Insights & Tips


André Castaybert PLLC

                                                  By Karen E. Clarke, Of Counsel      Since the federal Defend Trade Secrets Act (“DTSA”) took effect in May 2016, a handful of district courts have had occasion to address the pleading requirements for a …

Category: Commercial Litigation | Intellectual Property Law

André Castaybert PLLC

What do you do when you suspect there has been a trade secret theft? Do you wait until you have sufficient evidence of misappropriation before proceeding to file either a declaratory judgment action or an ex parte temporary restraining order? Or do you …

Category: Commercial Litigation | Intellectual Property Law

André Castaybert PLLC

By: Karen E. Clarke, Of Counsel      As discussed in our June 8, 2016 article, 28 U.S.C. § 1782 is a helpful U.S. statute that enables foreign litigants to obtain documentary or testimonial evidence from U.S. persons “for use in a proceeding in a forei …

Category: Commercial Litigation and Arbitration | Discovery Practice

André Castaybert PLLC

Cybersecurity is a growing area essential for protecting confidentiality of trade secrets. Keep up with this rapidly expanding field by learning about cybersecurity developments put together by CREATe.org. To learn more how CASTAYBERT PLLC can assist y …

Category: Commercial Litigation

André Castaybert PLLC

New York offers a well-established body of law providing a reliable platform for adjudicating and resolving disputes. In New York, the arbitrators have authority to determine whether there is arbitral jurisdiction, so long as parties showed an intentio …

Category: Business Transactions | Commercial Litigation | Commercial Litigation and Arbitration

André Castaybert PLLC

New York offers a great number of arbitrators and advocates with extensive experience in complex commercial matters in both domestic and international settings. New York attorneys are familiar with cross-cultural perspectives and industry practices and …

Category: Business Transactions | Commercial Litigation | Commercial Litigation and Arbitration

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A HIGHLY REGARDED BODY OF CONTRACT LAW New York offers a well-established body of law providing a reliable platform for commercial transactions and adjudicating business disputes. The parties have few limits on structuring their contractual relationshi …

Category: Business Transactions | Business and Employment Litigation | Commercial Litigation | Commercial Litigation and Arbitration

André Castaybert PLLC

By: Karen E. Clarke, Of Counsel As discussed in our June 8, 2016 article, 28 U.S.C. § 1782 is a helpful U.S. statute that enables foreign litigants to obtain documentary or testimonial evidence from U.S. persons for use in a proceeding in a foreign or …

Category: Business Transactions | Commercial Litigation | Discovery Practice

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Andre Castaybert recently became a member of the New York International Arbitration Center (NYIAC). The NYIAC is a nonprofit organization promoting the conduct of international arbitration in New York. NYIAC develops programs and materials about intern …

Category: Commercial Litigation

André Castaybert PLLC

The New York Appellate Division Third Department determined Supreme Court properly withheld from disclosure both tax returns and documents which reflect information included in tax returns: ” ‘The policy behind the [tax] secrecy provisions is twofold: …

Category: Business Transactions

André Castaybert PLLC

A group of freelance photographers contracted to shoot NFL games may press forward with a claim that they were forced to enter into unconscionable licensing agreements that cost them their ability to sell higher-value commercial licenses. The seven pho …

Category: Commercial Litigation

André Castaybert PLLC

Tiffany Tibbot writes on the topic of The Basics of Patent Protection for Design on Maker’s Row reviewing how to protect your designs. Tibbot’s number one lesson: fashion design cannot be protected but the pieces that make up the design can be. Things …

Category: Fashion Law | Intellectual Property Law

André Castaybert PLLC

In a recent article on artsy.net, Isaac Kaplan explores How Much Do Artists have over a Work after It Sold. As Kaplan explains, under VARA the answer is, yes. The Visual Artists Rights Acts (VARA) provides visual artists control over the attribution an …

Category: Art Law

André Castaybert PLLC

New York employees will be eligible for paid leave to care for family members under the new Paid Family Leave Law, effective January 1, 2018. Phased in over a four-year period with eight weeks of leave in 2018, ten in 2019, and ultimately twelve in 202 …

