Photo of Mark Nieds

Mark concentrates his practice on intellectual property and Internet matters with specific emphasis on trademark selection, registration, enforcement and litigation, copyright, and trade secret protection.

For over twenty years he has advised clients on domestic and international intellectual property issues, including such matters as new product launches, corporate rebranding projects, acquisitions and licensing. He has extensive experience with U.S. and International trademark matters, from selection and clearance of marks through registration, licensing and enforcement of rights. Mark has represented trademark owners in cease and desist matters as well as in the federal courts in infringement and counterfeiting actions. He has also been involved in numerous Opposition and Cancellation proceedings in the Trademark Trial and Appeal Board.

In addition to intellectual property, Mark’s practice also encompasses internet-related legal issues. He has assisted clients with the creation and implementation of privacy policies, terms of use agreements, user agreements and DMCA compliance. Mark has also been involved in domain name litigation and cybersquatting matters and helped develop domain registration strategies for clients.

Mark is also involved in copyright registration and licensing, developing trade secret protection strategies, non-disclosure agreements and non-compete agreements, marketing and advertising review, and intellectual property due diligence projects.

Prior to joining Henderson Franklin, Mark practiced law in Chicago, Illinois. He was born and raised in Chicago and currently resides in Fort Myers. When not working, Mark enjoys cycling and triathlons.

Sales taxes have always been major revenue sources to the states, including Florida which has a state-wide 6% sales tax. However, for years, consumers have turned to the Internet to make purchases in part to be able to avoid this because most Internet sales transactions were not subject to any state or local sales tax. This changed on June 21, 2018 when the United States Supreme Court issued a 5-4 decision in South Dakota v. Wayfair overturning earlier decisions and paving the way for states to collect sales taxes from online retailers for sales of goods to in-state residents.

Previously, a state could not require an out-of-state or online retailer to collect sales taxes from its customers if that retailer did not have an actual, physical presence within the state. Over the last 20 years or so, Internet commerce and retailing has become a major part of the U.S. economy. Since online retailers without a physical presence in a state were not required to collect sales taxes, this led to trillions of dollars in online sales transactions going basically tax free. This had a direct impact on states’ sales tax revenue.

Impact of Wayfair Decision

In Wayfair, the Supreme Court recognized how the Internet has changed the economy and how consumers shop and also the realities that these changes have wrought to many states’ budget shortfalls. Now, under Wayfair, an online retailer does not need to have any actual physical presence within a state in order to be required to collect sales taxes. It will be up to the individual state to determine whether it wants the online retailer to collect sales tax or not.

On one hand, consumers stand to lose a bit under Wayfair because now Internet purchases can be subject to sales taxes at the point of checkout. In Florida such purchases have been subject to tax all along, since the state technically requires the consumer to report and pay a “use tax” on any items where sales tax was not paid at the time of purchase. However, this regulation has not been vigorously enforced rendering Floridian’s Internet purchases essentially tax free. Going forward, if Florida requires online retailers to collect the sales taxes, those taxes will be added directly to the purchase price in the online shopping cart and paid by the consumer at checkout. This makes goods more expensive to the consumer.

On the other hand, many view this as a benefit to small business because small, local businesses with physical locations often lost sales to online retailers from consumers seeking to avoid sales tax. Post Wayfair, if the online retailer is required to collect sales tax at checkout, the playing field becomes a bit more level by making online purchases potentially little less attractive and bringing consumers back to local businesses, where at least they may not have to pay shipping costs as well.

Similarly, under Wayfair, states stand to benefit because they will be able to capture a tax revenue stream more efficiently than leaving it up to the consumer to voluntarily report and pay via use tax. This new revenue can help significantly to narrow budget gaps in some states.

Bottom Line

Regardless how one looks at the costs or benefits of Wayfair, the decision does significantly alter the current sales tax environment. While it may be some time yet before we see how Florida—or any other state—will react and how it will implement any new sales tax scheme, the landscape is certainly going to change. Henderson, Franklin will continue to monitor how things may change and our attorneys are available to discuss how these changes might impact your business.

On June 21, 1788 the U.S. Constitution was ratified. It contains a clause in Article I, Section 8 providing that Congress shall have the power to

promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

This led to the Patent Act of 1790, signed into law by George Washington in April of that year. Since the founding, patent protection has been afforded to “new and useful” processes, machines, articles of manufacture, compositions of matter, ornamental designs and even plant strains. Patent protection provides inventors the right to exclude others from making, using, selling or importing an invention throughout the United States without the inventor’s consent.

Continue Reading Ten Million Patents – What a Long Strange Trip It’s Been

5Pointz

The building once known as 5Pointz was a block-long warehouse structure in Queens, NY. During the ‘90s, the area was rundown and crime-riddled. As a way to discourage vandalism to the building, the owner allowed graffiti artists to paint on the walls, giving them a canvas to display their works. Ultimately, the 5Pointz building became well known among graffiti artists and tourists and artists traveling from all around the world to add their art to the structure. For almost 20 years the developer and the artists existed this way. However, wanting to take advantage of rising real estate prices, in 2010 the owner of the building decided to redevelop it as a residential complex. The owner ultimately obtained permits to demolish the buildings and redevelop the parcel.

The Litigation

Continue Reading Landowners and Artists: Be Careful Before You Remove Street Art

It is almost that time of year — football season is approaching and with the anticipation of tailgating and touchdowns comes, of course, talk of trademarks. For years, the Washington Redskins have been fighting battles regarding their REDSKINS trademark. The issues have created much controversy due to the purported negative connotation the REDSKINS term gives to Native American groups.

