Archive for May, 2008

The Advantages of Trademark Registration

The United States Patent and Trademark Office (“PTO”) offers two federal trademark registers – the Principal Register and the Supplemental Register. Marks may be registered on the Principal Register if they are shown to distinguish the applicant’s goods and services. Marks may be registered on the Supplemental Register if they pass the more moderate test of being “capable of distinguishing applicant’s goods or services.”

Registration on either the Principal or Supplemental Registers:

  • allows the owner of the registered mark to use the registration symbol ® to deter infringers and impress customers (who may wrongly think that ® implies some sort of government approval);
  • provides protection under §39(b) of the Lanham Act against state restrictions on use of the mark;
  • gives priority rights in registering in foreign countries according to the provisions of international treaties; and
  • places the mark on the PTO database and website at http://www.uspto.gov to serve as notice and may prevent others from adopting the same or similar mark.

Registration on the Principal Register provides the following additional advantages:

  • provides constructive notice to those who might later adopt the mark;
  • is prima facie evidence of the mark’s validity and registration as well as evidence of the registrant’s ownership and exclusive right to use the mark in commerce;
  • allows the mark owner the right to ex parte seizure of goods bearing a counterfeit mark (“a spurious mark that is identical with, or substantially indistinguishable from, a registered mark”);
  • gives the owner the right to treble damages (a multiple of actual damages) and attorneys’ fees against intentional use of a counterfeit mark, in the absence of extenuating circumstances;
  • provides a deterrent effect of severe criminal penalties for the use of counterfeit marks;
  • allows the owner to have the Bureau of Customs exclude imports bearing infringing marks; and
  • gives the owner the right to apply to have the mark declared “incontestable” (although it can still be challenged, it is the highest form of protection available) after five years on the Principal Register and compliance with certain formalities.

Registration of the mark on the Supplemental Register, while not providing the more expansive protection of a mark registered on the Principal Register, will provide the following benefits to the registrant:

  • allows the owner to file an infringement action in federal court;
  • gives the PTO the ability to cite the mark against a later application by a third party for a substantially similar mark on the Principal Register;
  • provides the owner the opportunity to have the mark registered on the Principal Register. This can be accomplished by showing that the mark has acquired “secondary meaning.” A showing of secondary meaning may be demonstrated once the mark has been in use for a period of time, usually five years.

In sum, registering your trademarks with the United States Patent Trademark Office offers many advantages and can help to protect your business assets.

For more information, please contact Carolyn E. Wright at (404) 633-9230.

Does Workers’ Compensation Cover the Willful Acts of Third Persons?

On Friday, April 25, 2008, a secretary with an Atlanta downtown law firm was shot and killed by a co-worker during lunch.  This was a tragic event that will be investigated by the authorities.  Along with her unfortunate loss, her employer will also have to address the question of whether her death is compensable under workers’ compensation.

 

The Georgia Board of WorkersCompensation examines two issues to establish whether workers’ compensation covers the willful acts of third person.  As a general rule, where an employee is free to use time for the employee’s individual affairs and an injury occurs during this time, the injury is not compensable.  However, if the employee is conducting the employer’s business during the break, the injury would be compensable.  Further, where an injury or death of an employee arises from the willful act of a co-employee or third party, the attack must be related to work in some way, rather than from personal animosity, to render the death or injury compensable.  

 

In this instance, a co-employee (who worked for a temporary agency) from the law firm’s records room approached the secretary at lunch outside at a picnic area.  After a quarrel, the co-employee shot the secretary and then killed himself.  What remains to be determined is the nature of their relationship and if anyone overheard the substance of the escalating conversation.  If the shooting was the result of a rebuffed personal advance or a soured personal relationship, the death would not be work-related.  Conversely, if the co-employee was angry about a job request or assignment given to him from the secretary, the death could be compensable.  Finally, if the secretary was on her free time for lunch but was working on employment-related business, the injury by a co-employee for personal reasons likely would not be compensable.  It would be the same as if the injury occurred during any hour of the day at work.  Of course, to make a final determination of compensability in any case, the specific facts must be examined.

For more information, please contact Catherine Dellinger Buckley at (404) 633-9230.


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