Florida Intellectual Property Law Blog

Hats off to Mark Reichel of The Daily Dose of IP Blog for his post regarding the U.S. Patent Office discontinuing its annual top ten patent holder list.

In the Patent Office press release, the PTO announced that it will no longer be publishing its annual ranking of the top 10 organizations obtaining the most U.S. patents in the preceeding year.  According to the press release, it is abandoning the list of top ten patent holders and "emphasizing quality over qualtity by discouraging any perception that we believe more is better." 

 About time.  I always wondered why the patent office focused so much attention on their "top ten list" as all it really did was provide those few "repeat customers" lucky enough to be in the "top ten" with bragging rights on their level of innovation.  

I wonder if the patent office's departure from this "strictly by the numbers" approach is the beginning of a new trend in the intellectual property field.  Are we finally able to look beyond the total number of patents in any defined segment before making broad generalizations based upon that number.

For example, as long as I can remember, the well known publication, Intellectual Property Today has tabulate its "Top Patent Law Firm" and "Top Trademark Law Firm" listings based EXCLUSIVELY on the number of patents and trademarks these firms obtained for their clients in any given year. 

The law firms near the top of this list invariably (like their corporate counterparts in the PTO's top ten listings) used their ranking in IP Today's top ten lists in their marketing materials. 

Perhaps such marketing efforts are persuasive--I don't know--but I welcome comments from in-house patent counsel as to what weight, if any, the IP Today annual top firm survey has on their choice of private patent or trademark counsel.

(As an aside: I am currently considering corrective laser eye surgery to eliminate my having to wear glasses and have narrowed my choice of surgeons down to a handful in the Fort Lauderdale / Miami Florida area---let me tell you...the number of eyes ZAPPED per year per doctor is not on my list of criteria!)

I am sure that rankings that go "strictly by the numbers" is the easiest and least controversial method of publishing listings of law firms and the PTO's top ten list.  But just because something is the "easiest and least controversial" does not mean that it is faultless.  From the perspective of a Florida patent attorney, I fail to see how a ranking by the numbers provides any indication of quality (as in the listings of patent law firms) or of innovation (as in the PTO's top ten listings).  

As a Florida patent attorney and the author of the Florida Intellectual Property Law Blog, I often receive press releases and news submissions relating to Florida intellectual property matters.  I received the following press release today regarding another case by Florida intellectual property attorneys Silverman Santucci, LLP concerning alleged violations of Florida trade secret law:

For immediate release by PRceptions:

Tim Allen and Touchtone Pictures Sued Over Wild Hogs Rip-Off

One week before the national release of the much publicized John Travolta road comedy, Wild Hog's, Travolta's co-star, and Hollywood funny man, Tim Allen, and Disney's Touchtone Pictures, are being sued for theft of trade secrets under Florida law. The suit is still pending.

 If South Florida screen writers Steven Battaglia and Paul Danner get their way, and the Florida courts aprove, all money generated by the movie will be deposited in a trust fund pending the outcome of the lawsuit.

 The lawsuit claims that on two occasions, first in 2000 on the set of the Touchstone movie The Crew, and then again in 2002 on the set of another Touchstone release Big Trouble starring Tim Allen, Battaglia handed copies of his work to agents and representatives of Touchtone Pictures and to one of Tim Allen's personal assistants. Writer Steven Battaglia is a well known South Florida based hair dresser who works on movie sets in the area. Paul Danner is a author/screen writer with extensive credentials as well as being a police detective in South Florida.

Florida trademark infringement lawsuits can be brought under either the Florida trademark statute (Chapter 495) or under federal law (Lanham Act) depending upon whether or not a federal trademark registration has been obtained.  If you are not sure if you or someone else has obtained a Florida trademark registration, you may want to do a search on the Florida trademark database.  Many general practitioners in Florida only occassionally see intellectual property litigation of any type, much less, Florida trademark litigation,  and are not aware of the benefits of Florida's trademark statute.

At one time, state law was seen as providing the primary venue for protection of trademarks.  All of this changed, however, when federal trademark laws were enacted by Congress.  The main federal statute is the Lanham Act and it was enacted in 1946 and amended numerous times since then.  Federal law has since provided the most extensive protection of trademarks.  However, it would be a mistake to dismiss Florida state law remedies for trademark infringement, particularly in view of the recent amendments to Florida's trademark statute.    

A U.S. District Court Judge's ruling against restaurant chain, HOOTERS, has been affirmed in a decision by the U.S. Court of Appeals for the Eleventh Circuit.

Florida District Court Judge Anne C. Conway in Orlando, Florida, ruled that the "Hooters Girl" persona is "primarily functional" and therefore not entitled to trademark protection. HI Ltd. Partnership v. Winghouse of Florida, Inc. No. 6:03-cv-116 (M.D. Fla. 2004).

Trademark attorneys for Hooters claimed that the Florida based sports bar WingHouse copied too many elements from Hooters restaurant and violated the Florida Deceptive and Unfair Trade Practices Act.

Relying on the classic elements of trademark infringement, Hooter's argued that Winghouse copied so many features unique to Hooters that customers would be confused into thinking the two companies were affiliated.

Todd Mayover, in-house intellectual property counsel for a medical device company in Florida, has an interesting post at the IPCounsel Blog entitled Intellectual Property Mediation:

"Regardless of the situation, without suggesting mediation, it will never happen. The obvious risk is that other party(s) may say no, but this would have no effect on the actual case at hand. At least the parties would know where they stand."

That being said, it is important to note that the risks of not mediating vary greatly depending upon which milestones have already passed in the litigation.

Ever wish your pay stub showed a higher salary? Well, an internet company in Tampa, Florida offers to print a novelty pay stub for $89.95 that looks genuine according to an article in Newsday. The company's novelty paycheck stubs, however, are at the center of a trademark infringement lawsuit brought in San Jose, California.

Roughly two weeks after Hurricane Katrina battered South Florida, a trademark applicant in Palm Beach Gardens, Florida, is seeking rights to the mark KATRINA BLOWS BUSH SUCKS.

Details of the application can be found on the Patent & Trademark Office Website. Simply click on status and enter serial number 78706886 and request status.

A federal lawsuit filed on December 16, 2005, alleges that publisher Simon & Schuster's front cover of "Hershey: Milton S. Hershey's Extraordinary Life of Wealth, Empire and Utopian Dreams" is in violation of the candymaker's ( Hershey Chocolate Corporation )trademark rights because the cover looks like a Hershey bar.

So much for not judging a book by its cover.

Inexperienced entrepreneurs often overlook the importance of properly securing rights to their business and product names during the frenzied pace of the start-up phase of their businesses. Unfortunately, mistakes at these early stages of choosing and protecting names can end up being very costly.

Trademark law provides the exclusive right to use a mark that serves to distinguish the goods of one person from another. A trademark typically includes a word, phrase, logo, design or even a combination of these. It is used to identify the source of a particular product. A service mark is similar to a trademark except that it is used to identify the source of services. Consumers identify trademarks with a particular quality of goods or services. Trademarks are valuable assets of a business and continuously increase in value as the products or services they represent gain brand recognition and consumer loyalty.

The Florida creater of a skateboarding move known as an "ollie" claims that he owns exclusive trademark rights to the name "ollie" and that Disney, Sega, and Ron Jon Surf Shop are infringing upon his trademark rights, according to an article in The Miami Herald.

He has retained a trademark attorney and brought suit in Broward, Florida Circuit court seeking damages of $20 million for use of the term that he claims violates his trademark in "Ollie". Gelfand owns the skateboard park Olliewood in Hollywood, Florida.