Category

International Business

Jun 18

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.

SOURCE:  USPTO TTAB

 

Ttab Order

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

Jun 05

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 www.bis.doc.gov.

SOURCE:   BIS

May 13

New Regulations Remove Most Satellites from ITAR Controls

By Export, International Business, News

US Commerce Department to License Export of Satellites; Move is Key Component of Export Control Reform Initiative

The U.S. Department of Commerce’s Bureau of Industry and Security (BIS) recently published regulations that will fundamentally change the nature of U.S. export controls on most commercial, scientific, and civil satellites and their parts and components. Together with a companion rule issued by the Department of State, the action moves the items from Category XV of the State Department’s U.S. Munitions List (USML) to the Commerce Control List (CCL).

Items on the USML are governed by the hyper-strict International Traffic in Arms Regulations (ITAR) and supervised by the State Department.  Most less-sensitive commercial exports on the CCL are governed by BIS, which has significantly fewer restrictions and controls than ITAR.  Thus, this move opens the door to a much broader export market for these items.

“[This] action reflects the cooperation that has made the President’s Export Control Reform Initiative such an extraordinary success story,” said Under Secretary of Commerce Eric L. Hirschhorn. “For the many American businesses that compete in this key technology sector, it means a stronger United States defense industrial base, the ability to focus the government’s limited resources on the technologies and destinations of greatest concern, an increase in the competitiveness of the U.S. satellite industry, and a reduction in the licensing burden on U.S. exporters.”

The items moving to Commerce jurisdiction include communications satellites that do not contain classified components, certain remote sensing satellites, spacecraft parts, components, accessories, attachments, equipment, or systems that are not specifically identified in the revised category, and all radiation-hardened microelectronic microcircuits.

In many instances, the updated regulations also allow the commercial, scientific and civil satellites transferred to Commerce jurisdiction to incorporate parts and components listed on the USML and remain under Commerce licensing authority.

The changes to the controls on radiation-hardened microelectronic microcircuits take effect 45 days after publication of the rule, while the remainder of the changes take effect 180 days after publication.

SOURCE:  BIS

Apr 14

Jim Chester Speaks at State Bar of Texas Annual “Advanced IP” CLE

By Blog, Customs IP Enforcement, Import, Intellectual Property, International Business, International IP, News, Technology Transactions

Dallas, Texas, 14 April 2014 – J. F. (Jim) Chester, founding partner in the Dallas-based business & innovation law firm of Chester & Jeter LLP recently presented a speech on the U.S. regulation of international technology transfers to a statewide audience of intellectual property attorneys at an event sponsored by the Intellectual Property Section of the State Bar of Texas (SBOT).

Chester’s presentation was part of the SBOT’s annual 2-day “Advanced IP” CLE program, which features many of the stats most notable IP attorneys.  This year’s event was held in Dallas, Texas.

The title of Chester’s presentation was: “International Technology Transfers”, and focused on the regulatory issues associated with the import and export of technology and IP-oriented goods and information.

Chester reports, “I was honored to be asked to participate in this program, which is one of the top IP law-oriented events in the State of Texas.  IP is an increasingly global asset, and although increased international trade creates opportunities for IP owners, there are also increased risks. I applaud the SBOT, and the IP Section in particular, for ensuring that emerging important subject like these are addressed in its programs. ”

 

 

 

About Chester & Jeter LLP

Chester & Jeter LLP is a Dallas, Texas law firm providing comprehensive legal services to innovation-based companies doing business in the US, around the world, and on the web.  Its mission (and passion) is helping entrepreneurs and emerging companies solve problems and protect their interests. Chester & Jeter LLP delivers value by providing business-savvy, cost-effective solutions to legal challenges.  The firm offers a wide array of business legal solutions, such as business entity formation (LLCs, corporations, etc.), trademarks and other intellectual property, technology transactions, contracts, ecommerce, employment law and dispute resolution.  Additional information about the firm and its attorneys may be found at www.chester-law.com

 

Feb 26

An 18-Wheeler with better Gas Mileage than your SUV?