Category: Employment Law

André Castaybert PLLC

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Category: Commercial Litigation and Arbitration | Discovery Practice

André Castaybert PLLC

Parties to legal proceedings pending outside of the United States should be aware of a helpful U.S. statute, 28 U.S.C. § 1782, which provides a vehicle to obtain evidence from U.S. persons for use in a proceeding in a foreign or international tribunal. …

Category: Commercial Litigation and Arbitration | Discovery Practice

André Castaybert PLLC

The Clarion List recently published an article regarding the five questions to ask before buying art, available here. To summarize: Is it a good fit?  Consider how the piece fits into your existing collection and where you would display it. Many galler …

Category: Art Law

André Castaybert PLLC

Lexology recently highlighted some issues regarding surnames as trademarks under the new European Union Trade Mark regulation, available here. In short: Under U.S. trademark law, a mark that is primarily a surname cannot be registered without proof tha …

Category: Intellectual Property Law

André Castaybert PLLC

IFB recently published their 5 Essential Elements for a Successful Brand Partnership, available here. To recap, whether you are a brand or a blogger, you should: 1) Be clear on who you are, what you stand for, and what value you are adding to your audi …

Category: Fashion Law | Intellectual Property Law

André Castaybert PLLC

New York Law Journal recently published an article discussing a copyright case involving pre-1972 sound recordings, available here. To recap: Under current federal copyright law, music recorded after 1972 is entitled to certain protections, but it is u …

Category: Intellectual Property Law

André Castaybert PLLC

Should a personal injury plaintiff be compelled to give a court unlimited access to her Facebook account? According to the Appellate Division, First Department, the answer is no, but a dissenting opinion calls for a reevaluation of the Court’s decision …

Category: Appellate Practice

André Castaybert PLLC

WWD recently published an article exploring the importance of hashtags and trademark protection to retailers, available here.  To recap: Brands often use hashtags for their marketing campaigns.  For example, Madewell’s #everydaymadewell, Hudson’s #lety …

Category: Fashion Law | Intellectual Property Law

André Castaybert PLLC

Trademarks help customers identify the source of a product or service.  Although trademarks help prevent consumer confusion, start-ups often have misunderstandings about the process or trademark law.  Westfair Online recently published an article about …

Category: Intellectual Property Law

André Castaybert PLLC

Art insurance is essential for any art collector because it safeguards both the investments in art and the artworks themselves. It also protects both the current owner and future owners. The Clarion List recently published a useful reminder about the i …

Category: Art Law

André Castaybert PLLC

In the February 2016 edition of WIPO Magazine, CREATe’s Pamela Passman shared “eight steps to secure trade secrets,” available here. To summarize: Implement business procedures to reinforce non-disclosure agreements. A company’s overall corporate polic …

Category: Business and Employment Litigation | Intellectual Property Law

André Castaybert PLLC

The first steps in establishing your business are often the most critical. According to a recent Maker’s Row article, these three tasks are the most essential when launching your business: Establish your name. Write down a list of 10 possible names you …

Category: Fashion Law

André Castaybert PLLC

About 375,000 visual artists in the United States operate their businesses without a corporate structure, which not only leaves them vulnerable to personal liability but also prevents them from enjoying certain tax benefits. Art Law Journal recently wr …

Category: Art Law

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Chris Martin, founder of Last Match Studios and designer of original apparel graphics, is claiming that some of his original designs, known as the “Martin Designs” were copied by the designers at Ralph Lauren’s Denim & Supply used printed on graphi …

Category: Fashion Law

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  A situation familiar to many artists pursuing their creative careers while working another job to pay the bills, was brought to light in the Tax courts with a case involving the I.R.S and the artist, and professor, Susan Crile. Crile, whose work …

Category: Art Law

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On October 20, 2015, The Sixth Circuit Court of Appeals has re-confirmed, once again, that recipes are not subject to copyright protection. The original ruling arose in the case of Rosemarie Carroll, who accused ex-business partner Larry Moore, and oth …

