Author: National Law Forum

A group of in-house attorneys developed the National Law Review on-line edition to create an easy to use resource to capture legal trends and news as they first start to emerge. We were looking for a better way to organize, vet and easily retrieve all the updates that were being sent to us on a daily basis.In the process, we’ve become one of the highest volume business law websites in the U.S. Today, the National Law Review’s seasoned editors screen and classify breaking news and analysis authored by recognized legal professionals and our own journalists. There is no log in to access the database and new articles are added hourly. The National Law Review revolutionized legal publication in 1888 and this cutting-edge tradition continues today.

Rainmaker Retreat: Law Firm Marketing Boot Camp

The National Law Review is pleased to bring you information about the upcoming Law Firm Marketing Boot Camp:

WHY SHOULD YOU ATTEND?

Have you ever gone to a seminar that left you feeling motivated, but you walked out with little more than a good feeling? Or taken a workshop that was great on style, but short on substance?

Ever been to an event that was nothing more than a “pitch fest” that left a bad taste in your mouth? We know exactly how you feel. We have all been to those kinds of events and we hate all those things too. Let me tell you right up front this is not a “pitch fest” where speaker after speaker gets up only trying to sell you something.

We have designed this 2 day intensive workshop to be content rich, loaded with practical content.

We are so confident you will love the Rainmaker Retreat that we offer a 100% unconditional money-back guarantee! At the end of the first day of the Rainmaker Retreat if you don’t believe you have already received your money’s worth, simply tell one of the staff, return your 70-page workbook and the CD set you received and we will issue you a 100% refund.

We understand making the decision to attend an intensive 2-day workshop is a tough decision. Not only do you have to take a day off work (all Rainmaker Retreats are offered only on a Friday-Saturday), but in many cases you have to travel to the event. As a business owner you want to be sure this is a worthwhile investment of your time and money.

WHO SHOULD ATTEND?

Partners at Small Law Firms (less than 25 attorneys) Solo Practitioners and Of Counsel attorneys who are committed to growing their firm. Benefits you will receive:

Solo practitioners who need to find more clients fast on a shoe-string budget. In addition to all the above benefits, solo attorneys will receive these massive benefits:

Law Firm Business Managers and Internal Legal Marketing Staff who are either responsible for marketing the law firm or manage the team who handles the law firm’s marketing. In addition to all the above benefits, Law Firm Business Managers and Internal Legal Marketing Staff will also receive these benefits:

Of Counsel Attorneys who are paid on an “eat what you kill” basis. In addition to all the above benefits, Of Counsel attorneys will also receive these benefits:

Associates who are either looking to grow their book of new clients in the next 6-12 months or want to launch their own private practice. In addition to all the above benefits, Associates will also receive these benefits:

Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape

The National Law Review recently published an article by Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding Shape Trademarks:

On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The drawing for the mark is set forth below:

The issue in “product configuration” trademark cases is whether the design features sought to be protected are “functional”. If the overall design is functional, trademark protection is barred. In this case, the TTAB held that although the rectangular shape of the entire candy bar and the individual rectangular shapes scored within the bar were functional, since they made it more convenient to easily divide the bar into equal pieces, the overall design, when considered in its entirety, was not purely functional. Rather, the Board determined, based on the evidence presented that reflected a wide variety of shapes and decorative designs used for candy bars, that the particular combination of recessed rectangles with a raised border in the Hershey bar was not functional and, therefore, could be protected as a trademark.

