Monthly Archives

June 2014

Washington Resdkins Trademark Registrations Canceled by USPTO

By Blog, Intellectual Property, International Business

In a recent decision by the Trademark Trial and Appeal Board (TTAB), the administrative appellate body of the United State Patent and Trademark Office (“USPTO”), the USPTO cancelled the registrations of a handful of trademarks owned by the NFL’s Washington Redskins.

The ruling held the name “R\redskins” to be disparaging, with the TTAB stating:
“. . . petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.”

The USPTO’s ruling means that the Redskins, whose team name has been the subject of controversy over the years, will no longer enjoy some of the rights and privileges afforded to owners of USPTO-registered marks.

This decision does not require the football club to change its name, although the TTAB decision certainly looks like a “win” (at least for now) for the small but vocal current movement to try to persuade (or force) the club to change its name.

That said, the Washington Redskins retain their common law rights to their names and logos, which are well-recognized throughout the US (and many foreign countries) as marks owned by the club.



Ttab Order

USPTO TTAB Order – (as posted on web by Washington Post)

Independent Contractor or Employee?

By Employment

I am asked all the time, “I 1099ed that person, she is a contractor. Right?” For some reason lots of decision makers believe that a 1099 and calling someone an independent contractor makes a person a contractor.

The truth is . . . nope.  Whenever I talk to folks about this issue, I try to get them to think about trades people; a plumber is the classic example of a contractor, unless you are running a plumbing business.  But for this discussion we aren’t.

When we hire a plumber, he comes to where we want the work done, drives his own truck, brings his own tools, pays his own expenses, and he does the work using his own experience; we don’t give him any direction as to how the job should be done.

The plumber’s work has no bearing on the work of our businesses.  Once the plumber is done, we pay him and he moves on to the next job.

Now, with that example in mind, take a look at your current workforce.  Do your contractors look like the plumber or do they look like employees. They may be employees if:

They have been working for you for an extended period of time;
They work in the same business as your business;
You provide them with direction in the means and manner of their job;
You pay them like your employees; or
They only work for you.

I could go on, but if you answered yes to any of these questions, your contractors might be employees.

The Texas Work Force, the IRS, the Department of Labor, and Texas Courts use multi-factor tests to determine if an independent contractor is truly an employee.  So, if you are relying on a 1099, to justify calling someone an employee, you might have some issues. You may need to reclassify them as employees and that is where it gets tricky.
Post by: Michael Melder

Drug Testing Employee Candidates: Medicinal Use of Marijuana in the Great State of Texas

By Employment

Just the facts Ma’am:

Candidate lives in California and obtains a prescription for marijuana.  We are going to assume that she used the prescription as prescribed. Wink!

She then moves to Texas and applies for a job.  But wait, the employer performs drug testing.

What is the employer’s obligation?  Could it refuse to hire the candidate, despite the candidate’s “legal” use of marijuana?

My advice was for the candidate and you might be shocked at what it was, but I digress.

What is the employer’s obligation if the candidate’s test is positive?  The candidate has legally used marijuana.

The short answer:  The employer can elect not to hire the candidate.

But the candidate was using marijuana legally!  Not according to Texas and federal criminal statutes.  The stuff is still illegal in most states and federally.

Many states are flexing their statehood muscle and passing laws that fly in the face of federal laws.  Decriminalizing the use of certain drugs is just one example of states exercising their rights.

Although California has elected to legalize the use of medicinal marijuana, Texas still considers the possession and use of it illegal and so does the United States of America.

If you are thinking that this might be an ADA issue, think again.  Illegal drug use is specifically excluded from the definition of a “qualified individual with a disability.”  However, the use of the illegal drugs must be the reason for the decision not to hire an otherwise qualified individual with a disability.

So a Texas employer confronted with an issue like this should first look to its policy on drug testing.  Follow the policy and apply it consistently.
Post by: Michael Melder

Dutch Fokker to pay $10.5 Million Export Penalty

By Export, International Business

Dutch Company Agrees to Pay $10.5 Million Civil Penalty to Settle Commerce Department Charges Involving Illegal Exports and Reexports to Iran and Sudan

The U.S. Department of Commerce’s Bureau of Industry and Security (BIS), Office of Export Enforcement (OEE), recently announced that Fokker Services B.V. (“Fokker Services”), a Netherlands-based aerospace services provider, has agreed to a $10.5 million civil settlement agreement in connection with the illegal export and re-export of aircraft parts, technology, and services to Iran and Sudan, both of which are subject to U.S. sanctions, including BIS licensing requirements. The settlement was reached as part of a global settlement involving the U.S. Department of Justice and the U.S. Department of the Treasury’s Office of Foreign Assets Control (OFAC).

“The scope of today’s global settlement with Fokker Services highlights the egregious nature of the violations and points to the commitment of OEE to pursue and prosecute those responsible no matter where they are located,” said Under Secretary of Commerce Eric L. Hirschhorn. “OEE and our partner law enforcement colleagues will continue to use all means available to ensure that U.S. technology does not fall into the wrong hands.”

The $10.5 million settlement with BIS also in part resolves the OFAC allegations. Under a deferred prosecution agreement entered into with the Department of Justice, the company is forfeiting an additional $10.5 million.

BIS has charged Fokker Services with 253 separate violations of the Export Administration Regulations (EAR), including for the export or reexport of items controlled for national security, missile technology and antiterrorism purposes. The charges include transactions involving Iranian military end users and violations of the terms of a temporary denial order in force at the time against Iran Air. The charges result from an investigation by OEE, along with the Federal Bureau of Investigation, the Defense Criminal Investigative Service, and Homeland Security Investigations, that uncovered numerous violations that occurred between 2005 and 2010. The investigation found that Fokker Services systematically engaged in activity to avoid detection by U.S. investigators by taking steps to conceal the ultimate destination of the transactions.

Fokker Services is based in the Netherlands and is a subsidiary of Fokker Technologies Holding B.V., a manufacturing and technical services company also based in the Netherlands. Fokker Services had three subsidiaries: Fokker Aircraft Services, B.V., based in the Netherlands; Fokker Services Asia Pte. Ltd., based in Singapore; and Fokker Services, Inc., based in Atlanta, Georgia. Since 2010, Fokker Services has ceased all business with sanctioned countries and has implemented a new compliance program. Under the settlement, Fokker Services accepts and acknowledges responsibility for its conduct and that of its employees. The settlement is subject to final review and approval by the Assistant Secretary for Export Enforcement.

BIS controls exports and reexports of commodities, technology, and software for reasons of national security, missile technology, nuclear non-proliferation, chemical and biological weapons non-proliferation, crime control, regional stability, foreign policy and anti-terrorism. Criminal penalties and administrative sanctions can be imposed for violations of the Export Administration Regulations. For more information, please visit