By Blog, Innovation, Intellectual Property, International Business, News

Pedestrians passing by the Energy Department headquarters in Washington, D.C., on February 19 saw quite a strange sight—an ultra-modern 18-wheeler, Class 8 tractor-trailer parked outside the headquarters building. This is no ordinary truck—it’s called a SuperTruck, a demonstration vehicle that is part of the Energy Department’s SuperTruck initiative. This program’s goal is to develop tractor-trailers that are 50% more efficient than baseline models by 2015.

The truck on display, developed by heavy-duty manufacturers Cummins and Peterbilt, has exceeded this goal. Since 2010, the truck has demonstrated a 20% increase in engine efficiency and a 70% increase in freight efficiency, reaching over 10 miles per gallon under real world driving conditions on a Class 8 tractor-trailer. In comparison, an average Class 8 truck typically gets 5.8 miles to the gallon. This accomplishment is so impressive that the SuperTruck served as a backdrop to President Obama’s announcement of new fuel economy standards for heavy-duty vehicles.

Improving the efficiency of long-haul tractor-trailers is one of the many ways that the United States can reduce the amount of petroleum we use and the carbon pollution we produce. Commercial trucks, which include Class 8 vehicles, haul as much as 80% of the goods transported in the country. Although they only make up 4% of vehicles on the road, they use about 20% of the fuel consumed. For the complete story, see the EERE Blog

SOURCE:  US Dept of Energy

Dec 19

Ex-Im Bank Approves $694 Million to Finance Export of U.S. Mining and Rail Equipment to Australia: Transaction Supports 3,400 U.S. Jobs

By International Business, News, Technology Transactions

In a decision that will support thousands of U.S. jobs, the Export-Import Bank of the United States (Ex-Im Bank) has authorized a $694.4 million loan to Roy Hill Holdings of Australia contingent upon the purchase of U.S. mining and rail equipment from Caterpillar Inc., GE, and Atlas Copco.

According to Bank estimates derived from Departments of Commerce and Labor data and methodology, the credit will support 3,400 U.S. jobs across America. Furthermore, an estimated 20 percent of the job support will benefit small-business jobs.

“After a comprehensive review, the Bank determined that this transaction represents a significant opportunity for American exporters to create and sustain American jobs,” said Ex-Im Bank Chairman and President Fred P. Hochberg. “Our financing positions American companies on a level playing field so they can close the sales and expand their homegrown workforces. Projects this size can be difficult to finance—that’s where Ex-Im comes in. And I am proud that today’s action will support 3,400 jobs across the country, many of them at small businesses.”

Export credit agencies of several other countries have obtained preliminary or final approvals for the Roy Hill transaction as well.

The exported equipment will contribute to the development of the Roy Hill iron ore mine, an open-pit surface mine in the Pilbara region of northwestern Australia. The mine sits approximately 280 kilometers south of Port Hedland.

Ex-Im Bank’s loan increases the likelihood that Caterpillar, a leading equipment manufacturer based in Peoria, Ill., will provide surface-mining equipment for the project.

“Caterpillar applauds Ex-Im Bank for approving the long-term financing request for the Roy Hill’s Australian iron-ore project,” said Steve Wunning, group president with responsibility for the Resource Industries Group, Caterpillar Inc. “By backing this project, Ex-Im Bank is bolstering U.S. manufacturing competitiveness, supporting American jobs and promoting exports. Ex-Im Bank is also providing Caterpillar and other U.S. suppliers with the opportunity to support Roy Hill with mining equipment that may have otherwise been supplied by non-U.S. competitors using their countries’ export credit agencies. We appreciate the support of Chairman Hochberg and all the Ex-Im Bank officials who worked so hard to get us to this point.”

The financing also increases the likelihood that GE will furnish locomotives to transport the iron ore to the port.

