The Danger of NLRB Changes to the Union Election Process

This week’s featured guest bloggers at the National Law Review are from Steptoe & Johnson PLLCJohn Merinar Jr. highlights some of the issues with some of the changes the National Labor Relations Board (“NLRB”) is contemplating such as electronic voting: 

Now that the mid-term elections are over, conventional wisdom is that the “card check” bill – also known as The Employee Free Choice Act – is not going anywhere in Congress.  Employers are right to celebrate this news, and to feel a sense of relief that such a disastrous step on the part of our legislature seemingly has been averted.

However, the celebratory mood should be tempered somewhat by the realization that employers are not out of the woods just yet.  Instead of waiting for Congress, the National Labor Relations Board (“NLRB”) is contemplating making some changes of its own to the union election process, and the ideas the NLRB has voiced are cause for concern.

One of the changes that the NLRB has been contemplating is switching from the current method of voting by secret ballot to electronic voting and voting over the internet.  The problems encountered with electronic voting in general elections have been well documented over the last several years.   There is no reason to think that the NLRB would find it any easier to make the transition to electronic voting than the people who run general elections did.

More importantly, there is no real reason to take on the change in the first place.  The move towards electronic voting in general elections was driven by the desire to obtain faster and more accurate results where hundreds of thousands, and in some elections, millions of voters cast ballots.  The number of voters in union elections is so small in comparison that the same rationale for change does not apply.

More troubling is the suggestion that internet voting might be a substitute for the conventional method.  As proof, look no further than the situation where an employer wins an election by an overwhelming margin.   In that situation, it would be apparent that many employees who signed authorization cards prior to the campaign actually voted for the employer when they had the benefit of confidentiality.  Undeniably, one of the reasons for that was the fact that these employees would cast votes at an independent polling place monitored by the NLRB.  They would vote in a booth protected by a curtain, fold the paper ballot, and stuff their folded ballots into the ballot box.  In short, they are given every assurance that their votes will be secret.  Without a secret ballot election, employees might end up with a union which they did not really want.

For example, if electronic voting were adopted, it’s not hard to imagine union organizers looking over voters’ shoulders as they vote on line.   Worse, it’s also not hard to imagine union organizers working hard to defeat passwords, disrupt service, and otherwise work to frustrate the right of every voter to have the opportunity to cast one ballot, and to do so secretively.

Sometimes the elaborate steps which NLRB representatives take to assure an employer, employee and union that the conventional method of voting is absolutely secret and not susceptible to tampering seem overdone, but the truth is there is no substitute for the confidence those steps give to everyone participating.  Employers depend on that level of confidence because only then can employees freely express their positions.  Employers should be very, very wary of suggestions from the NLRB that the time has come to consider alternatives which do not inspire that same degree of confidence.

© 2010 Steptoe & Johnson PLLC All Rights Reserved

The Legal Implications of Employers Providing Employees Smartphones

Whether employees want  phone and mobile access to email and  the internet  or employers want their employees to have access, smartphones seem to be the ‘must have’ business accessory these days.   As with many technologies, the lawsuits come in quicker than companies can draft and enforce policies related to the technology. 

Lately we’ve been seeing a whole wave of Employment / Privacy Right Smartphone articles at the National Law Review.

For a General Overview of the Human Resource / Risk Management Issues Related to Smartphones:

You’ve Got Mail (and a Lawsuit): Mobile Communication Devices and the Wage and Hour Pitfalls they Present by Thomas S. Kleeh of Steptoe & Johnson PLLC.

Are You Calling, E-mailing or Texting Employees While They Drive? You May Want to Reconsider by David J. Carr of Ice Miller LLP

For Department of Transportation / State Law Guidelines Related to Texting While Driving or Distracted Driving:

Department of Transportation Prohibits Drivers of Commercial Vehicles From Texting While Driving by David L. Woodard and Louis B. Meyer III of Poyner Spruill LLP.

Distracted Driving Policies: Improve Safety and Limit Exposure by Anne B. Ellison of Dinsmore & Shohl LLP

New Kentucky Law Bans Texting While Driving by Michael J. Henry of Dinsmore & Shohl LLP

For Overtime Pay Issues and the Fair Labor Standards Act (FSLA) Issues Related to Smartphones:

Company-Issued Smartphones and the FLSA: Keeping Employees Connected May Have Its Price by James R. Carroll and Shawn M. Staples of Much Shelist Denenberg Ament & Rubenstein P.C

Curtailing the After-Hours Use of Blackberries by Non-Exempt Employees by Trent S. Dickey and David H. Ganz of Sills Cummis & Gross P.C.

