Nine Things You Need to Know about Trademark Registrations — Part I

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is Part I in a three-part series about federal trademark registrations.

1. Term.  The term of registration is ten (10) years. As the owner of the mark, you must ensure your trademark remains in continuous use, but you can discharge this duty by licensing someone else to use the mark. There are limited exceptions for excusable non-use, and you should contact your trademark lawyer if you will discontinue use of your trademark for any appreciable period of time to determine the implications the non-use will have on your trademark registration.

2. Product/Service Categories. Every trademark is registered in a specific category of products and/or services. If you broaden your product or service offerings to include other types of goods or services, you should contact your trademark lawyer to seek trademark protection for your expanded offerings.

3. Renewal Affidavits. Trademark registrations can last indefinitely as long as the trademark is continuously used in commerce by the owner or a licensee, and the owner files the required renewal documents on a periodic basis. These documents include:

• Fifth-Year Affidavit. In order to maintain the trademark registration, an affidavit of use must be filed in the one-year period following the fifth anniversary of the issuance of your trademark registration. Example: For a trademark issued on February 17, 2015, a renewal affidavit must be filed between February 17, 2020 and February 17, 2021.
• Optional Affidavit of Incontestability After Five Years. The USPTO provides a procedure by which the exclusive right to use a registered mark can become “incontestable” after five years of consecutive use. This procedure requires a Section 15 Affidavit of Incontestability to be filed any time after the five-year anniversary of the issuance of your trademark registration. “Incontestable” means that the registration is immune from attack on the basis of prior use and descriptiveness. Incontestable status confers valuable rights, and we advise that every trademark registrant file a Section 15 Affidavit of Incontestability.
• Ten-Year Affidavits. The registration must also be renewed between the ninth and tenth year of each ten-year term following registration.
• Six-Month Grace Period. For each renewal period, there is a six-month grace period following the end of the term, although an additional fee must be paid for a renewal filed during the grace period. Continuing the example above, for a registration issued February 17, 2015, the grace period for the renewal affidavits is from February 17, 2021 to August 17, 2021.
• Fees. There are fees associated with each of the filings listed above, and these fees change from time to time. You can find out the current fee amounts by visiting http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited March 1, 2015).

Stay tuned for more on trademark registrations!

A picture is worth 1000 words – especially in injury cases

We've previously discussed how injury clients need to be cautious when posting to social media. A Florida appeals court recently showed why this is important. In Nucci v. Target Corp., the Florida Court of Appeals ruled that an injury plaintiff had to disclose over 1200 photos on her Facebook page, even though her privacy settings were set to "Friends Only".

The court rejected the argument that the "Friends Only" setting created a reasonable expectation of privacy in the photos. Target had an investigator perform surveillance on the plaintiff, and took pictures of her "carrying heavy bags, jugs of water, and doing other physical acts, suggesting that her claim of serious personal injury is suspect." The court pointed to this evidence in ruling that the photos must be turned over. The court stated:

“If a photograph is worth a thousand words, there is no better portrayal of what an individual’s life was like than those photographs the individual has chosen to share through social media before the occurrence of an accident causing injury. Such photographs are the equivalent of a “day in the life” slide show produced by the plaintiff before the existence of any motive to manipulate reality. The photographs sought here are thus powerfully relevant to the damage issues in the lawsuit. The relevance of the photographs is enhanced, because the postaccident surveillance videos of Nucci suggest that her injury claims are suspect and that she may not be an accurate reporter of her pre-accident life or of the quality of her life since then. ”

People involved in a lawsuit should pay attention to this case for a couple of reasons:

• Social media accounts are, by definition, designed to share personal information. So, that information isn't private.
• In lawsuits, corporations and insurance companies will go to great lengths to try and prove someone is a liar. Even if a plaintiff tried an activity she formerly enjoyed just one time and had problems afterwards, defense lawyers will use a photo of the activity to try and prove the plaintiff is faking.
• Context for posts is important. People usually want to present their best outward appearance to friends on social media.