“Ex-Im Bank’s support of the Roy Hill’s Australian iron-ore project represents a major milestone for the mining industry and U.S. job growth,” said Russell Stokes, president and chief executive officer, GE Transportation. “Further, it’s testament to the great outcomes that can be achieved through collaboration of federal and private sector leadership. We’re thrilled to have our locomotives leading the charge and enabling transport efficiencies.”

In line with its economic-impact procedures, Ex-Im Bank performed a detailed economic-impact analysis and found that the transaction will likely have a significant net positive effect on the U.S. economy. Additionally, Ex-Im Bank obtained a market-based supplemental analysis prepared by a third party that also yielded a positive finding.

ABOUT EX-IM BANK:

Ex-Im Bank is an independent federal agency that creates and maintains U.S. jobs by filling gaps in private export financing at no cost to American taxpayers. The Bank provides a variety of financing mechanisms, including working-capital guarantees, export-credit insurance and financing to help foreign buyers purchase U.S. goods and services. In the past fiscal year alone, Ex-Im Bank earned for U.S. taxpayers more than $1 billion above the cost of operations.

In FY 2013, Ex-Im Bank approved more than $27 billion in total authorizations to support an estimated $37.4 billion in U.S. export sales and approximately 205,000 American jobs in communities across the country. For the year, the Bank approved a record 3,413 transactions– or 89 percent–for small-businesses. For more information, visit www.exim.gov.

SOURCE:  US EXPORT-IMPORT BANK

Dec 15

Norwegian Tax Authority Declares “BitCoins” Property, not Currency

By International Business, Technology Transactions

Bitcoins, the online currency, have received much media attention in a short time and become an up-and-coming international means of payment.  The Norwegian Tax Administration (NTA) has weighed in on the legal classification of bitcoins by issuing a “Principle Statement” stating that, although one may accept payment in bitcoins, they are not a currency but a capital property and therefore sales using bitcoins that entail a profit will make the seller liable for Norwegian taxes. (Bruk av bitcoins – skatte- og avgiftsmessige konsekvenser, NTA website (Nov. 11, 2013).) Conversely, losses incurred through trading in Bitcoins are deductible.

While Norwegian law provides for an exemption from taxes on small winnings gained from currency exchanges in currencies commonly used for travel, the exemption does not extend to bitcoins, according to the NTA. (Marius Lorentzen, Skatteeataten har bestemt seg: handler du bitcoins må du ut med bade skatt og moms, E24 DIGITAL (last updated Nov. 22, 2013).)

The NTA’s finding that bitcoins and similar forms of payment used by online payment service units are not currencies has consequences for business owners as well. Any trade in bitcoins is subject to the 25% Norwegian VAT.

Because the use of bitcoins is new and controversial, the issue of the legal definition of such digital forms of payment is likely to eventually reach the Norwegian courts. For now, however, bitcoin users in Norway are advised to take note and keep track of their bitcoin purchases.

SOURCE:  US Library of Congress; Global Legal Monitor

Aug 19

Changes to the Foreign Trade Regulations Export Requirements

By Export, International Business

On March 14, 2013, the U.S. Census Bureau (Census) published new export reporting requirements under the Foreign Trade Regulations (FTR) in the Federal Register that become effective January 8, 2014.  Specifically, Census is requiring mandatory filing of export information through the Automated Export System (AES) or through AES Direct for all shipments of used self-propelled vehicles and temporary exports.  In addition to adopting new export reporting requirements and modifying the post-departure filing program, Census is making remedial changes to the FTR to improve clarity and to correct errors.