Overtime Lawsuit for Use of PDA’s Hi-Lights Potential Liability for Off-Duty Electronic Communications by David J. Lampe of Dinsmore & Shohl LLP

For the Use of Smartphones and Employer  Liability Related to Eavesdropping:

Beware the Allure of Smartphone Technology: Recording Others without Consent May Get You in Serious Trouble by Anne E. Larson of  Much Shelist Denenberg Ament & Rubenstein P.C

Georgia Voters Approve Dramatic Changes to Employment Restrictive Covenant Laws

This week’s featured blogger at the National Law Review is Jon M. Gumbel of Ogletree Deakins.  Jon writes about how this month’s elections in Georgia approved a measure which would amend the Georgia constitution to dramatically alter the law as it pertains to employee non-compete, customer non-solicitation, confidential information and similar contractual provisions between Georgia employers and their employees. 

The long-awaited and often debated results are in! On Tuesday, November 2, 2010, Georgia voters decided (quite convincingly) to amend the Georgia Constitution, which allowed for the previously passed House Bill 173 to become law (now O.C.G.A. §13-8-50, et seq.). This new statute dramatically alters the law as it pertains to employee non-compete, customer non-solicitation, confidential information and similar contractual provisions between Georgia employers and their employees. The new law became effective on November 3, 2010 and as such, is deserving of prompt attention by Georgia employers.

Until November 2, Georgia’s restrictive covenant laws were governed by published court decisions issued by a wide variety of Georgia judges and based on an even wider variety of specific factual situations, creating a somewhat muddled, very complex and highly unpredictable area of the law. Furthermore, as this case law developed over the past 60 plus years, Georgia courts applied an increased level of scrutiny to employee restrictive covenants, making Georgia one of the most difficult states in which to enforce such covenants. For example, Georgia courts previously required employers to undertake the extremely challenging task of tailoring restrictive covenants executed at the onset of the employment relationship to the employee’s post-employment competition restrictions. In addition, Georgia courts would automatically invalidate a customer non-solicitation provision upon the finding of one technical problem within a noncompete covenant and vice versa. Finally, Georgia courts would not, under any circumstances, modify an otherwise unenforceable covenant so as make it reasonable in the court’s eyes and therefore, enforceable (the “blue penciling” process).

The new statute specifically states Georgia’s new public policy favoring enforcement of these agreements and provides specific guidelines for drafting enforceable agreements. For example, the new statute expressly authorizes a more general description of prohibited, post-employment activities, thus mitigating the requirement that such covenants be narrowly tailored at the onset. The new statute eliminates the prior rules invalidating one covenant based on the unacceptable language of another separate covenant within the same contract. Perhaps, most significant is the new statute’s specific approval of blue penciling, the practice by which Georgia courts are allowed to modify and enforce an otherwise unenforceable covenant.

It is important to note that this new statute only applies to restrictive covenants executed on or after the date the statute was passed – November 2, 2010. The previous, more rigorous legal standards will still apply to agreements entered into before that date. Re-drafting restrictive covenants in line with Georgia’s new statute may be the best option for many Georgia employers. However, Georgia employers should consult with counsel to determine whether they can benefit from this new law. This is especially true when it comes to covenants contained in more complex management and executive agreements that are tied to more generous severance or other compensation plans or those associated with the sale of a business.

Update! For more recently posted information about this topic, please see:  Important Notification Regarding the Effective Date of The New Georgia Restrictive Covenant Statute

© 2010, Ogletree, Deakins, Nash, Smoak & Stewart, P.C., All Rights Reserved.

About the Author:

Jon M. Gumbel has concentrated his practice in the field of management labor and employment law since 1987.  He has represented employers with respect to litigation and other employment law disputes involving race, gender, age, religious, and disability discrimination claims under Title VII, the ADEA, the ADA, the FMLA, and comparable state laws.  Jon has also represented employers with respect to their employment litigation matters involving pregnancy discrimination, breach of compensation agreements, breach of non-compete agreements, breach of fiduciary duty, joint employment, wage and hour matters, OSHA citations, and wrongful discharge laws.  Finally, Jon has represented numerous employers with respect to ERISA claims/litigation including those involving health, disability and pension claims.  404-881-1300 /


All About Financing the Startup Company -Starting a New Company These Days in Quite The Headwind…..

For those who may know and love us – The National Law Review is all about the start-up company as we were founded by a few “recessionaires” a few years back with elan resources and an ever growing brood of kids. 