Category: Intellectual Property Law

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Who will be the footwear industry’s consumer in 2030? A consumer influenced by sustainability, fashion and the rising cost of labor and leather, according to World Footwear, a research initiative of Portuguese Footwear, Components and Leather Goods Man …

Category: Fashion Law | Intellectual Property Law

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Does your company have policies to cover trade secret protection? If not, take a look at the following sample model policies developed by CREATe.org. These model policies can be tailored to your companies’ specific requirements and business situation. …

Category: Intellectual Property Law

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Are you confused about what a “trademark” is? What about a “copyright?” Or a “patent?” Do you know what the differences are? Take a look at this infographic designed by Designtaxi.com. To learn more how CASTAYBERT PLLC can assist you in trade secret ma …

Category: Intellectual Property Law

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Last month, the Federal Trade Commission issued a first-ever Policy Statement outlining its approach to policing “unfair methods of competition” under Section 5 of the FTC Act. For a breakdown of this Policy Statement and its possible effects on privat …

Category: Intellectual Property Law

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According to the Center for Responsible Enterprise and Trade, or CREATe.org, the loss of trade secrets — ranging from proprietory formulas to confidential information to production methodologies — can have a devastating impact on a company. When there …

Category: Intellectual Property Law

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An S Corporation, also known as an S Corp, is a special type of corporation created through an IRS tax election. An eligible domestic corporation can avoid double taxation (once to the corporation and again to the shareholders) by electing to be treate …

Category: Business Transactions | Commercial Litigation | Corporate

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A partnership is one business in which two or more people share ownership. Each partner contributes to all aspects of the business, including money, property, labor or skill. Each partner, in return, shares the profits and losses of the business. Becau …

Category: Business Transactions | Commercial Litigation | Corporate

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A corporation, or a C corporation, is an independent legal entity owned by shareholders. This means the corporation itself and not its shareholders is held legally liable for the actions and debts the business incurs. Corporations are more complex than …

Category: Business Transactions | Commercial Litigation | Corporate

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A cooperative is a business or organization that is owned and operated for the benefit of those using its services. Profits and earnings generated are distributed among the cooperative members, who are known as user-owners. An elected board of director …

Category: Business Transactions | Commercial Litigation | Corporate

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A limited liability company (LLC) is a hybrid legal structure providing the limited liability features of a corporation with the tax efficiencies and operational flexibility of a partnership. The “owners” of an LLC are called “members.” Depending on th …

Category: Business Transactions | Commercial Litigation | Corporate

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A sole proprietorship is the simplest and most common structure to choose when starting a business. It is an unincorporated business owned and operated by one individual with no distinction between the business and you – the owner. As owner, you are en …

Category: Business Transactions | Corporate

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Why am I starting a business? What kind of business do I want to start? Who is my ideal customer? What products or services will my business provide? Am I prepared to spend the time and money needed to get my business started? Who is my competition? Wh …

Category: Business Transactions | Corporate

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According to the most recent regulatory framework, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has established a uniform domain name dispute resolution policy that is applicable to all registrars of .com, .net and .org domain name …

Category: Intellectual Property Law

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Congress enacted the Anti-Cybersquatting Consumer Protection Act which prohibits certain types of cybersquatting. The statute amended the Lanham Act to make it a type of trademark infringement if a domain name containing a distinctive or famous tradema …

Category: Intellectual Property Law

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Cybersquatting is a broad term used in the trademark and internet communities to describe the bad faith registration of domain names. Cybersquatting encompasses registration of domain names containing trademarks, either to sell back to the trademark ow …

Category: Intellectual Property Law

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In the United States, mere registration of a domain name does not constitute use of the domain name as a trademark. Accordingly, the courts have found that mere registration of a domain name, with no other act, does not constitute trademark infringemen …

Category: Intellectual Property Law

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No. It is true that an internet site may be accessed through the domain name by internet users anywhere in the world. Courts in the United States have ruled that mere registration of a domain does not constitute use of the domain name as a trademark. T …