The second issue the Board was required to consider was whether the product design had “acquired distinctiveness”. Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Thus, in order to be fully protected as a trademark and registered on the Principal Register, Hershey was required to demonstrate that relevant consumers considered the product design to be a source identifier. There is no specific rule or test for establishing that a mark has become distinctive. Evidence can consist of consumer recognition surveys, evidence as to the length of time a mark has been in use, sales revenue of goods bearing the mark, advertising expenditures to promote goods bearing the mark, and evidence that the product configuration was promoted in advertisements as a source indicator. Hershey’s submitted all of these types of evidence to meet its burden of proof. In addition, Hershey’s also provided evidence that a third party attempted to copy the design of the candy bar to use as the shape of a brownie baking pan. The Board found that all the evidence demonstrated that the design above had acquired distinctiveness and could be registered

Product configuration marks are not new. There are trademark registrations on the Principal Register for many product configurations, such as:

A Coca-cola bottle  Reg. No. 3232602

A Perrier bottle Reg. No. 1398744

Original Ideas’ barbecue grill Reg. No. 3987743

Emerson Electric’s thermostat Reg. No. 3195948

and many others.

The Hershey bar configuration has been in use since 1968, yet Hershey did not make any attempt to register the mark as a product configuration until recently.  Gaining a competitive edge in any industry, particularly in a slow economy, is essential. As Hershey’s demonstrated, it can be beneficial to think creatively and a bit more “out-of-the-box” when it comes to your intellectual property assets.  Particularly in a down economy, some may be tempted to copy a successful competitor rather than spend time and money on developing original ideas and creations. Accordingly, companies should carefully consider obtaining protection for the intellectual property assets they currently use and own, whether by trademark, copyright, and/or design patents, and for policing the market to ensure that their valuable properties are not being used by unauthorized third parties. Moreover, there may be licensing opportunities that could provide a revenue stream if appropriate protection has been obtained.

Today, it is a candy bar design. Tomorrow, it could be your existing product’s design. Think about it.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Retail Law Conference 2012

The National Law Review is pleased to bring you information about the upcoming Retail Law Conference:

at the Westin Galleria in Dallas, Texas

November 7-9, 2012

This event is the perfect opportunity to discuss the latest issues affecting the retail industry while obtaining important continuing legal education (CLE) credits.

Open to retail and consumer product general counsel, senior legal executives and in-house attorneys and their teams, the exceptional dialogue presented at this conference will help your organization navigate the current legal landscape of the industry.

Impact of Agriculture Reform, Food and Jobs Act of 2012 on Dairy Farmers

The National Law Review recently published an article regarding Agriculture Reform written by Kristiana M. Coutu of Varnum LLP:

Varnum LLP

This summer, the U.S. Senate voted to proceed to consideration of theAgriculture Reform, Food and Jobs Act of 2012 (2012 Farm Bill). The proposed bill can be accessed on the Senate Agriculture Committee’s website, however, be warned, it will take time and perseverance to wade through the 1010 pages of text.  While a complete study of the 2012 Farm Bill may be fascinating for some of us, the practical concern is how it will affect specific industries within agriculture and individual farms. Because Michigan dairy farms are a vital component of our state’s economy, it seems appropriate to consider how this proposed legislation will affect dairy farmers.

Two new programs will replace the current Dairy Product Price Support Payment and the Milk Income Loss Contract Program (MILC).  The new programs are the Dairy Production Margin Protection Program (“Margin Protection Program”) and the Dairy Market Stabilization Program (“Stabilization Program”) which have the stated purpose of guaranteeing dairy farmers a certain margin of milk price over feed costs and assisting in balancing the supply of milk with demand when participating dairy farms are experiencing low or negative operating margins by encouraging dairy farmers to produce less milk.  The two programs must be looked at together since any dairy operation that participates in the voluntary Margin Production Program must also participate in the Stabilization Program.

In its most basic terms, the Margin Protection Program insures farmers a minimum $4.00 margin of average national milk price, termed the “all milk price” over the national average feed price based on the price of corn, soybean meal and alfalfa.   A margin of less than $4.00 for two consecutive months triggers a government payment based 80% of historical milk production. Dairy farmers may also purchase supplemental margin protection to insure up to an $8.00 margin on 90% of historical production.  Although these programs are sometimes referred to as insurance, they are not associated with the federal crop insurance program and no insurance agents are involved.