In a world where folks are encouraging you to live your dreams and be all that you can be, we’ve come across very few concrete, actionable resources for small business financing.   We attended the SBA Workshops and even some financing resources designed for women entrepreneurs- while these resources offer much information – it’s somewhat disheartening when more than once it’s been suggested that you should be volunteering to teach there.

Accordingly, we’d like to give a shout out to some of the better resources we’ve come across recently which go beyond  having a balance sheet a marketing plan- for those who may be into that sort of thing:

National Law Review's Student Legal Writing Contest Deadline is Friday November 12th

Everybody’s talking about how abysmal the job market is for law students – why not build your resume while still in school?  Young lawyers are under increasing pressure to start thinking about business development activities earlier in than ever in their careers.  One tried and true way of building one’s professional reputation is by publishing.  One sure way to get noticed and to help others is to write  in a style which is helpful and educational to prospective clients.  The National Law Review is one of the nation’s premier resources for secondary legal analysis for businesses and twice a year we offer students the opportunity to submit consumer-friendly articles for publication.

The winning articles will be published online starting in Mid November 2010. The top article(s) chosen will be featured on the NLR home page. Up to 5 runner-up articles will also be posted in the NLR searchable database.

Please note that although students are encouraged to submit articles addressing Labor & Employment Law, the featured topic for the November issue, they may also submit entries covering current issues related to other areas of the law.


Why Students Should Submit Articles

  • Students have the opportunity to publicly display their legal knowledge and skills.
  • The student’s photo, biography, and contact information will be posted with each article, allowing for professional recognition and exposure.
  • Winning articles are published alongside those written by respected attorneys from Am Law 200 and other prominent firms as well as from other respected professional associations.
  • Now more than ever, business development skills are expected from law firm associates earlier in their careers. NLR wants to give law students valuable experience generating consumer-friendly legal content of the sort which is included for publication in law firm client newsletters, law firm blogs, bar association journals and trade association publications.
  • Student postings will remain in the NLR online database for up to two years, easily accessed by potential employers.
  • For more Information and contest rules, please click here.

Registration Symbol Misuse As Trademark Fraud?

Featured Guest Bloggers this week at the National Law Review are from our friends up north in Minneapolis at Winthrop & WeinstineSteven Baird discusses appropriate times to use the “Registered” symbol.

Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.

Section 906 of the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (TMEP) answers some of the most common questions regarding misuse with this guidance:

  • The federal registration symbol should be used only on or in connection with the goods or services that are listed in the federal registration.
  • The federal registration symbol may not be used with marks that are not actually registered in the USPTO.
  • Even if an application is pending, the federal registration symbol may not be used until the mark is registered.
  • Registration in a state of the United States does not entitle a person to use the federal registration notice.
  • A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.

This information and guidance, however, begs the question of whether misuse is a serious violation and the possible consequences of misusing the registration symbol? As you may recall, we’ve talked a bit before about possible false advertising claims against the trademark owner who misuses the symbol and a possible unclean hands defense in favor of the trademark owner’s enforcement target, especially when the misuse is accompanied by a bad faith intent to deceive.

As it turns out, we really need to add another important potential consequence to the list, one that I fear will be abused and used for pure tactical advantage in trademark enforcement efforts, namely, assertions of trademark fraud, despite the current heightened standard of fraud, with the Court of Appeals for the Federal Circuit now requiring a specific intent to deceive the Trademark Office. Actually, registration symbol misuse is not really a new ground of trademark fraud, but it has been rather uncommonly and infrequently alleged, at least in recent years.

One of the reasons for my concern of abuse stems from a recent TTAB decision permitting this rather conclusory and bare bones trademark fraud claim to survive a motion to dismiss:

Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.

A pdf of the TTAB’s decision with scant analysis — from about six weeks ago — inNorth Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276), is linked here.

Relying only on the above-quoted allegation, the TTAB decided: “We find that the allegation set forth above includes the necessary pleading of intent, and specifies that applicant’s misuse was knowing and willful, and an attempt to deceive or mislead consumers.”

In contrast to most trademark fraud cases where various false and misleading statements — relied upon by the Trademark Office — are the focus of the fraud challenge, in North Atlantic Operating Co., the focus was on an alleged intent to deceive the public, as opposed to the USPTO.

The Federal Circuit has held: “The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark.”Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Presumably, the same conduct would sustain a petition to cancel as well. Although, the statutory support for the broader focus is unclear, it appears that an intent to deceive the USPTO is not required, so long as there is an intent to deceive the relevant public regarding registration.