Category: Intellectual Property Law

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A particularly egregious form of trademark infringement is called counterfeiting. Counterfeiting consists of the use of a substantially identical copy of a registered trademark on the same goods or services for which the original mark is registered. Th …

Category: Intellectual Property Law

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Section 43(c) of the Lanham Act defines three defenses to a claim of dilution under the federal statute: comparative advertising, noncommercial use, and news reporting and commentary. The comparative advertising defense is conditioned on the challenged …

Category: Intellectual Property Law

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Trademark dilution is the use of a mark or trade name in a way that dilutes the distinctive quality of a famous mark. Unlike traditional infringement claims, to establish a claim for dilution, the owner of a famous mark does not need to demonstrate tha …

Category: Intellectual Property Law

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Unfair competition is the same as trademark infringement except without the requirement of the existence of an enforceable trademark. Seriously, unfair competition is the creation of a false impression as to the source, origin, sponsorship or endorseme …

Category: Intellectual Property Law

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The key issue in determining infringement is whether there is a likelihood of confusion caused by the alleged infringer’s use of the owner’s mark (or something similar). The courts look at several factors in assessing likelihood of confusion. The facto …

Category: Intellectual Property Law

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If at any time after a mark has been registered, a third party believes that the registration is statutorily invalid, that party may file a petition for cancellation of the registration. Cancellation proceedings are similar to oppositions and are also …

Category: Intellectual Property Law

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All trademark applications that have been approved for registration are published in a weekly Official Gazette. Any party that believes it will be injured by the issuance of a trademark registration may oppose that registration by filing a Notice of Op …

Category: Intellectual Property Law

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When the original version of a mark is replaced with a newer or updated version there is a risk that a third party can claim the mark has been abandoned. For purposes of determining priority there is a risk that the new version may be so altered so as …

Category: Intellectual Property Law

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The owner must take action against third party infringers of the mark. In short the owner must “police” his mark. Failure to prosecute infringers can substantially weaken the strength of the mark and thus the owner’s ability to stop future unauthorized …

Category: Intellectual Property Law

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While a trademark can be licensed to another by the owner, the owner must exercise control over the quality of the licensee’s goods. Therefore, in order for the owner to license its mark and keep ownership of it at the same time, certain responsibiliti …

Category: Intellectual Property Law

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Trademark rights can also be lost when the mark is used as the generic name for a product or service and thus ceases to serve its function of identifying the source (and quality) of the product or service. When a trademark owner itself uses the mark as …

Category: Intellectual Property Law

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Because trademark rights are based on use, when a trademark owner discontinues its use of a mark, this can result in abandonment. However, the fact that use of the mark has stopped does not, by itself, mean that it has been abandoned. In order for a ma …

Category: Intellectual Property Law

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Unlike copyrights or patents which have a limited life, trademarks, at least theoretically, can exist indefinitely. However, under certain circumstances, trademarks can be “lost.” A trademark is “lost” when it ceases to identify the origin or quality o …

Category: Intellectual Property Law

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The T and SM symbols are symbols that a trademark owner may use to indicate that a term is considered a trademark (T) or service mark (SM) when the term has not been registered. Use of these symbols puts third parties on notice that trademark rights ar …

Category: Intellectual Property Law

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The ® symbol may only be used in connection with marks that are registered with the PTO and only when used in connection with the goods or services covered by the registration. The symbol should be displayed next to the word, logo, or drawing which is …

Category: Intellectual Property Law

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A federal trademark registration can become incontestable if the mark has been used continuously for any consecutive five-year period after registration upon the filing of a Declaration of Incontestability. Accordingly, either simultaneously with the f …

Category: Intellectual Property Law

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Yes. Pursuant to Section 8 of the Lanham Act, the owner of a trademark registration is required to periodically submit a declaration attesting to and demonstrating that the mark is still in use in commerce. The Declaration of Use must initially be subm …