This last part is crucially important. Just like in real life, most folks don't run on and on about the bad parts of their lives on social media — otherwise they would be defriended or blocked. It can be explained like this (warning: mild language):

“So the next time you’re driven to jealousy by a Facebook friend’s humblebragging about his or her awesome life, don’t forget: They’re probably embellishing it for social media, even if it’s unconsciously.

Ultimately, Facebook is a narcissistic playground where the best, the funniest, the most charming aspects of our lives are publicized and the s*&%y stuff, the boring stuff, the beige that is most of our daily grind almost never gets posted. All those walls are edited at some level and that makes them, at best, a deformed mirror image of real life or, at worst, nothing more than a fictional movie of how we want people to see us.”

If people involved in lawsuits post stuff on Facebook, defense lawyers will present small snapshots of a person's life and represent those as the average of a person's life, rather than the "best of" snapshots they really are.

We advise clients to limit posts to social media to avoid these problems during insurance claims and lawsuits.

The changing landscape of local option elections

Background

After Prohibition ended in the early 1930s, Arkansas passed a couple of initiated acts that set up the framework for counties to be wet or dry. We've plugged along with more or less of the same process for generations. You gather a certain number of signatures (now 38% of registered voters) and turn them in at least 90 days before the general election every other November. If you turn in enough total signatures to qualify for the ballot, but not enough signatures are valid, you get a few extra days to collect more signatures.

Most initiative drives wind up hiring private firms to collect the thousands of signatures necessary to make the ballot, which is often funded by a mixture of donations from private individuals and retailers with a local physical presence.

Up until 2013, there were no extra requirements for paid canvassers; the Arkansas Constitution merely requires that someone be at least 18 years old to gather signatures. State law requires that the canvasser must witness a voter signing the petition, and a notary public must witness and verify the canvasser's signature on the petition. 

If the measure passes during the November election, your newly-wet county goes through a permitting process to determine who gets to open liquor stores in the county. The number of liquor stores is determined by the total population in the county as of the last census: 1 store for every 5,000 residents.

Applicants must pay a fee of $2,000, and the ABC holds a drawing to determine which applicants get the permits. Applicants who aren't selected in the drawing have half the fee refunded.

Changing Laws

Several new laws passed in the last two years changed the process. The first change was a new paid canvasser law that requires registration of paid canvassers with the Secretary of State. The registration process requires a certain amount of training for each paid canvasser. A Pulaski County Circuit Judge struck down the new law as violating the freedom of petition provision in the Arkansas Constitution. That case is currently on appeal, and a decision is expected within the next 2–4 weeks. The stricken provision only applied to the general statewide paid canvasser law, not the virtually identical law for local option elections. I expect that if Arkansas Supreme Court declares the general paid canvasser law unconstitutional, the same result would befall the local option paid canvasser law.

Another change occurred to the Arkansas Constitution in 2014. Thankfully, it only applies to statewide elections, and requires that any insufficient petition must contain at least 75% of the signatures required to be eligible for collection of more signatures during the cure period. The practical effect will be that petition drives will need to start earlier and not rely on the cure period to collect additional signatures. This new law could affect the viability of a statewide vote in 2016 to eliminate dry counties, which failed in the November 2014 election.

Several bills have been introduced in the current legislative session that would have an effect on any successful local option election. If the bills pass in time, they will likely affect both Columbia and Saline Counties, which voted wet in the 2014 general election.

HB 1024 would change the way liquor store permits are allocated. As indicated above, the law currently allows one liquor store for every 5,000 residents in the county. The new law would change that ratio to 1 store for every 7,500 people. In the 2010 census, Saline County had about 107,000 people, and Columbia County had about 24,500 people. If the law passes, Saline County will get 14 stores instead of 21, and Columbia County will get 3 stores instead of 4. Supporters of the bill say the current figure is too low and point to Benton County, where only half the available permits are being used. Opponents of the bill believe the effect would be to limit competition and increase prices to the end consumer.

SB 151 would increase the application fee from $2,000 to $25,000. Successful applicants would receive a refund of $21,000, and unsuccessful applicants would receive a refund of $23,000. Proponents argue the bill is designed to prevent family members, business partners, and friends from stacking the application process. Opponents believe the bill would prevent many people from applying for a permit in the first place.

