CARES Act Loan Provisions Overview

Congress passed and the President signed H.R. 748 on March 27, 2020 in light of the recent Coronavirus / COVID outbreak. It contains the single largest government spending program ever enacted or implemented. Many clients are debating whether to make use of a portion of the act – specifically Div A, Title I, KEEPING AMERICAN WORKERS PAID AND EMPLOYED ACT. That Section allows the Small Business Administration to guarantee and in some cases pay off certain loans that would otherwise not be available to small businesses. The entire CARES Act can be viewed here https://www.congress.gov/116/bills/hr748/BILLS-116hr748enr.xml This post is an overview of that loan program and the ability to have some or all of the loan forgiven.

Before providing the overview, any client considering using this loan program should consider how likely the loan will be approved to be forgiven – and how much might not be forgiven. Even if a loan is not forgiven, there are valid reasons to consider using this loan program because the loan terms are generally very favorable as compared to regular SBA loans. Some businesses however, for example, businesses that have few or no employees, such as real estate holding companies – will not really benefit from this. However, their tenants might benefit from this because a covered cost includes rent. If their tenants are able to re-employ their workers in a fairly short time frame, the loan amount for those expenses might largely be forgiven.

Overview

  1. Eligibility:  In general, any business, including non-profits, sole proprietorships, contractors etc are eligible – but they generally must have less than 500 employees and have been in business as of 2/15/2020.[1] 
  2. Amount:  The maximum loan is 2.5 X the total payroll costs of the eligible business for the 1 year period prior to the date the loan is made, not to exceed $10,000,000. Businesses that have been in business for less time can still obtain a loan.
  3. Period:  The loan must be made between February 15, 2020 and June 30, 2020.
  4. Interest rate:  Interest cannot exceed 4%.
  5. Precondition:  The eligible business must make certification that it has been impacted by COVID, however, the certification is very broad.
  6. Use of funds:  Funds from the loan may only be used for eligible expenses which are: payroll costs; group health care benefits; employee related insurance premiums employee salaries, commissions, or similar compensations, payments of interest on any mortgage obligation, rent, utilities; and interest on any other debt obligations that were incurred before the covered period started.  Note that these types of expenses can extend past the “covered period” for loan forgiveness.
  7. Fees: All application fees are waived. All requirements for personal guarantees are also waived.
  8. Repayment deferral:  Lenders MUST defer all payments (interest and principal) for at least 6 months, but not more than 1 year.
  9. Forgiveness: The eligible business may request that the loan be forgiven for covered costs incurred during the “covered period” which is the 8 week period commencing on the date of the loan origination.
    • Covered costs are rent on leases entered into before February 15, 2020, payroll costs[2] (during the covered period), payments of interest on any covered mortgage obligation, and payments on covered utility payments.
    • The maximum forgiveness cannot exceed the covered loan amount.[3]
    • The amount to be forgiven is reduced on a formula of the average number of “full-time equivalent employees”[4] per month employed by the eligible recipient during the covered period, as compared to the same number in either the period of January 1, 2020 and ending on February 29, 2020 or the period February 15, 2019 and ending on June 30, 2019 (at the election of the borrower), but . . .
    • If the eligible business had reduced hours of full time equivalent employees in the period 2/15/2020 and ending on 4/27/2020, such reductions shall not be used in the above calculation as long as such reductions are reinstated not later than June 30, 2020.

More detailed provisions supporting the above summary

H.R. 748, Div A, Title I, KEEPING AMERICAN WORKERS PAID AND EMPLOYED ACT

Sec. 1102(a)(1)(A)(iii) – the term ‘covered period’ means the period beginning on February 15, 2020 and ending on June 30, 2020;

(viii) – “payroll costs” – generally, all costs, including retirement, PTO, tips, health insurance, but: capped at 100K over a year, does not include costs for employees whose principal residence is located outside of US, does not include employee tax withholdings, does not include payments under section 7001 of the Families First Coronavirus Response Act (Public Law 116–127).

Sec. 1102(a)(1)(D) – must have less than 500 employees (complex formulas and requirements as to how to count them, and for multi-location businesses)

Sec. 1102(a)(1)(E) – maximum loan is generally 2.5 X the average total monthly payments by the applicant for payroll costs incurred during the 1-year period before the date on which the loan is made, capped at $10,000,000. Formula is different if business was started after 2/15/19.