Another reason for my concern stems from the apparently satisfactory yet conclusory fraud allegation. There are simply no details regarding the who, what, where, why, and when, of the alleged trademark fraud, and this failure appears to contradict recent TTAB case law confirming that fraud must be pled with particularity under Fed. R. Civ. P. 9(b). Indeed, our friend John Welch over at the TTABlog has reported multiple times on the TTAB tightening up the pleading requirements for trademark fraud claims, following the Federal Circuit’s landmark decision in In re Boseherehere, and here.

Finally, the Federal Circuit’s Copelands’ Enterprises decision makes clear that how quickly a trademark owner corrects a misuse of the registration notice symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public. If we couple that guidance with the current uncertainty of whether the requisite intent may be established with a reckless disregard for the truth, trademark types and the brand owners and managers they represent, are all well-advised to pay more attention to what many previously have written off as honest mistakes and technical violations with no real or significant consequences.

Only time will tell whether the registration notice symbol misuse type of trademark fraud claim will remain uncommon or gain traction in our Post-Bose world.

© 1994 – 2010 Winthrop & Weinstine, P. A.

Law Firms Guarantee your ROI When Hiring an Interpreter

The National Law Review’s Business of Law Guest Blogger is Maria Cristina de la Vega who provides some great insight for legal professionals  on what to look for when hiring an interpreter. 

Interpreting/translating is a relatively young industry in the U.S. and it is currently unregulated.  Interpreters are not legally required to have an accreditation unless they are hired directly by the court system and are being paid with taxpayer dollars. Because it is relatively easy for a bilingual individual to hang out his shingle, the consumer, especially attorneys, need to know what to look for in a language professional to ensure that interpreted testimony faithfully follows the source language. Most cases rely heavily on testimony to decipher the facts at issue and to form an understanding of a witness’s credibility and motivation.  A misinterpretation or a nuance that is not conveyed properly can impact the outcome of a case.  To avoid this from happening, ask your language provider for his/her credentials.

Whereas an interpreter is bilingual, a bilingual individual is not necessarily an interpreter.  It is one thing to speak two or more languages, but quite another to be able to professionally interpret from and into those languages.  This fact may not be apparent in casual conversation and may not become evident unless the attorneys and/or parties involved speak both languages, know the specific terms used in the case and are able to recognize them.  In some situations, those listening may not speak one of the languages well enough to judge the quality of the interpretation.  Attorneys and clients in general are not set up to screen language providers to verify their proficiency, nor should they have to.  The best way to do this is to retain the services of an established agency or Language Services Provider (LSP).  The best ones to partner with are those that have experience in the industry, that source their interpreters from existing professionals and from reputable university-level language programs, that require accreditation from the interpreters they employ even if it is not yet mandatory, and that regularly strive to develop their personnel through continuing education.    These firms make sure that the interpreters they send you have the training and credentials to carry out your assignments at a specialized level. Available 24 hours a day 7 days a week to schedule interpreters for you anywhere in the U.S. as well as abroad, they can also provide you with written translations as well as certified linguists to render expert witness testimony on language issues.

What credentials should an interpreter have?

When an attorney needs an interpreter for a legal proceeding, he should first verify whether the interpreter holds an accredited certification, assuming there is one for the needed language combination. In the United States, there are several certification programs. The most common is the standardized interpreting examination offered by the Consortium for Language Access in the Courts at the National Center for State Courts.  There is also the Federal Court Interpreter Certification Exam which is currently being offered only in Spanish.  The National Association of Judiciary Interpreters and Translators (NAJIT) offers another certification, as does the State Department.

If the candidate in question has the required proficiency as indicated by a recognized certification, some of the main skills he should possess and which are acquired from experience are: sight translation, a trained memory supported by note-taking skills to render testimony faithfully, a knowledge of specialized terminology, colloquialisms and slang in order to interpret in the correct register, and how to control the speed at which the attorney and the witnesses speak, if necessary, in order to have the opportunity to accurately interpret everything that is being said. It is difficult to interrupt witnesses giving testimony laden with emotions so it is critically important to have a professional interpreter that can render long statements, doing the interpretation.

Another useful indicator of the interpreter’s professionalism is membership in an industry association such as NAJIT or ATA  (American Translators Association) that have Codes of Ethics governing the profession that members must adhere to.  In addition, these organizations keep members abreast of developments in the field.