Category: Intellectual Property Law

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Yes. Trademark registrations that issued or were renewed on or after November 16, 1989, must be renewed every ten years. The renewal application is due on the tenth anniversary of registration. The initial renewal period for registrations that issued b …

Category: Intellectual Property Law

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Section 2 of the Lanham Act prohibits registration of a mark that: Consists of or comprises immoral, deceptive or scandalous matter (Example: Dick Heads and design of male genitalia for restaurant services). Consists of matter which may disparage or fa …

Category: Intellectual Property Law

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The Supplemental Register is reserved for designations which are deemed to be capable of serving a trademark function, but which do not yet do so, such as descriptive marks and marks which are primarily merely surnames.

Category: Intellectual Property Law

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The Principal Register is the primary register in the United States. Only marks that are distinctive, or have acquired distinctiveness may be registered on the Principal Register.

Category: Intellectual Property Law

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The United States Patent and Trademark Office (“PTO”) issues federal trademark registrations after a detailed application process. Specific information on the trademark application process, including downloadable and electronic application forms, can b …

Category: Intellectual Property Law

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A simple or initial search may include a basic search of trademark directories, or the use of online trademark search systems that contain federal and state trademark registration information. This type of search may reveal quickly and inexpensively wh …

Category: Intellectual Property Law

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Trademark availability searches can be performed in various ways and in varying degrees of complexity and comprehensiveness.

Category: Intellectual Property Law

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There is no requirement that a trademark availability search be performed before the adoption of a trademark or the filing of a trademark application. Notwithstanding the foregoing, performing a trademark availability search is a reasonable and prudent …

Category: Intellectual Property Law

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Trademarks are commercial symbols of source or quality. A copyright is a property right in an original work of authorship that is fixed in a tangible medium of expression. This right extends to items such as literary works, dramatic works, musical comp …

Category: Intellectual Property Law

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The filing of state trademark or service mark registration is a relatively simple and inexpensive matter. Moreover, a state trademark registration can often be obtained even in the case of a relatively nondistinctive mark. Although state registrations …

Category: Intellectual Property Law

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Yes. The ownership of a trademark registration is not a prerequisite for filing a trademark infringement action. If the trademark has been used in a way that has created a public association between the mark and the products or services, the owner of t …

Category: Intellectual Property Law

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In the United States, trademark rights are acquired through use of the mark on or in connection with the goods or services. While registration of the mark usually provides substantive and procedural benefits to the trademark owner, trademark rights are …

Category: Intellectual Property Law

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While the word “trademark” is commonly used broadly to describe all “marks” there are actually several different kinds of marks that are protected under the law: trademarks, service marks, certification marks and collective marks. A trademark is used t …

Category: Intellectual Property Law

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Under the doctrine of fair use, even where a word or phrase has acquired secondary meaning, it can retain its original primary meaning in English, if any. Such marks can still be used freely when they are used in their original sense and not in a misle …

Category: Intellectual Property Law

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To show that something has acquired secondary meaning, the following evidence may be relevant: Age and history of the mark. Amount of effort and expenditure used to promote the mark as a name or symbol distinctive of the plaintiff’s goods or services. …

Category: Intellectual Property Law

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Things can become protectable trademarks in two ways: 1) by being inherently distinctive, or 2) by becoming distinctive. “Secondary meaning” is another term used to indicate “acquired distinctiveness” and means that the mark has come to indicate to con …

Category: Intellectual Property Law

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A trademark is a word or other kind of symbol that is used by a person or company to distinguish its goods or services and indicate their source. For example, Ford Motor Company uses the trademark MUSTANG to distinguish a line of cars. Under the United …

Category: Intellectual Property Law

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The U.S. Department of Labor (“DOL”) publishes a guidebook for businesses with general information on the laws and regulations enforced by the the DOL. The guidebook describes the statutes most commonly applicable to employers and explains how to obtai …

Category: Employment Law

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There are several steps you should take to preserve your company’s trade secrets when an employee  decides to leave the company.  All departing employees should be asked to participate in an exit interview to learn about the employees plans after depar …