We'll keep updating the blog as bills are introduced that could affect local option elections. Be sure and follow us to stay current on Arkansas local option law.

The Fastest 40 Minutes in Basketball™

The Arkansas Razorbacks men's basketball team opened conference play at Georgia ranked No. 23. As fans of Hogs hoops will know, we haven't fared well on the road over the last decade. 

Last night, the Hogs won their first conference road opener in over half a decade. They did it with a strong performance in the first half by Bobby Portis, and an excellent shooting night (especially in the second half) from Alandise Harris, including a heat-check three-pointer that put the Hogs up for good. They eliminated a Georgia lead of six or seven points about halfway through the second half with a ferocious run. The announcers made reference to the fastest 40 minutes in basketball.

While searching for coverage about the game, I googled fastest 40 minutes in basketball. One of the first results to pop up was a Facebook page from Coach Mike Anderson's time at Missouri. The last post on the page was from March 8, 2011, at the end of Mizzou's regular season.

The usage of this phrase presents an interesting issue of trademark ownership. Usually, trademarks are owned by universities, not by coaches. So, had Mizzou trademarked THE FASTEST 40 MINUTES IN BASKETBALL when it hired Mike Anderson as coach, it would almost certainly not be using the mark anymore. As shown on the Facebook page, the last usage associated with Mizzou was almost 3 years ago. Under federal law, the trademark would be considered abandoned after three years of nonuse. 15 U.S.C. § 1127 ("Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."); see also Ark. Code Ann. § 4-71-201 (abandonment occurs after 2 years). So, if the University of Missouri had registered the mark THE FASTEST 40 MINUTES IN BASKETBALL and was being horsey about giving it up to a conference opponent, after three years University of Arkansas could simply take it away — just like the Hogs did 17 times against Georgia last night.

But, you might ask, what's the "takeaway" for ordinary businesses? If you want to adopt a name for your product or service that was once used in a similar fashion by someone else, you'll need to wait at least 2–3 years before adopting your new mark.

Duck fever? Try duck gumbo...

One of the passions Don has passed down to his two sons is duck hunting. Fortunately for me, I also paid attention after holiday season duck hunts when Momma Chaney was in the kitchen. As a result, I probably like to cook more than I like duck hunting — especially when hot peppers are involved.

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Duck huntin' lawyers

After opening weekend this season, we found ourselves with a couple dozen duck breasts left from a sizable group of hunters. This, my friends, is the perfect reason to make duck gumbo. Wait, you don't like duck because it's gamey? You sound like my wife. But even she had seconds and leftovers. Here's the "recipe".

Disclaimer: I've made gumbo so many times I don't follow a strict recipe, but instead work with a loose set of ingredients. The basic steps are: make a roux; fry up the Louisiana trinity; and add some broth, meat, and veggies. Artistic license is welcome. Anyway, here are the steps from my most recent batch (remember to read first and do your prep work!):

Bacon:

Cook at least a pound of bacon on a cookie sheet in the oven at 375 degrees until the fat is rendered and the bacon is pretty crispy. The bacon grease will pour easily out of the cookie sheet. Try not to eat all the bacon at once.

You can do this in a skillet, but the oven method yields the most grease with the least amount of burnt bacon, stirring, and cursing. Ask my Uncle Chuck what happened with his bacon at 5:30 am on Thanksgiving morning this year, and you'll know what I'm talking about.

Roux:

1/2 cup bacon grease
1/2 cup flour (wheat, rice, arrowroot, whatever your fancy, the Cajuns weren't/aren't picky)

Heat the oil in the biggest dutch oven you can find until a drop of water sizzles in the bottom. You want the heat pretty high but not full blast. Slowly stir in the flour until it's evenly mixed. You want enough flour so that the grease isn't watery, but not so much that the roux looks grainy and stacks up into little mounds; nice, small, quickly-filling tracks should follow your whisk. It will look something like this when you start:

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Keep stirring steadily as the flour darkens (you don't have a whole lot of time here to chop up the veggies for the next step, so do that before you start the roux). It will take a while, but your patience will be rewarded. The darker the roux, the richer the flavor. A good friend once told me that a good gumbo roux should be the color of a dirty penny; I've also heard comparisons to Hershey's chocolate. Here's where I stopped:

