage.
  • There are certain exceptions for which employers have to obtain special certificates from the DOL (e.g., full time student program, student learner program, certain employees with disabilities).
  • Certain nonprofits apply for permission to hire at 85% of minimum wage.
  • There is also a range of special exceptions to minimum wage, overtime, and child labor laws that relate to specific jobs or professions, some of which are exempt from some parts of the law but not other parts, e.g., Airline employees (exempt from overtime requirements); Amusement/recreational employees in national parks/forests/Wildlife Refuge System (overtime); Babysitters on a casual basis (exempt from minimum wage and overtime requirements if employed on a casual basis); companions for the elderly; certain domestic employees who live-in; firefighters working in small (less than 5 firefighters) public fire departments; local delivery drivers and driver’s helpers; motion picture theater employees; newspaper delivery (minimum wage, overtime, and child labor laws); youth employed by their parents; and a range of others.

It is also important to note that minimum wage, overtime, and child labor laws apply equally to documented and undocumented workers alike.  Not only this, but the FLSA has specific record keeping requirements that are often violated by businesses who fail to keep proper records regarding undocumented workers, subjecting the business to greater penalties for violation when they are caught.

Penalties under the FLSA may include payment of all back wages or unpaid overtime, plus an equal amount as liquidated damages, plus, frequently, attorneys’ fees and court costs.  If the secretary of labor brings suit, willful violators can be assessed a fine of up to $10,000 plus imprisonment.  Additionally, employers who violate child labor provisions can be fined $11,000 per employee, increased to $50,000 per employee for death or serious injury, and doubled when violations are willful or repeated.  Moreover, not only the company itself, but owners, officers, even supervisors can be held personally responsible. 

The bottom line is that the FLSA applies to almost everyone, its complexity means that it is frequently misunderstood, and, unlike most federal laws governing employment relationships, it applies to both large and small businesses.

If you are in any doubt as to whether or not you, as an employer, are in compliance with the FLSA (which, it has to be said, involves far more than this brief summary could possibly suggest), speak to an employment lawyer at Briskin, Cross & Sanford, LLC.

Secret Endless Editing of Published Supreme Court Opinions

Stare Decisis is one of the cornerstones of U.S jurisprudence.  Simply put, it means to “stand by things decided.” It is a touchstone of our justice system that requires courts to adhere, under many circumstances, to the principles of previous rulings.

Of course, exactly how (or whether) those previous rulings apply to each new set of facts is often a matter that rests on very slight turns of phrase that the court chooses to express its opinions and shade its intentions.

So what happens if the opinion of the court changes?  I am not talking about a new discussion, a new ruling, or a new case.  What happens if the written opinion of the court somehow… just… well… changes?

An intriguing column by John W. Dean from today’s edition of the Justia online publication Verdict discusses Harvard Law professor Richard Lazarus’ forthcoming article (and the New York Times article discussing it) which highlights the US Supreme Court’s practice of employing “secretive and dubious means” to alter its written and published opinions without public notice:

Secret Endless Editing of Published Supreme Court Opinions | John Dean | Verdict | Legal Analysis and Commentary from Justia.

How unsettling it must be to have fought your way all the way to the Supreme Court, argued your case, received a favorable ruling (or not), and then to see the “law” created by the decision shift subtly over the next days, months and even years as the “Bench Opinion” is trumped by the (potentially “corrected”) “Slip Opinion,” which remains published on the Court’s website until it is replaced by the (again potentially “corrected”) collected and printed opinions for the entire term in the U.S. Reports as much as seven years later.

But even this is not the whole story, for the U.S. Reports comes out first in paperback advance pamphlets called “Preliminary Prints,” which are themselves “corrected” again and finally bound into volumes that may span several sessions.  But wait, there’s more… the “final” bound editions contain errata sheets that may again “correct” former opinions, albeit usually only very slightly.