How to work with an interpreter

It is equally important for attorneys to know how to work properly with an interpreter. Unfortunately, interpreters are sometimes considered a necessary evil that must be borne and many attorneys subscribe to the myth that, because you are an “interpreter,” you are a walking dictionary who is able to communicate any terminology, notwithstanding the level of complexity, into another language.  Interpreters regularly work in diverse settings for widely differing industries and yet we are not specialists in these industries to the degree that our clients are. Hence, it is important when dealing with complex and/or technically challenging cases, that the interpreter be given an opportunity and sufficient time to acquaint himself, at a minimum, with the pleadings in the case and with any pertinent documents or prior testimony that will be discussed at the proceeding for which he is being scheduled. This is so that we may prepare a bilingual glossary of specialized terms to study, which will result in a more polished, professional interpretation.  In addition to our responsibility as officers of the court not to discuss the cases we work on, we also stand ready to sign confidentiality agreements to assuage any fears regarding sharing of information. To avoid unforeseen difficulties, the scheduling coordinators of established LSPs regularly ask how long proceedings are expected to take and what sort of testimony will be presented to ascertain who the best interpreter is for the assignment, based on experience, and whether he will have to study, for example, dedicated medical terminology or engineering language, among many possible specialties. Whenever possible, book services well ahead of time as good interpreters are in high demand. Check the reputation of the LSP in language-dedicated sites such as or ask your colleagues in the legal community about their dealings with the firm being considered.

Guidelines to Working with an Interpreter

  • Ascertain the interpreter’s credentials
  • When relevant, give the interpreter case documents to prepare
  • Verify whether team interpreting is required
  • Address witnesses with direct speech as if the interpreter were not present.

Other useful tips to keep in mind are to use direct speech when using the services of an interpreter.  Address the witness in the first person, as if there were no interpreter present, to safeguard the integrity of the transcript.  Avoid using proverbs i.e. “Where there’s smoke there’s fire” because although it may translate, there may be no direct translation, or worse yet, there may be another cultural equivalent to the sense behind the saying and the witness could end up giving an answer that is framed in very different terms from what you asked.  Furthermore, you would be adding unnecessary stress to the interpreter’s job by asking him to do mental gymnastics  in a matter of seconds to come up with a viable interpretation of an artistic/literary term  When working with consecutive interpretation (speech followed by a pause to allow for interpretation), attorneys and witnesses should pause when a complete thought or phrase has been rendered.  The speech should not be so short that the sense is unintelligible nor so long that the interpreter cannot possibly remember it to give an accurate interpretation.  An experienced interpreter will quickly establish the required rhythm among the parties involved in the taking of testimony so that the process will be smooth.  It is important that only one person speak at a time for the same reason that a court reporter requires it, so that both the full question as well as all testimony is interpreted and taken down.

The length of time involved in an interpreted proceeding brings up another key point that is often overlooked, which is interpreter fatigue.  According to a NAJIT position paper on the topic,,team interpreting “should be used for lengthy proceedings as a quality control mechanism to preserve the accuracy of the interpretation.”  The way this works is that two interpreters substitute one another approximately every half hour.  It has been found in scientific studies, among which is one at the University of Geneva in 1998, that after a certain amount of time working, an interpreter reaches a saturation point as mental circuits become overloaded and this condition leads to errors.[1]

If the interpreter is going to be interpreting a proceeding simultaneously to the witnesses rather than interpreting from the witness stand, it is important that the interpreter be located in a position to properly hear and have visual contact with the parties speaking.  Sound equipment (earphones, a microphone and a transmitter) should preferably be used to interpret the event, transmitting to receivers worn by the parties requiring the interpretation. That way, the interpreter can avoid the additional stress, inconvenience and disruption caused by having to stand close to one or more individuals to whisper an interpretation of what is going on. Many courts have this equipment installed in their courtrooms; otherwise, the LSP can be asked to have the interpreter bring a portable system.  LSPs always have units available for their interpreters to use.

If the language at issue is not one for which there are interpreters readily available in your area or there are many dialects of the language, it is advisable that the interpreter selected speak with the witness in advance to ensure that they can understand one another well.  Lastly, explain to the witnesses the role of the interpreter.  That the interpreter is a neutral party and an officer of the court.  That witnesses cannot have private conversations with him while they are testifying, That they should expect that the interpreter will render everything said to him on the stand into the language of the Court (English) but in turn, the interpreter will keep any information gained in the course of his work outside of court, confidential. Parties/witnesses should also know that the interpreter is bound to report any ethical breaches to the appropriate authorities.