The Stabilization Program encourages farmers to produce less milk by ordering handlers not to pay farmers for a percentage of milk shipped during any month the Stabilization Program is “in effect” based on low national margins.   Handlers must reduce the producer’s milk check when milk shipped exceeds what is called the “dairy operation’s stabilization base.”  The money that would have gone to the producer is instead paid to the Secretary of Agriculture to use for building demand for dairy products and purchasing dairy products for donation.

These new programs provide a good deal of food for thought, including questions about the effectiveness in various geographic regions of the U.S., considering the difference in milk price and input costs; the effect on various farms based on size; and whether forcing handlers to submit milk proceeds to the government is essentially a tax on dairy farmers.  Dairy farmers should evaluate these programs in light of their individual farm’s circumstances to determine the impact should these programs be included in the final Farm Bill.

It is estimated that debate on the Senate floor will be ongoing for at least the next two weeks and that several amendments to the bill will be proposed and debated.  We will continue to monitor the progress of the Farm Bill in general and also specific dairy provisions.

© 2012 Varnum LLP

Consumer Financial Services Basics – ABA Conference

The National Law Review is pleased to bring you information regarding the upcoming Consumer Financial Services Basics Conference sponsored by the ABA:

When

October 08 – 09, 2012

Where

American University

Washington College of Law

Washington, DC

Program Description

Facing the most comprehensive revision of federal consumer financial services (CFS) law in 75 years, even experienced consumer finance lawyers might feel it is time to get back in the classroom. This live meeting is designed to expose practitioners to key areas of consumer financial services law, whether you need a primer or a refresher.It is time to take a step back and think through some of these complex issues with a faculty that combines decades of practical experience with law school analysis. The classroom approach is used to review the background, assess the current policy factors, step into the shoes of regulators, and develop an approach that can be used to interpret and evaluate the scores of laws and regulations that affect your clients.Program FocusThis program will explain each of the major sources of regulation of consumer financial products in the context of the regulatory techniques and policies that are the common threads in a complex pattern, including:

  • Price regulation and federal preemption of state price limitations
  • Truth in lending and disclosure requirements
  • Marketing, advertising and unfair or deceptive conduct
  • Account servicing and collections
  • Regulating the “fairness” of financial institution conduct
  • Data security, fraud prevention and identity protection
  • Consumer reporting: FCRA & FACT Act
  • Fair lending and fair access to financial services
  • Remedies: regulators and private plaintiffs
  • Regulatory and legislative priorities for 2012 and beyond

Who Should Attend…The learning curve for private practitioners, in-house lawyers and government attorneys to understand the basics and changes to CFS law is very steep. This program is a great way to jump up that curve for:

  • Private practitioners with 1-10 years of experience who focus on CFS products or providers
  • In-house counsel at financial institutions and non-bank lenders
  • Government attorneys, in financial practices regulatory agencies
  • Compliance officers (who may be, but need not be, attorneys)

The European Patent Office: A Helpful Guide for Inventors

Recently an article, The European Patent Office: A Helpful Guide for Inventors, written by Ivan T. Kirchev of Michael Best & Friedrich LLP was featured in The National Law Review:

Before entrepreneurs and startups try to protect their intellectual property rights in Europe, they must have a basic understanding of the European patent system and the ways that they can obtain European patent protection. Although European patent prosecution can be a complex and costly process, companies should certainly consider creating a European patent portfolio.

Geographically, Europe includes 45 countries. The European Patent Office (EPO), is a unified patent office located in Munich, Germany, created by the European Patent Convention (EPC) Treaty. The EPC includes 38 member states plus two extension states. The EPO offers a centralized procedure for filing a European patent application, enabling an inventor to make one patent filing in the EPO {e.g. either directly or by entering a national phase of a Patent Cooperation Treaty (PCT) application} instead of 38 national applications. Upon grant, the patentee can register and file translations of the patent in any of the previously designated individual member countries. By filing through the EPO, the local patent offices in each EPC country will not need to independently review the application. Unless the inventor is a resident of one of the EPO member countries, the inventor must file in the EPO through a European patent agent.