Changes to the FTR include:

  1. Post-departure filing (Option 4 program) (15 CFR 30.5)
    1. Post-departure (Option 4 Program) filing timeframe to complete the Electronic Export Information (EEI) in AES will be reduced from 10 calendar days to 5 calendar days.
    2. A moratorium on accepting new applications for post-departure filing is still in place.
  2. Household Goods
    1. The definition of household goods has changed to:  Usual and reasonable kinds and quantities of personal property necessary and appropriate for use by the U.S. Principal Party in Interest (USPPI) in the USPPI’s dwelling in a foreign country that are shipped under a bill of lading or an air waybill and are not intended for sale.
    2. The household goods export code can only be used for shipments where the USPPI is the ultimate consignee.
  3. Used Self-Propelled Vehicles
    1. All used self-propelled vehicles must be filed in the AES regardless of value or country of destination (15 CFR 30.2(a)(1)(iv)(H)).
    2. All used self-propelled vehicles must be filed in AES 72 hours prior to export (15 CFR 30.4(b)(5)).
  4. Port of Export (15 CFR 30.6(a)(9))
    1. Clarification of port of export specifies that the port of export for shipments by overland transportation is where the goods cross the U.S. border into Canada or Mexico, including transshipments through Canada or Mexico to other countries.
    2. The language for port of export was revised in 15 CFR 30.6(a)(9) to include FTR 15 CFR 30.6(a)(9)(i) and (ii).
  5. Split Shipments (15 CFR 30.28)
    1. The requirements regarding split shipments will apply to all modes of transportation, not just specific to the air environment as it exists today.
    2. The definition of split shipments has changed to the following:  A shipment booked for export that is divided by the carrier into more than one conveyance and sent on two or more conveyances of the same carrier from the same port within 24 hour for cargo transported by vessel and 7 days for all other modes of transportation.
  6. Exclusions
    1. AES filing is NOT required for licensed goods where the country of ultimate destination is the United States or for goods destined to international waters where the person(s) or entity assuming control of the item(s) is a U.S. citizen or permanent resident alien of the United States (15 CFR 30.2(d)(5)).
    2. The Exclusion legend is required to be reported on the bill of lading, air waybill, export shipping instructions, or other commercial loading documents.
  7. Exemptions (15 CFR 30.37)
    1. The following exemptions were ADDED to the FTR changes:
      1. Exports of technical data and defense service exemptions as defined in 22 CFR 123.22 (b)(3)(iii) are exempt from the EEI filing requirements in AES (15 CFR 30.37(u)).
      2. Reporting vessels, aircraft, cargo vans, and other carriers and containers when shipping as tools of international trade (15 CFR 30.37(v)).
      3. Shipments to Army Post Office, Diplomatic Post Office, Fleet Post Office (15 CFR 30.37(w)).
      4. Shipments exported under License Exception BAG (15 CFR 30.37(x)).
      5. Specific types of shipments destined for a country listed in Country Group E:1 (15 CFR 30.37(y)).  Country Group E:1 are Cuba, Iran, North Korea, Sudan, and Syria. These countries support acts of international terrorism.
    2. The following exemptions were REMOVED:
      1. Temporary shipments: temporary shipments of goods valued over $2,500 per Schedule B or that fall under 15 CFR 30.2(a)(1)(iv) must be filed in the AES.  When reporting temporary exports report the appropriate export information code for temporary goods, such as “TE” export intended for return and “TP” domestic merchandise (§30.37(q) and I).
      2. In-bond (in-transit) shipments (§30.37I). This is covered under the current exclusion (30.2(d)(1)).
  8. International waters
    1. International Waters Change in Definition– waters located outside the U.S. territorial sea, which extends 12 nautical miles measured from the baselines of the United States, and outside the territory of any foreign country, including the territorial water thereof. Note that vessels, platforms, buoys, undersea systems, and other similar structures that are located in international waters, but are attached permanently or temporarily to a country’s continental shelf, are considered to be within the territory of that country.
    2. For licensed shipments to international waters, it will be required that the person designated on the export license must be reported as the ultimate consignee (§30.6).
    3. For Bureau of Industry and Security license exceptions and non-licensed shipments to international waters the filer will be required to report the nationality of the person(s) or entity assuming control of the item(s) subject to the Export Administration Regulations (§30.6(a)(5)(i)).
  9. Data elements (15 CFR 30.6)
    Two data elements were ADDED:

    1. License value – Report the value indicated on the license.
    2. Ultimate consignee –There are four types: Direct Consumer, Government Entity, Reseller, and Other/Unknown. Other/Unknown is an entity that does not fall under one of the other three ultimate consignee types or whose type is not known at the time of export.