Section 2(a) of the Lanham Act prohibits registration of “disparaging” marks. A number of REDSKINS trademark registrations were challenged on this basis and the Trademark Trial and Appeal Board has agreed, cancelling several such registrations. In fact, for a while it looked like the Washington Redskins might be forced to lose all trademark rights to REDSKINS and even possibly change the team name.

However, the REDSKINS case raised the question of whether Section 2(a) of the Lanham Act violated the Constitution because it constituted a government restraint of free speech. That is, to what extent can the government pass substantive review on terms that are meant for use in the private sector for commercial purposes?

THE SLANTS, SCOTUS and Disparagement

Simon Tam is a musician and formed a band. About eight years ago he sought trademark registration for the band name, which is not uncommon. Here though, the trademark at issue was THE SLANTS. The mark was refused registration because SLANT was viewed as a disparaging term directed toward Asians. Mr. Tam challenged that refusal and it ultimately found its way to the Supreme Court.

On June 19, 2017, the Supreme Court ruled in favor of Mr. Tam finding that Section 2(a) the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional because it constituted viewpoint discrimination. Accordingly, the refusal to register THE SLANTS based on the government’s conclusion that the term was disparaging was improper.

The fate of the REDSKINS mark has been somewhat contingent on the outcome reached in Tam because the argument supporting cancellation of the REDSKINS trademarks was based on Section 2(a) in that REDSKINS was disparaging. With that section of the Lanham Act declared unconstitutional, the Washington Redskins have the opportunity to regain protection for the REDSKINS mark.

Thank you to our Summer Associate Madison Allen for her contributions to this post!

Photo courtesy of Keith Allison Under Flickr Creative Commons License

pro-basketball-team-1594634_1920(1)While we have written on this topic in the past, because the NCAA Basketball Tournament is an annual event and the NCAA gets more aggressive each year, this information bears repeating. Because businesses sometimes tie promotions to the Tournament and use it as a marketing activity, they should be careful how they do so.

The Problem

Continue Reading Don’t Foul Out with MARCH MADNESS Marketing

Eagles_in_concert_September_2014(To the tune of Hotel California)

Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?

During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.

Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free

Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….

What Can That “Song” Possibly Mean?

Continue Reading Litigating it up at the HOTEL CALIFORNIA

new-years-day-1926337_1920

Intellectual Property Resolutions: Take Stock of Your IP Assets

Often people resolve in the New Year to take stock of their assets to see where they are in terms of not only protecting what they have but also to implement long-range planning and goals. While businesses may often check their status and progress against things like five-year plans, they should not forget to also take stock of their assets, especially Intellectual Property (“IP”) assets. IP assets can often be the most important assets to a business. Unfortunately, they can also be the most overlooked and under-protected.

With the new year upon us, this is an opportune time for businesses to audit their IP to make sure these important assets are secure by following these three steps:

  1. Identify all of a company’s IP in its various forms such as trademarks, copyright, trade secret and patents.
  2. Review those assets to ensure they are properly protected, including review of registration status, reviewing licenses and contractor agreements or non-disclosure agreements.
  3. Develop internal policies to make sure newly created IP is documented and protected as well as procedures to ensure secrecy of proprietary information.

Our Intellectual Property practice group is available to assist with auditing your IP assets and to devise IP protection plans. For more information, please feel free to contact me at mark.nieds@henlaw.com.

Business Law Resolutions

It’s that time of year when we all make New Year’s Resolutions to improve ourselves. From Henderson Franklin’s Business and Tax Practice, Erin Houck-Toll reminds us that as you make and implement your personal resolutions, don’t forget your business. This is a good time to review your business’ governing documents—bylaws, operating agreements, employment agreements and shareholder agreements—to ensure they still make sense, both in terms of current law and tax strategies, as well as how you are actually operating. If you have any questions, please feel free to email me at erin.houck-toll@henlaw.com.

For all of 2016, one of the most significant developments in the Intellectual Property field was the implementation of the Defend Trade Secrets Act of 2016 (“DTSA”).

Federal Rights

Before implementation of the DTSA, trade secret protection was a matter of state law. While businesses had federal rights for patents, trademarks and copyrights, trade secret was solely governed at the state level. The DTSA changed this legal landscape to provide legal uniformity and federal protection for trade secrets as well as access to the federal courts to enforce trade secrets.

Under DTSA a “trade secret” is broadly classified as any “form of intellectual property that allow[s] for the legal protection of commercially valuable, proprietary information.”

As noted, under the DTSA, a trade secret owner can sue for misappropriation n the federal courts. This is a significant development because having adjudicated patent infringement matters for decades, the federal courts are prepared to understand complex trade secrets and the technologies behind them.

Continue Reading A Look Back on 2016 in Intellectual Property: Congress Gives a Present to Innovators

Under the Digital Millennium Copyright Act (“DMCA”) any website that allows site users to post content, including anything such as comments, reviews or videos is considered a “Service Provider.” A Service Provider is potentially exposed to copyright infringement liability based on content posted by site users. However, the DMCA also offers a Safe Harbor that, under certain conditions, can insulate Service Providers from third-party copyright infringement claims based on such user-generated content.

To qualify for protection under this Safe Harbor, the Service Provider must meet certain conditions:

  1. the Service Provider must not know about or participate in the infringing conduct and cannot benefit from that infringement;
  2. the Service Provider must promptly remove any infringing content once it discovers same, either on its own discovery or by notice from a third-party; and,
  3. to qualify for the Safe Harbor, a Service Provider must designate an agent to receive notice of copyright infringement claims and must register the identity of that agent with the U.S. Copyright Office.

New Law

Continue Reading Important Action All Website Owners Should Take As Soon As Practical

BrexitBy a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term

Continue Reading BREXIT: What does it mean to your Intellectual Property in Europe?