The process before the EPO includes the following main steps: filing, search, publication, examination, grant, opposition (if filed by a third-party), and payment of fees (until grant). If an application contains a plurality of independent claims, which is often the case when the application was originally filed in the U.S., applicants are invited to limit the number of independent claims before the search in the EPO begins. The best approach is to have one independent claim in each category (e.g. method or apparatus/system). If the number of independent claims is not so limited, the search will be carried out on the basis of the first independent claim in each category.

The EPO performs a prior art search and issues a European Search Report and Opinion. The Search Report is published within 18 months of filing of the EP application. Since 2011, search results from other patent offices are used during the search by EPO. For example, the EPO can use search results, search opinions or examination reports (i.e. at least a relevant part of the reports concerning the search) submitted by the Applicant from various origins (e.g. Japan, Korea, U.S., PCT). No translation of the foreign search results is necessary and no copies of cited prior art documents are required. Applicants can submit these search results either upon filing the EP application, at the entry of the national‐phase (PCT), or as soon as they become available. The search results from other patent offices have no binding effect and do not replace EPO search or examination.

Applicants must request examination of the EP application within six months of the filing of the European Search Report. Further, the Applicant is obligated to correct any deficiencies noted in the search opinion when requesting examination. During examination, the EPO can issue actions with various rejections or objections to the application. The Applicant can amend the pending claims of the EP application in order to overcome any such rejections presented by the EPO. After the EPO issues a decision to grant a patent, an opposition by a third-party may be filed against the application. The opposition procedure before the EPO is an administrative, inter parties procedure that allows any European patent granted by the EPO under the EPC to be opposed by any person from the public (no commercial or other interest whatsoever need be shown). An opposition must be filed within nine months from the publication of the mention of grant of the European patent in the European Patent Bulletin.

The European patent confers rights on its proprietor, in each designated country in which it is registered, from the date its grant is published in the European Patent Bulletin. Translation of a granted European patent must be filed in some EPC Contracting States to avoid a loss of that right. Therefore, filing and prosecuting an EP patent application can be expensive and requires payment of various fees. For example, annuity payments to the EPO are required each year the EP application is pending. If the inventor registers the patent in any of the EPC member countries, the inventor must pay annuities to maintain the patent in that country as well.

The European Union has plans to introduce a Unitary Patent in the near future. As discussed above, applications for a European Patent currently need to be filed with the EPO in Munich and then translated and refiled in each applicable EPO member state. Under a Unitary Patent system, applications will only be translated into the three official languages of the EPO – English, German, and French – and they will not need to be filed in each country where the patent is to be recognized. Twenty-five EU member states will participate in the Unitary Patent system, with Spain and Italy currently declining to join.

© MICHAEL BEST & FRIEDRICH LLP

Class Actions National Institute October 24-25, 2012

The National Law Review is pleased to bring you information about the upcoming ABA Class Actions National Institute:

When

October 24 – 25, 2012

Where

  • Sax Chicago
  • 333 N Dearborn St
  • Chicago, IL, 60654-4956
  • United States of America

FDA Issues Proposed Rule on Medical Device Labeling

The National Law Review recently published an article regarding Medical Device Labeling written by William O. Jackson of von Briesen & Roper, S.C.:

On July 10, the Food and Drug Administration (FDA) released a proposed ruleon medical device labeling. The FDA promulgated the rule to “substantially reduce existing obstacles” to medical device identification. Among other benefits the FDA recognized, the rule is intended to reduce medical errors due to misidentification or incorrect medical device use and improve reporting of adverse events caused by devices.

Under the proposed rule, medical devices are required to have a unique device identifier (UDI) with a standard date format (e.g., JAN 1, 2012). The UDI will also identify the specific version or model of the device, the labeler of the device, and a production identifier, such as a lot or batch number, a serial number, an expiration date, or a manufacture date. The UDI must be in two forms: easily-readable plain-text and automatic identification and data capture (AIDC) technology format.