What does this mean for you?  Maybe not much.  But it does mean that any attorney who quotes Supreme Court precedent in a brief had better make sure he or she is not relying on a phrase or sentiment that has been “corrected out” of a subsequent generation of the opinion.

For the justice system as a whole, Dean suggests that Professor Lazarus’ study, if heeded by the Court, will help increase the institutional integrity of the court to the extent that it prompts “modest reforms” that lead to the elimination of what Dean describes as “secret editorial (and occasionally more than editorial) fixes.”

Quick, a scammer is stealing your business name: scams and rip-offs target US business owners (part 2)

We have posted recently on those legitimate-looking (and often tenuously legal, if scandalously unethical) solicitations designed to separate gullible business owners from their money, or worse. Here’s another one.

Quick, a scammer is stealing your business name!

Well, not really, but it looks like it. You receive an email that purports to be from the Asian Domain Registry, or something similar. It will start something like this:

Dear CEO:
We are a leading internet solutions company in China, and we have something urgent to confirm with you. We formally received an application on [recent date] from a company called [generic sounding Chinese company name] to
register [YOUR DOMAIN NAME.cn/ .com.cn/ .net.cn/ .in/ .tw/ .com.tw/ .com.hk/ .hk/ .vn/ .asia, or something like that] through our domain registration service.”

Your first reaction is to wonder who is trying to register a domain name containing my brand name, for what surreptitious purpose, and how can I protect myself and my valuable IP?

Fortunately the internet solutions company has thought of all that for you, as the message continues:

According to the principle in China, your company is the owner of the trademark, and our audit process permits us to keep the domain names safe for you by allowing you to register these domain names for your company during the five-day waiting period before they are released to the applicant. Please ask the responsible officer in your company to contact us as soon as possible. Thank you!

Kind regards
Mae Chen

Head Office
Registration Department Manager

Well, thank goodness for Mae Chen!  It seems all you have to do is purchase those ten domains yourself (and goodness knows what related hosting or forwarding services) and your brand will be safe!

Now, it may be that you really do need Alpharetta-Pizza.com.cnAlpharetta-Pizza.com.asia, or Alpharetta-Pizza.com.hk.  If so, you may want to drop the “delivery in 30 minutes or the pizza’s free” promotion.

If you do want to register a Chinese domain, you should check out the real China Internet Network Information Center (CNNIC) at http://www1.cnnic.cn/. CNNIC maintains lists of accredited registrars (the identities of non-approved companies, on the other hand, changes from day to day as these companies pop up and then disappear with their ill-gotten gains).

Do yourself a favor and do this before you punch in your credit card number or call up Mae Chen.

Annual Registration Deadline for Georgia Corporations and LLCs – May 31st, 2014

In Georgia, the annual filing deadline for a business entity’s “Annual Registration” with the Secretary of State is usually April 1st; however, for the past two years the Secretary of State has extended the deadline to May 31st.

The filing fee required with the filing of the Annual Registration will be $50 in most instances (i.e., if there are no prior unpaid fees), or $30.00 for nonprofit corporations.

We have included Instructions (click link) that may help guide you through the process of using their new website, which you can access here: Georgia Secretary of State Filing System.

Please note that if our Firm, or any one of our attorney’s, is currently listed as your registered agent, you should update the registered agent name to BCS Corporate Services, Inc.  This is our Firm’s subsidiary that now exclusively handles these services. This also applies to companies that currently list Penn Law Firm, P.C.

If you have any questions about Annual Registrations or have trouble with the registration process, please feel free to call our office.

If we currently represent you and you would like to request that we file the Annual Registration for you, please contact Stacy Pettefer by email at spettefer@briskinlaw.com and confirm at the same time:

(i)  the principal office address of your entity;

(ii) the name and address of your registered agent (if it is not Briskin, Cross & Sanford, LLC); and

(iii) in the case of a corporation (rather than an LLC), the names and addresses of the President/CEO, Treasurer/CFO, and Secretary.