Source: U. S. Census Bureau

Feb 01

Jim Chester Speaks at DISD’s Career Day Event

By Blog, Community, Innovation, Intellectual Property, International Business, News

Jim Chester explains "intellectual property" to first graders using a "Star Wars" branded notepad as an example

J. F. (Jim) Chester,  founding partner in the Dallas-based business and intellectual property law firm of CHESTER pllc, recently spoke to students at Lakewood Elementary School as part of in Dallas Independent School District’s (DISD) career day event.

 Chester, whose law practice involves commercial IP, technology transactions and international business/trade matters, also teaches courses on International Trade Law and International Business Transactions at Baylor University Law School.   Chester spoke to a class of first graders and fifth graders about his practice, educational background and experience.

 “At CHESTER pllc, we believe in the power of innovation and creative thinking,” notes Chester.  “We strive to help our clients, our team members, and our community innovate. Participating in community service events such as DISD career day is a vital part of our firm’s mission.”

About CHESTER pllc

CHESTER pllc is a Dallas, Texas law firm providing comprehensive legal services to innovation-based companies doing business in the US, around the world, and on the web.  Its mission (and passion) is helping entrepreneurs and emerging companies solve problems and protect their interests. CHESTER pllc delivers value by providing business-savvy, cost-effective solutions to legal challenges.  The firm offers a wide array of business legal solutions, such as business entity formation (LLCs, corporations, etc.), trademarks and other intellectual property, technology transactions, domestic and international contracts, and e-commerce matters.  Additional information about the firm and its attorneys may be found at www.chester-law.com.

Dec 07

US and Mexico Gear Up for Christmas with Operation Holiday Hoax

By Customs IP Enforcement, Export, Import, Intellectual Property, International Business, International IP

The National Intellectual Property Rights Coordination Center (IPR Center) announced the kickoff of Operation Holiday Hoax, an effort to track down those who are selling counterfeit and pirated products this holiday season.

 

The U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI)–led IPR Center is working with partners U.S. Customs and Border Protection (CBP), the U.S. Postal Inspection Service, the Consumer Product Safety Commission, and the government of Mexico to target stores, flea markets and swap meets involved in the importation, distribution and selling of counterfeit and pirated products in cities across the United States and in Mexico. Additionally, CBP officers will be conducting inspections and seize counterfeit merchandise at various U.S. ports of entry.

“The counterfeiting and piracy epidemic continues to spread around the world,” said IPR Center Director Lev Kubiak. “Our partnership with the government of Mexico and the rest of our partners at the IPR Center show that this is a problem that affects everyone in the world, not just the United States. Together, we will continue to deliver blow after blow to criminals worldwide making a positive impact on American jobs here at home.”

This is the third year that the IPR Center has conducted Operation Holiday Hoax. Last year’s operation led to the seizure of more than 327,000 counterfeit and pirated items with a manufacturer’s suggested retail price worth an estimated $76.8 million. In 2009 the operation netted more than $26 million worth seized goods.

“The protection of intellectual property rights is one of CBP’s top priority trade issues,” said Assistant Commissioner for International Trade Al Gina. “Operations like this protect American businesses and consumers. CBP works daily to keep counterfeit goods out of the U.S. and to bring producers and distributors of these goods to justice.”

Last year, Mexico’s Tax Administration Service conducted 845 inspections in the main ports of entry, executed 160 search warrants nationwide and seized 23.8 million counterfeit and pirated items including 10 tons of used clothing, cigarettes, electronics, tools and DVD’s. The estimated value of the seized goods was 96.7 million pesos, or $7.1 million.

Holiday Hoax began Nov. 26 and is scheduled to run until Dec. 26. During that time federal and local law enforcement officers will seize products such as perfume, holiday lights, electronics, clothing and DVD’s. As in years past, most of these items are ordered online as part of the holiday shopping season.

Source: ICE