Awareness and adherence to these simple guidelines will go a long way towards making sure that you have a positive, productive experience every time you retain the services of an LSP. NAJIT has formed a working group entitled the Bench and Bar Committee to disseminate this information among the judiciary and practicing attorneys. Our objective as interpreters is to be an asset to attorneys in assisting you to present testimony in a seamless, professional manner that you can depend on.

[1] Moser-Mercer, B., Kunzli, B., and Korac, M., 1998  “Prolonged turns in interpreting: Effects on quality, physiological and psychological stress.” University of Geneva, École de Traduction et d’ Interprétation. Interpreting,Vol. 3 (1), p. 47-64. John Benjamin Publishing Co.


© 2010 ProTranslating, Inc. All Rights Reserved.

About the Author:

Maria Cristina de la Vega holds an M.B.A. and has more than 35 years of experience in court interpreting.  She is a federally certified Spanish interpreter and is also certified by the State of Florida in that capacity. She is a regular contributor to publications that deal with language issues and she is a member of the Bench & Bar Committee of the National Association of Judiciary Interpreters and Translators (NAJIT).  Ms. De la Vega  has done work for prominent law firms including Greenberg Traurig and Holland and Knight.  ProTranslating provides interpreting, translation services and linguistic solutions to individuals, law firms, and corporations worldwide. It offers a team of more than 100 qualified in-house linguists and a worldwide network of another 3,000 freelancers working in more than 100 languages. 888-532-7887 /

Vampires vs. Zombies – Trademark Registrations

The National Law Review’s featured guest bloggers this week are from our friends up north at Winthrop Weinstine. In keeping with all things Halloween and a bow to pop-culture,  Sharon Armstrong discusses trademark filings in relation to these spooky favorites:  

What is it with zombies these days? If recent memory serves correct, it wasn’t so long ago that a pop-culture junkie like me couldn’t mention the words “creature of the night” without some girl/tween/soccer mom swooning over the likes of one Edward Cullen, the romantic hero of Stephanie Meyer’s wildly popular Twilight series. You know who you are.

Then there was True Blood, The Vampire Diaries, and a slew of other vampire-related books, movies, parodies, and the like, including what may be one of the best fan-made mash-ups ever.

And then came the zombies. I received a copy of Pride and Prejudice and Zombies about a year ago as a gift – and suddenly it seems that zombies, like vampires, are everywhere too.

A recent review of the new television series “The Walking Dead” in the New York Times explains that “[z]ombie movies didn’t die off, but they were overshadowed by vampire mania that has dominated popular culture… Finally, perhaps as a backlash against all the girlish, gothic swooning over ‘Twilight,’ zombies are making a comeback.”

If recent filing activity at the Trademark Office is any indication, then what’s left of 2010 (and 2011) may be The Year of the Zombie. The stats are as follows:

Since September 6, 2006, the date upon which Twilight was first published, the following trademark applications have been filed with the Trademark Office:

  • 132 marks incorporating the term “zombie”
  • 118 marks incorporating the term “vampire”
  • 116 marks incorporating the term “demon”
  • 83 marks incorporating the term “troll”
  • 13 marks incorporating the term “ghoul”
  • 9 marks incorporating the term “corpse”

Of the first two categories, and since April 4, 2009, the date upon which “Pride and Prejudice and Zombies” was published, 84 applications for marks incorporating the term “vampire” have been filed and 69 applications for marks incorporating the term “zombie” have been filed.

Tellingly, the most recent applications incorporating the term “vampire” are for the mark VAMPIRES SUCK, for a variety of goods and services.

© 1994 – 2010 Winthrop & Weinstine, P. A.

About the Author:

Sharon D. Armstrong is an associate in the Intellectual Property practice group. Her practice is focused on the prosecution and enforcement of trademarks and copyrights, and Internet/domain name enforcement and acquisition. She assists clients in nearly all facets of trademark prosecution and enforcement, both foreign and domestic, administrative proceedings before the Trademark Trial and Appeal Board, and intellectual property transactions including due diligence, licensing, trademark acquisitions, settlement, consent and coexistence agreements, and other transfers of rights. Ms. Armstrong also provides assistance with intellectual property litigation and arbitration. Prior to joining Winthrop & Weinstine, Ms. Armstrong was an associate with Greenberg Traurig in Las Vegas, Nevada, a law clerk with the National Endowment for the Humanities, and an arts administrator at Los Angeles Opera. /612-604-6463

USPTO Extends and Expands Patent Application Peer Review Program

Under the category of “Who Knew” — National Law Review guest blogger James M. Singer of Pepper Hamilton LLP lets us know about  a US Patent Office Pilot Program which invites public participation in the patent application process.  