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Once the roux is good and brown, add the veggies. I usually add:

1 head celery, diced (6-9 stalks, including all but the most white little ones, keeping the leafy parts)
2 large onions, diced
Enough diced peppers to provide about the same bulk as the celery (bell, jalapeno, poblano — we grow peppers and use whatever's available, and you can remove the pith to minimize heat for the faint of heart)
1 head garlic, minced

The addition veggies to roux creates what is undoubtedly my favorite smell in the entire world. You get something that looks like this:

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Cook the veggies for a little bit, stirring regularly to keep the bottom from sticking. Once the onions start to turn clear, add some liquid to the party. I usually use a quart of chicken or beef broth plus enough beer/water to come most of the way up the pan, with the understanding that I'll cook a lot of the water out over the next couple of hours. It looks like this:

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Once you've added the liquid, make sure to stir well to dissolve all the nicely browned flour.

The next step, usually, is to poach some form of meat. Heat the broth until it's boiling and toss some meat in. You can use whatever you have on hand. I've used sausage, bacon, chicken, turkey, duck, crab, oysters, shrimp, redfish, venison, and beef in gumbo, and I'm probably missing a few. Traditionally gumbo was a melting pot type of dish. I usually don't add seafood until the gumbo's almost done, but you do want to get other types of meat cooked at this step while the gumbo is a thin broth. Below are photos of poaching chicken and duck:

This gumbo has about 3 pounds of chicken and about 4 pounds of duck breasts. I like to shred chicken into long, thin strips, which has a similar visual appearance to using crab in gumbo. The duck I dice finely, as we shoot our own duck and the only one who likes steel shot in gumbo is your dentist.

One of the things I remember from being a kid is a catfish restaurant named Kreg's. I once heard the secret ingredient was the catfish, which was rinsed in ice water four times before being breaded and fried. Whatever they did the catfish was great.

I almost always process duck at least twice to remove the gamey flavor that keeps my wife from eating it (you would think an oysterman's granddaughter would like duck). For instance, when I grill duck I'll slice it first, brine the slices 4 times in cold water for about 10-15 minutes apiece, and then wrap in bacon and a pepper slice. That process provides a beefy but not gamey taste.

When cooking duck in gumbo, I brine whole breasts several times before I poach them. Something I recently started doing is frying the finely diced, poached duck in bacon grease after I poach it. It gives the small pieces of duck great texture and helps with the gamey flavor. My wife was impressed at this batch of gumbo.

Once you've got your meat chopped up and added back to the broth, it's time to add a large can (28 oz or so) of whole peeled tomatoes, a large can (same size) of diced tomatoes, and a tablespoon or two of tomato paste. For spices, I usually add a couple of bay leaves, a palmful each of oregano and thyme, a generous shake of cayenne pepper, about 1/8 cup of Worchestershire sauce, and a generous grind out of a pepper mill (I add salt at the end, since you're cooking off a bunch of water during the process). I might add some paprika for color. This is all to taste; I quit measuring ingredients for gumbo as a teenager, and instead tried to make it taste like the kind Momma made out of the Southern Living cookbook.

Once you add all this stuff, you'll get to a point where the pot's almost full. If it's not, add some water until it looks like this:

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Simmer the gumbo down a long while over very low heat. Go watch a quarter of a football game, train the new puppy, take a walk with the kids. The longer, the better.

Once it's getting close to time to eat, you can add a pound or two of okra if you like, although one of my northern Louisiana friends complains about that (Kendal also uses roux from a jar, so there's a credibility issue to consider). If you're using seafood, now's the time to add it as well. You want to start your rice and cornbread about this time as well so everything's done at the same time. You'll get a nice, thick, soupy result that looks like this:

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We serve our gumbo with rice and cornbread. Here's the finished product:

Duck hunting is one of my favorite ways to enjoy the outdoors — but I find cooking gumbo from the result of the hunt even more relaxing. I hope you enjoy it as much as I do. Cheers.