Subject to limited exceptions, every medical device will require a UDI. Excepted medical devices include (but are not limited to) non-prescription devices sold at retail establishments; a device used solely for research, teaching, or chemical analysis, and not intended for any clinical use; and exported medical devices. The proposed rule also has a procedure to request an exception from or alternative to the UDI requirements.

The FDA plans to phase in the UDI requirement. Class III medical devices and devices licensed under the Public Health Service Act must be labeled within one year after publication of the UDI final rule. Class II medical devices must be labeled within three years. Class I medical devices must be labeled within five years.  Finally, the proposed rule contains reporting requirements, including requiring “labelers” to submit data to the Global Unique Device Identification Database.

The FDA’s press release on the proposed rule is available here. For an example of a UDI, click here.

©2012 von Briesen & Roper, s.c

Canadian International Trade Compliance Conference – September 12-14, 2012

The National Law Review is pleased to bring you information about the upcoming Canadian International Trade Compliance Conference:

Addressing the Global Trade Compliance Concerns Involving Export Controls, Custom Compliance and Cross Border Trade in CanadaEvent Date: September 12-14, 2012
Location: Toronto, Ontario, Canada
Key conference topics
  • Assess the latest export permit requirements in Canada with Pratt and Whitney Canada
  • Address re-exports of U.S. origin goods from Canada to comply with both Canadian and U.S. export controls with Future Electronics
  • Integrate an effective anti-corruption compliance program as part of a global trade compliance program with Methanex Corporation
  • Analyze supply chain security concerns when dealing with cross border trade with Stanley Black & Decker, Inc.
  • Uncover the updates to the Export Controls List and their impact upon Canadian companies with Research in Motion Limited

Currently, international trade compliance professionals need to stay up to date on the changing regulations within Canada and also abroad. With the changes to the Export Controls List and the ever-complex nature of Canadian-U.S. cross border trade, companies need to be aware of how these changes affect their international trade compliance programs.

Canada’s relationship with the U.S. makes it imperative that the International Trade Compliance community is informed on the impact that U.S. rules and regulations can have on Canadian companies.

Building upon the success of the 2nd Annual International Trade Compliance Conference, the marcusevans Canadian International Trade Compliance conference addresses the Global Trade Compliance Concerns involving export controls, customs compliance and cross border trade in Canada.

By attending this event, industry leaders will be able to overcome any potential challenges in crafting and sustaining a comprehensive trade compliance program.

Attending This Conference Will Enable You To:

1. Dissect the latest updates from the Department of Foreign Affairs and International Trade with Research in Motion Limited
2. Comprehend the U.S. Export Reform Initiative and the impact upon Canadian companies with Public Works and Government Services Canada
3. Develop and understanding of import value and transfer pricing with Ericsson Canada Inc.
4. Focus on NAFTA and other Free Trade Agreements with Plains Midstream Canada

Industry leaders attending this event will benefit from a dynamic presentation format consisting of workshops, panel discussions and case studies. Attendees will experience highly interactive conference sessions, 10-15 minutes of Q&A time after each presentation, 4+ hours of networking and exclusive online access to materials post-event.

Audience:

SVPs, VPs, Directors, Superintendents, Supervisors, Engineers, Specialists, Leaders and Managers from the Chemical, Petrochemical, and Refining Industries with responsibilities in:

  • EHS Environmental Health and Safety
  • Safety/Process Safety Management
  • Plant Management/Operations
  • Inspection/Reliability
  • Mechanical/Asset Integrity
  • Manufacturing/Technology
  • Training & Development

Four Practical Tips for Protecting the Attorney-Client Privilege

The critical protection offered by the attorney-client privilege—maintenance of the confidentiality of communications between an attorney and client—is increasingly under attack from both government regulators and private litigants. Moreover, there are some situations in which it is not at all obvious that the protections afforded by the attorney-client privilege are put at risk. For example, in stark contrast to US attorney-client privilege protections, the privilege is not even recognized in some situations outside the US, such as conversations between business people and in-house counsel. Here are some practical tips for ensuring that your communications with counsel are protected by the attorney-client privilege and not subject to disclosure.