The U.S. Patent and Trademark Office has announced an additional one-year pilot of its “Peer To Patent” pilot program, which invites public participation in the patent application process.  The new program launches on October 25, 2010 and will be available through September 30, 2011.

The Peer-to-Patent program is a collaboration between the USPTO, the New York Law School, and others in which participating patent applications receive public scrutiny through comments and prior art submissions on the Peer-to-Patent website.  The peer review period begins approximately one month after the patent application is published, and it lasts for three months.  After the peer review period, the project sends the prior art and comments to the USPTO, and the USPTO advances the application earlier in its queue for examination.  Both the USPTO and the applicant can consider the public comments and submitted prior art during the examination.

Applications that participate in the program can receive the benefit of quicker examination than they would have received if they had merely waited their ordinary turn at the USPTO.  This is especially useful for technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years.  In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation — in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.

According to the USPTO, the Peer to Patent Program “opens the patent examination process to public participation in the belief that such participation accelerates the examination process and improves the quality of patents. Under the pilot program, inventors can opt to have their patent applications posted on the website. . .. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.”

Changes in the new pilot include:

  • eligible technology classes have expanded to include software, telecommunications, and others;
  • peer review time is reduced to three months (from the previous four months);
  • up to 1,000 applications will be accepted into the program; and
  • peer reviewers may submit up to six items of prior art per application (down from the previous limit of 10).

The original Peer To Patent pilot ran from June 2007 until June 2009.  The original pilot included 189 patent applications, and it received over 600 items of prior art from peer reviewers.  To participate in the program, a pending application must not have published more than 30 days before filing a consent form, and it must fall into an eligible technology class.  Eligible classes include, among others:

  • 260 (certain subclasses) – chemistry of carbon compounds,
  • 380 – cryptography,
  • 424 (certain subclasses) – drug, bio-affecting and body-treating compositions,
  • 702, 703, 705-715, 717 and 718, which relate to certain types data processing and computers, and
  • 726 – information security.

The full list of technology classes eligible for the 2010 pilot is listed at  For more details about the Peer to Patent program, visit the Peer to Patent website at

Copyright © 2010 Pepper Hamilton LLP

Are You Ready For the Cloud?

Meredith L. Williams of Baker Donelson is the National Law Review’s Business of Law Featured blogger.  Meredith discusses the pros and cons of cloud computing for law office operations. 


Is cloud computing a shift or is it the next natural step in strategic business development?  Is the cloud  the right answer for your law firm or company?  Is the cloud the right answer for all applications and infrastructure or is it just a piece of the puzzle?  These are a just few of the many questions law firms and companies are asking themselves as they consider a move to the cloud.  There are many reasons why cloud computing is a very seductive solution to the cost cutting environment we find ourselves dealing with today.  However, there are many issues, legal and organizational, that must be considered to determine the validity of the cloud for each environment.

The “cloud” means different things to different people.  For most of us, we have been using cloud computing technology for years without defining the term.  Example cloud environments are extranets, legal research websites, online file storage and much more.  By definition, the cloud is a metaphor  referring to internet based computing in which applications, data, software or network functions are stored on remote servers.  There are presently three types of cloud environments:

  1. Infrastructure as a service or hardware cloud which serves as a data center,
  2. Software as a service or the software cloud, and
  3. Desktop applications operated within a hardware cloud.

Although we have been using the cloud in the past, the difference at this time is the potential of using the cloud for core business applications.

Why the Cloud?

For strategic business leaders, the cloud offers a way to minimize cost, increase mobility, prepare for disaster recovery, offer device flexibility, collaborate on demand and reduce downtime. Let us take a look at the different sections of a law firm and see how the cloud can affect the overall business functions.

In the information management world collaboration is key.  The more a firm can offer needed collaboration tools with a client, the more the client becomes entrenched in that firm culture.  The cloud provides law firms with a unique opportunity to offer clients a collaborative environment in an on-demand system.  The client can truly be connected with the law firm from anywhere with any device in the world.

Fewer applications or errors and easier upgrades are phrases application and support specialists love to hear.  The cloud environment can make them a reality.  The cloud offers software functionality to users regardless of locality or device.  Therefore, fewer setups, downloads and support hours are spent dealing with application changes and upgrades.  This new environment aids a law firm in flexibility allowing the firm to change applications as rapidly as the needs of the users change.

The main concern of most in the applications world is support.  How do current structured IT staffs support an environment when the applications are not local?  What will be the skill set of an applications and desktop support staff individual with applications in the cloud? These are areas IT departments must address before making the move to the cloud.