Does My Company Need to File an Annual Registration?

Most U.S. states require registered businesses to maintain current information with that state’s office of the Secretary of State.

In Georgia, all Corporations must typically file an Annual Registration within 90 days of the filing of their Articles of Incorporation (unless the Articles were filed between October 1 and December 31, in which case the Corporation is required to file its Annual Registration the following year by the April 1st deadline).

LLCs are not required to file an Annual Registration during their first calendar year.

In short, this year (2014):

  • All LLCs and Corporations formed in (or prior to) 2013 must file an Annual Registration by May 31, 2014 (for Corporations incorporated after October 1, 2013 or LLCs organized at any time during 2013, this will be the first Annual Registration).
  • LLCs formed on or after January 1, 2014, will not have to complete an Annual Registration until April 1, 2015.

Late registrations are subject to penalty fees of $25.00, and failure to file or keep registrations current can lead to the Secretary of State changing your business’s status to “Administratively Dissolved.” An “Administratively Dissolved” corporation or company may not transact business in Georgia or use the Georgia court system but may be reinstated within a certain time period upon certain conditions and the payment of a fee (you should contact us at once if your company has been administratively dissolved).

Once you have filed your Annual Registration, the Secretary of State will immediately consider your entity to be in “Active/Compliant” status; however, although your Annual Registration is considered paid the minute you file and pay online, the online record may not update immediately and may take a day or longer to reflect your “Active/Compliant” status.

You should also file an additional Annual Registration at any time during the year (and pay the $50.00 fee) to update the information on record if it is no longer accurate; however, you cannot pay for future years, and filing more than once in a year will not change your obligation to file the following year.

Who Files the Annual Registration?

Although we serve as registered agent for many of our clients, the filing of the Annual Registration is the responsibility of the members, managers, officers, or directors of the business. This ensures that the primary purpose of the Annual Registration is served: to accurately update your business address and officers’ names and addresses and to confirm or appoint a new registered agent for the service of process.

These records are public and should only be updated by an authorized person. They may also be used in determining, among other things, which jurisdiction your business will be subject to in a court of law.

Notice

The Secretary of State typically notifies businesses of the Annual Registration deadline by sending a postcard to the business address listed in its records. Please note that some companies imitate these notices. Any notice not from the Secretary of State is a solicitation. Please feel free to contact us if you are uncertain about a notice you have received.

Other States

If you are registered to do business in more than one state, you may need to file an Annual Registration in each state in which you are registered. Also, if you are transacting business in a state with which you are not officially registered, please contact one of our attorneys, and we can assist you with coming into compliance and protecting your interests in foreign states.

About Briskin, Cross & Sanford, LLC

Briskin, Cross & Sanford, LLC is a Business, Commercial, and Technology firm that has built a full-service business practice representing privately held companies and their executives, including many start-up businesses and technology firms across North Metro Atlanta and the surrounding areas.

Fiserv brings 2,000+ jobs to Alpharetta, Technology City of the South

The City of Alpharetta announced today that Fiserv, Inc., multi-billion dollar global provider of technology solutions, has selected a new location in Alpharetta for its Atlanta-area operations.

According to Governor Nathan Deal’s announcement, “Fiserv has had a presence in Georgia for more than two decades and has become one of the largest technology employers in our state.”

“Fiserv is bringing nearly 2,000 existing jobs to Alpharetta, and the company has committed to hire a significant number of additional associates as they establish a presence in our community,” said Alpharetta Mayor David Belle Isle. “As a leading location for technology-focused businesses, we are confident that Alpharetta will be just the right fit for Fiserv, and we welcome the company and their area associates to our city.”

According to the Atlanta Business Chronicle’s TechFlash, Fiserv has more than 16,000 clients worldwide in the financial services, investment management, and retail sectors, as well as in government agencies and other areas.  The company reported revenues of $4.55 billion last year.