Attorneys at Law Since 1943

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Published Opinions

Our attorneys frequently share their insight and expertise on today’s most intriguing legal and business issues. These timely bylined articles, which address complex legal rulings, regulatory changes and other informative topics, can be found in leading business, legal and scholarly journals.

Published Opinions
7.23.2018: 
Article by Shareholder Joseph R. Englander Featured in Daily Business Review

Red Hen Confusion Is a Trademark Lesson for All

By: Joseph R. Englander

As Printed in The Daily Business Review July 17, 2018

The story of the Little Red Hen is old and familiar. None of the hen’s animal friends would help make the bread. When asked to help, “Not I!” the grammatically correct animals would reply. However, all the animals came around after the hard work was done and it was time to eat. The hen did not share with the latecomers, and ate the bread with her chicks. The story remains a lasting allegory for the benefits of hard work.

However, the story should also serve as a reminder that a person who builds something has to say no to stragglers who come later to reap the hard worker’s rewards. This story has special relevance in the world of trademark law, as illustrated by the commotion currently surrounding the Red Hen restaurant in Washington, D.C. 

Confusion recently reigned among several restaurants named Red Hen when a standalone restaurant was in the news for denying service to Sarah Huckabee Sanders. Other unaffiliated restaurants received invective and social media commentary from potential diners and others, which affected the restaurants’ businesses. The confusion may have been avoided if the first restaurant to use the mark enforced it, and later restaurants sought to clear their intended use of Red Hen before opening.

Building a trademark can be like making bread. Before baking, a baker starts with the right flour to make dough, kneads it and gives it time to proof or develop before baking. Similarly, a trademark for a business starts with a good protectable name. Then the business owner develops goodwill through providing excellent goods or services under the trademark. The goodwill becomes a reputation among buyers over time. A business owner should ensure that no competitors benefit from their hard work and reputation.

The first step in making the bread is selecting the right ingredients. The best starting ingredient for a strong trademark is a coined or arbitrary word. CLOROX and EXXON are coined marks. These words never existed before the companies owning them used them. Arbitrary words would have nothing to do with a product. For example, APRICOT for condominium property management services would be arbitrary. Descriptive terms may be able to become strong marks, but only if they include the ingredient of acquired distinctiveness. While a trademark attorney should recommend a coined or arbitrary mark to a business from the start, it is a business reality that many existing marks rely upon acquired distinctiveness to be protectable.

Acquired distinctiveness, also known as secondary meaning, is the energy (kneading) and time (proofing) the business owner has put into its goods or services under its name. Florida courts consider four factors listed in Conagra v. Singleton, an 11th Circuit decision in 1984, in determining whether a mark has acquired distinctiveness:

  • The length and manner of its use;
  • The nature and extent of advertising and promoti
3.28.2018: 
Shareholder Gil O. Acevedo Featured in April 2018 Issue of The Florida Bar Journal
Shareholder Gil O. Acevedo was featured in an article titled "To Withhold, or Not to Withhold, That is the Question. A Step by Step Approach to the FIRPTA Income Tax Withholding" in the April 2018 issue of The Florida Bar Journal (Volume 92, No. 4, April 2018).
3.13.2018: 
Shareholder Esther E. Galicia Featured in Winter 2018 issue of Trial Advocate Quarterly
Shareholder Esther E. Galicia was featured in the Winter 2018 issue of Trial Advocate Quarterly by the Florida Defense Lawyers Association. The article was originally published in Trial Advocate Quarterly (Volume 37, Number 1,Winter 2018).
7.27.2017: 
Shareholder Esther E. Galicia Featured in Summer 2017 Issue of Trial Advocate Quarterly
Shareholder Esther E. Galicia was featured in the Summer 2017 issue of Trial Advocate Quarterly by the Florida Defense Lawyers Association. The article was originally published in Trial Advocate Quarterly (Volume 36, Number 3, Summer 2017).
5.3.2017: 
Article by Shareholder Stephen R. Gross Featured in JD Supra

Shareholder Stephen R. Gross's article titled, "Carefully Crafted Allegations Still Control Early Resolutions" has been featured in JD Supra.

To read, please click here.

4.10.2017: 
Article by Shareholder Rory E. Jurman Featured in Law360
Shareholder Rory Eric Jurman wrote an article titled "How Fla. Insurers Can Deal With Bad Faith Claims" featured on Law360. To read part 1 please click here, for part 2 click here
4.3.2017: 
The Discoverability of Physician Peer Review and Disciplinary Records Under State and Federal Law in Florida State and Federal Courts

Associate Stephen P. Smith’s article titled “The Discoverability of Physician Peer Review and Disciplinary Records Under State and Federal Law in Florida State and Federal Courts” has been featured in the Florida Bar’s Health Law Section’s Newsletter.

To read, please click here

2.2.2017: 
Shareholder Esther E. Galicia Featured in the Winter 2016 Issue of the Trial Advocate Quarterly
Shareholder Esther E. Galicia was featured in the Winter 2016 issue of Trial Advocate Quarterly by the Florida Defense Lawyers Association. The article was originally published in Trial Advocate Quarterly (Volume 36, Number 1, Winter 2016).
11.23.2016: 
Florida’s Second District Court of Appeal Declares Florida’s Non-Economic Damages Caps Unconstitutional in Medical Malpractice Personal Injury Actions

Associate Stephen P. Smith's article titled, "Florida’s Second District Court of Appeal Declares Florida’s Non-Economic Damages Caps Unconstitutional in Medical Malpractice Personal Injury Actions" has been featured in JD Supra.

To read, please click here.

11.7.2016: 
U.S. Supreme Court to Weigh In On the Use of Nursing Home Arbitration Agreements

Associate Stephen P. Smith's article titled, "U.S. Supreme Court to Weigh In On the Use of Nursing Home Arbitration Agreements" has been featured in JD Supra.

To read, please click here.

10.24.2016: 
Florida’s 2nd Dist. Ct. of Appeal Upholds the Enforceability of Arbitration Agreements in Disputes with Nursing Homes While Striking Down Provisions Requiring Each Party to Bear Its Own Attorney's Fee

Associate Stephen P. Smith's article titled, "Florida’s Second District Court of Appeal Upholds the Enforceability of Arbitration Agreements in Disputes with Nursing Homes While Striking Down Provisions Requiring Each Party to Bear Its Own Attorney’s Fees" has been featured in JD Supra.

To read, please click here.

10.19.2016: 
"Recent Blows to the Use of Forced Arbitration Agreements by Florida Nursing Homes"

Associate Stephen P. Smith's article titled, "Recent Blows to the Use of Forced Arbitration Agreements by Florida Nursing Homes" has been featured in JD Supra.

To read, please click here.

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