The cloud offers business and cost savings in a very unique way.  The upfront costs of moving to the cloud are large.  However, over time the cost savings from increased efficiency and reduced hardware, software, support and downtime help to offset the upfront costs.  The biggest hurdle for cloud computing may not be cost but instead data security.  It is easy to argue that a law firm or company can protect its data when it lives in a server room on site with a locked door but how do IT departments protect their data when it sits thousands of miles away on servers not owned by the company?  Law firms will need to determine if this is a deal breaker or is this an area of contract negotiation with the cloud provider.

What are the contractual issues?

Now that we see the potential of cost savings, flexibility, mobility and more,  we will address the contractual issues and concerns each law firm will need to consider.  The first step in any contractual negotiation is due diligence of both parties.  Law firms must evaluate news, law suits, current events, financial stability, customer references, provider longevity and any other possible information that could affect the contractual obligation fulfillment.  Only then can the contract negations begin.

The largest areas of concern in the cloud are data security and privacy. A demonstration of these concerns is seen in the 2009 complaint filed with the Federal Trade Commission (FTC) by the Electronic Privacy Information Center (EPIC) regarding cloud services of Google.  In the complaint, EPIC alleges Google did not adequately safeguard the confidential information obtained from clients.  This complaint raises serious questions for the vendor to address and draft into the contract.  Questions to ask include where the data is stored, what are the physical security measures to protect the data, is a shared resource used in storage, what is the security during transmission, what are the disaster recovery measures and what are security incident response times. In addition, questions around data migration and transition should be addressed.

Another issue to consider is legal compliance.  Highly regulated industries such as health care facilities falling under HIPAA must think twice about moving information to the cloud.  Vendors are expected to maintain the data at the same standard required of the company.  This can become a contractual deal breaker if the vendor will not agree to the higher standards.   The regulated industries affect law firms that maintain work product and client information for clients working in these regulated industries.  Law firms must now consider the standards guaranteed to their clients when moving to the cloud and verify the vendor will agree to that level of maintenance.

A point that is only just beginning to emerge in the cloud discussion is the level of control and ownership of the servers and data existing on the servers.  Questions to consider are data termination and vendor claims and rights to the data.  The control influences discovery, liability and litigation hold processes.  Negotiation can help prevent future claims of spoliation.

Performance, reliability and service features shape the day to day experience of users in the cloud.  Therefore, inquiring about disaster recovery set up, scalability of applications, process for upgrades and feature releases, suspension of services, offline capabilities, base subscription services and add-on services of applications can affect the contract obligations of the vendor, expectations of the client and most importantly cost of the contract.

Global performance and legal compliance of data across international borders are concerns for many large law firms.  Is the vendor only offering a cloud solution that is U.S. based?  This is a discussion point for the contract and can possibly be a deal breaker when adhering to EU standards of compliance.

All of the above contract negotiation points lead to the largest decision, cost.  What is included in the cost of the cloud services?  What is not included?  And the final and most important question to ask, whether the move to the cloud is a benefit if the law firm already owns the software licenses and hardware to maintain the status quo.

What will the courts be deciding?

The courts are well aware of the cloud computing movement.  In Oregon v. Bellar, 217 P. 3d 1094 (Or. App. 2009), the court took note that 69% of U.S. residents that are online utilize at least one cloud site. Due to the unique custodial issues involved with cloud computing, the cloud can present challenges to e-discovery and jurisdictional questions. Decisions concerning these issues are just starting to appear but with conflicting rulings.  The question of what the courts will decided has yet to be seen.

What will the future bring?

As we stated earlier, many of us have been using the cloud for years without calling it the cloud.  The difference surrounds the movement of core business functions such as email and document management to the cloud.  In the past, these features have been kept at a local level.  But as you see above, this is changing.  As more and more cloud providers make their way to the forefront, this movement will only increase.  The question is whether the cloud is the right solution for your law firm?

©2010 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC. All Rights Reserved.

About the Author:

Meredith L. Williams is Baker Donelson’s Director of Knowledge Management.  Although trained as a lawyer, she is not actively engaged in the practice of law.  Instead, she oversees BakerNet, the Firm’s industry-leading intranet, and coordinates strategic growth on behalf of the Firm in knowledge management, competitive intelligence and technology.  Ms. Williams is widely recognized as a leading authority in knowledge management issues for the legal field, and is a frequent presenter and author on knowledge management and competitive intelligence. 901-577-2353 /