Sec. 1102(a)(1)(F) ALLOWABLE USES OF COVERED LOANS.—

“(i) IN GENERAL.—During the covered period, an eligible recipient may, in addition to the allowable uses of a loan made under this subsection, use the proceeds of the covered loan for—

“(I) payroll costs;

“(II) costs related to the continuation of group health care benefits during periods of paid sick, medical, or family leave, and insurance premiums;

“(III) employee salaries, commissions, or similar compensations;

“(IV) payments of interest on any mortgage obligation (which shall not include any prepayment of or payment of principal on a mortgage obligation);

“(V) rent (including rent under a lease agreement);

“(VI) utilities; and

“(VII) interest on any other debt obligations that were incurred before the covered period.

Sec. 1102(a)(1)(F)(ii)(II) A lender must consider the age of the business, especially if it either was not in operation as of 2/15/2020, or had no employees or contractors.

Sec. 1102(a)(1)(G) BORROWER REQUIREMENTS.— in general the borrower has to certify that

“(I) that the uncertainty of current economic conditions makes necessary the loan request to support the ongoing operations of the eligible recipient;

“(II) acknowledging that funds will be used to retain workers and maintain payroll or make mortgage payments, lease payments, and utility payments;

“(III) that the eligible recipient does not have an application pending for a loan under this subsection for the same purpose and duplicative of amounts applied for or received under a covered loan; and

“(IV) during the period beginning on February 15, 2020 and ending on December 31, 2020, that the eligible recipient has not received amounts under this subsection for the same purpose and duplicative of amounts applied for or received under a covered loan.

All application fees are waived, and there is no personal guaranty requirement.

Loans cannot exceed 4% interest

All payments on loans must be deferred at least 6 months, and not more than 1 year.

Loan Forgiveness, Sec. 1106.

“covered period” means the 8-week period beginning on the date of the origination of a covered loan;

“covered rent obligation” means rent obligated under a leasing agreement in force before February 15, 2020;

“expected forgiveness amount” means the amount of principal that a lender reasonably expects a borrower to expend during the covered period on the sum of any—

(A) payroll costs;

(B) payments of interest on any covered mortgage obligation (which shall not include any prepayment of or payment of principal on a covered mortgage obligation);

(C) payments on any covered rent obligation; and

(D) covered utility payments;…

Limits on forgiveness:  “The amount of loan forgiveness under this section shall not exceed the principal amount of the financing made available under the applicable covered loan.”  §  1106(d)

Amount is reduced by a formula:

(the average number of full-time equivalent employees per month employed by the eligible recipient during the covered period)


DIVIDED BY

EITHER:

(the average number of full-time equivalent employees per month employed by the eligible recipient during the period beginning on February 15, 2019 and ending on June 30, 2019)

OR

(the average number of full-time equivalent employees per month employed by the eligible recipient during the period beginning on January 1, 2020 and ending on February 29, 2020)

In addition, “The amount of loan forgiveness under this section shall be reduced by the amount of any reduction in total salary or wages [of any employee making less than 100K] … during the covered period that is in excess of 25 percent of the total salary or wages of the employee during the most recent full quarter during which the employee was employed before the covered period.”

Finally, “the amount of loan forgiveness under this section shall be determined without regard to a reduction in the number of full-time equivalent employees of an eligible recipient or a reduction in the salary of 1 or more employees of the eligible recipient, as applicable, during the period beginning on February 15, 2020 and ending on [April 27, 2020]” if

EITHER OR BOTH OF THE FOLLOWING ARE TRUE:

“(I) during the period beginning on February 15, 2020 and ending on [April 27, 2020], there is a reduction, as compared to February 15, 2020, in the number of full-time equivalent employees of an eligible recipient; and (II) not later than June 30, 2020, the eligible employer has eliminated the reduction in the number of full-time equivalent employees;

(I) during the period beginning on February 15, 2020 and ending on [April 27, 2020], there is a reduction, as compared to February 15, 2020, in the salary or wages of 1 or more employees of the eligible recipient; and (II) not later than June 30, 2020, the eligible employer has eliminated the reduction in the salary or wages of such employees


[1] A business formed or started after this date might be eligible, it is a factor in the loan underwriting.  Multi-location businesses with more than 500 employees might also be eligible.

[2] Note that there are no exclusions for payroll paid to owners, so long as the owner is not making more than 100K.

[3] It is not clear if they intended this to mean “plus interest”

[4] Note therefore that part time employees are covered but are calculated on a “full time equivalent” basis.

This Spring, Stop and Smell the Roses: Bloomery Plantation Releases New Sweetshine®

Chilly weather has been plaguing us for longer than usual this spring, but we’re seeing a seasonal shift!  The folks of Bloomery Plantation Distillery have coaxed in the warmer weather with a newly launched product that joins the trademark-branded Sweetshine ® ranks of its internationally acclaimed flavored spirits!