Category: Employment Law | Intellectual Property Law

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For you to follow developments in Intellectual Property law and business, CASTAYBERT PLLC has created a Scoop It account collecting the most up-do-date news about “IP, Copyright, Trademark, and Advertising” from sources across the Web. This link will t …

Category: Intellectual Property Law

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For you to follow developments in art, gallery, auction and museum law and business news, CASTAYBERT PLLC has created a Scoop It account collecting the most up-do-date news about the art industry from sources across the Web. This link will take you dir …

Category: Art Law

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For you to follow developments in Fashion Law and Business News, CASTAYBERT PLLC has created a Scoop It account collecting the most up-do-date news about the fashion and apparel industry from sources across the Web.   This link will take you directly t …

Category: Fashion Law

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Celebrities have long registered trademarks for their names.  Now, college football coaches are getting into the trademark game, too.  USC football coach Steve Sarkisian has registered a trademark for “Sark” and “Coach Sark” for clothing and an online …

Category: Intellectual Property Law

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There’s no such thing as “just a text” anymore.  Just as this quick and easy means of communication has made its way into most of our personal lives, it has also become an everyday tool in workplace communications.  This raises some issues worth consid …

Category: Employment Law

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It’s difficult to imagine launching a marketing campaign in any business, let alone in the fashion industry, without using social media.  These tools can introduce more would-be customers to your product and do it faster than ever imaginable, and they …

Category: Intellectual Property Law

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Robert Frisby, an attorney with the Federal Trade Commission, discussed the FTC Rules on textile labeling and advertising at TEXWORLD USA 2014, last month.  His remarks include disclosure requirements regarding fiber content and country-of-origin, as w …

Category: Commercial Litigation

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August 15, 2014 – Texworld USA 2014 organizers have posted videos of the various panel discussions and presentations held during Texworld USA 2014 last month. Follow this link to watch: THE WHAT WHERE AND HOW OF GARMENT PRODUCTION – moderated by Dina D …

Category: Business Transactions | Intellectual Property Law

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August 7, 2014 – Judge Loretta A. Preska of the Southern District of New York  upheld a magistrate’s ruling ordering Microsoft Corp.  to hand over to federal prosecutors electronic data they are seeking in a narcotics case, and that is stored by Micros …

Category: Commercial Litigation

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August 2, 2014 – A New York federal judge has found Dimitrio Tsirkos, a former Mister Softee franchisee, in contempt for failing to comply with a June order barring him from using decals on his trucks that are “confusingly similar” to Mister Softee’s t …

Category: Intellectual Property Law

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August 1, 2014 – This past week, the National Labor Relations Board maintained that women’s shoe sales associates from two different departments within Bergdorf’s New York store could not constitute one single micro-bargaining unit.  The unanimous deci …

Category: Employment Law

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A new Rule 9 took effect June 2, 2014 in the Commercial Division of the New York State Supreme Court that stands to speed up pre-trial proceedings, and ease the complications associated with e-discovery.  The new rule allows parties to consent to accel …

Category: Commercial Litigation

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Whether you are a one-person startup, a mid-sized company or one headed for the Fortune 500, registering a trademark to protect the name or logo for your product or service is one of the single most important steps you take.  Imagine pouring your heart …

Category: Intellectual Property Law

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It may seem like just yesterday companies were handing out corporate Blackberries and phones to employees.  But today, “bring your own device” has increasingly become the norm.  Encouraging employees to use their own devices to communicate for work pur …

Category: Employment Law

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In this age of seemingly endless social media outlets, the pressure to capture a celebrity endorsement “freeby” can be enormous.  But beware.  As present as they can seek to be in the public eye, celebrities covet their identities and every form of lik …

Category: Commercial Litigation

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A company’s intellectual property can include some of its most precious assets.  When an employee leaves, particularly for a competitor, your company can be vulnerable to the loss of those assets.  What’s more, ownership of IP, trade secrets and other …

Category: Employment Law

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