1. CLEARLY IDENTIFY PRIVILEGED COMMUNICATIONS

Communications that are clearly attorney-client privileged, i.e., they are made for the purpose of seeking or providing legal advice, should be identified as such. Use of phrases within the body of privileged communications, such as “I am seeking legal advice related to…” or “In response to your request for legal counsel regarding…” further confirm that the communication is privileged. Use of the “privilege” label does not create a privilege that might not otherwise exist. Therefore, do not overuse the “privilege” label; doing so may make it more difficult to establish the protection of the privilege for communications that were truly made to obtain or provide legal advice.

2. PRIVILEGE RULES OUTSIDE THE US ARE DIFFERENT

Although most countries recognize some form of attorney-client privilege, the scope and application of the privilege may vary significantly by country. For example, while communications between in-house counsel in the US and their internal business clients in the US are protected by the same privileges that apply to outside US counsel, there is no in-house counsel privilege in the majority of countries in the European Union (EU). Those countries reason that inside counsel are not independent of their employers and therefore are not entitled to the same privilege protections afforded communications with outside counsel who are deemed to be independent. EU law is also unlikely to recognize as privileged a communication between in-house counsel based in the US and a business client based in the EU. Indeed, in one case, the EU seized legal memoranda from inside counsel and relied on them to determine that a company knowingly violated the law. Case law further suggests that the EU may not even recognize as privileged a communication between outside US counsel and a business client located in the EU. The implications of the starkly different treatment of the attorney-client privilege as between the US and the EU can be serious. For example, parties to litigation in the US may attempt to seek discovery of sensitive communications between in-house counsel in the EU and internal business clients based in the EU. To maintain the protection of the attorney-client privilege outside the US to the greatest extent possible, the following steps should be taken:

  1. analyze the attorney-client privilege rules in each jurisdiction in which your company has operations,
  2. based on that analysis, determine whether it is necessary to engage local outside counsel to maximize the protection of the attorney-client privilege,
  3. limit the privileged information sent by US inside counsel to European offices, and
  4. limit access to US legal department files and servers by non-US offices.

3. USE CAUTION WHEN COMMUNICATING WITH OUTSIDE DIRECTORS

Most outside directors have other business interests, and many are employed by other companies. If these outside directors use email addresses provided by their employer or other business interests, they may subject emails relating to the company on whose board they serve, including attorney-client communications, to discovery because they have a very limited, if any, expectation of privacy related to an email address that is controlled by their employer or unrelated business interest. To protect email communications with outside directors to the greatest extent possible, the outside directors should use either an email address provided by the company on whose board they serve or a personal email address. If that is not possible, any board-related emails going to or from another company’s email address should be clearly identified in the subject line as board-related business and, if to or from an attorney, that the communication is privileged, and the outside director should segregate those emails in a separate folder.

4. IN-HOUSE COUNSEL SHOULD CAREFULLY CONSIDER THE RISKS OF SIGNING AFFIDAVITS OR SWORN STATEMENTS

Signing affidavits or other sworn statements on behalf of the company, such as verifications of discovery responses in litigation, may subject the signer to a deposition or other discovery of the factual basis on which the statement or affidavit was made. If the affidavit or sworn statement is signed by in-house counsel, protecting information obtained by in-house counsel in the course of investigating the matter that led to the affidavit or statement becomes very difficult because the act of signing may be viewed as a waiver of the attorney-client privilege. Therefore, to the extent possible, use non-attorney business people to sign affidavits or other sworn statements on behalf of the company.

In sum, recognition of those situations in which the protection of the attorney-client privilege may be at risk and adherence to best practices are necessary to continue maintaining the confidentiality of attorney-client communications.

© 2012 Andrews Kurth LLP