Making its official debut, Saffron Rose Sweetshine ® tastes of rose, orange, and hints of saffron, and exhibits the champion-style quality of its family spirits, having been honored with the Silver Medal in the 2018 San Francisco World Spirits Competition.  In addition, the creative artwork of the lovely lady, Miss Rose, adorning the Sweetshine ® label, is indicative of the signature trade dress featured on all Sweetshine ® products and is complimentary to the portfolio of award-winning label illustrations.  

Together with having a quality product, Bloomery Plantation’s successful brand foundation is based on its intellectual property, which is built upon its registered trademarks, and distinguishable trade dress creating an iconic look and feel of its products.  Through these efforts, Bloomery Plantation has set its business and products apart from other distilleries and products in the industry.

A protectable trademark and brand are essential components of a prosperous business foundation, directly impacting business viability and valuation.  Bloomery Plantation has taken its business to a new level by using its intellectual property, registered trademarks and creative trade dress, to visually distinguish its product, increase brand recognition among consumers, and increase product visibility and placement on retail store shelves.  Together with a number of factors, including hard work and a quality product, Bloomery Plantation’s new trademark and branding campaign has increased valuation for the Bloomery Sweetshine ® business, along with also playing a part in the business’ increased sales revenue.  Our law firm was instrumental in helping Bloomery Plantation secure its intellectual property in its new branding efforts.  We advise clients during the product naming process, perform trademark investigative clearance searches, draft and file trademark and copyright applications with governments, both U.S. and abroad, and handle applications throughout the entire government examination process.  In addition, our firm also assists with maintaining protection and enforcing intellectual property against unauthorized third-party users.

We wish our client, Bloomery Plantation, the very best on its new product release!  See more about Bloomery Plantation and its award-winning and creatively flavored liqueurs, here.

For more information on creating, securing, and protecting your Product, Trademark, and Brand, please contact Pamela K. Riewerts, Esq., Partner and Intellectual Property Attorney at Oliver & Grimsley, LLC.  Pamela may be reached via email at: pamela@olivergrimsley.com

 

Coca-Cola discovers small design changes can mean lack of protection of product designs: protecting product shapes and appearances

How Famous is the Coca-Cola bottle design?  Not quite enough to protect small differences 

Design patents are an increasingly useful tool in product configuration protection, but as Coca-Cola recently learned, even a famous product design has its limits.  As surely everyone knows, Coca-Cola owns a protected famous trademark for it’s original hour-glass bottle shape featuring fluted ridged lines.  Earlier this year, however, the European Union (“EU”) Court denied trademark protection to Coca-Cola for a newly evolved, smooth shaped bottle. The Coca-Cola Company v. Office from Harmonisation in the Internal Market (Trademarks and Designs)(OHIM) 2016

Under EU law, a trademark may consist of “the shape of goods”, as long as the shape is distinguishable from other third-party products. Coca-Cola’s original hour-glass bottle featuring ripple contours is “one of the most famous shapes in the world… is so distinctive it could be recognized in the dark” Coca-Cola stated. However, the EU court found that Coca-Cola failed to establish that the new smooth bottle design had acquired distinctive familiar connection and character through use.

Coca-Cola originally developed the fluted contoured bottle in the U.S. in 1915 to distinguish its bottle from competitors making similar bottles. Cola-Cola developed a glass “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.”  After several years of continuous use the unique distinction and recognition lead to trademark protection.

The new smooth bottle shape maintains the hour-glass bulge in the center of the bottle consistent with the original bottle shape, but does not feature the rippled contours that brought the original bottle its worldwide recognition. Although Coca-Cola argued that the smooth bottle is “a natural evolution” of the traditional bottle, both the EU Trademark Office in 2014 and the EU court in 2016, denied the request for trademark protection.

Strategies to Secure Initial Product Appearance and Shape Protection via Design Patents

Similar to the EU, U.S law also allows for trademark protection of product configuration and packaging that acquire distinctiveness  over time.  See Section 43(a) of the Lanham Act, Section 15 U.S. Code 1051.  However, the design must gain “secondary meaning” as the Supreme Court has ruled that “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning”. See Walmart v. Samara.

Design patents can fill this “use” gap – as they also have the ability to protect unique product appearance and packaging at initial launch of products. This form of protection can serve as the first line of protection to claim ownership of distinctive shapes before the established passage of time that later may provide a basis for prolonged customer recognition which eventually may be used to establish trademark protection for the source of origin of the product.  While design patent protection has a definitive term of protection– 15 years (See Manual of Patent Examining Procedures (MPEP) 1501), trademark protection, once established, may continue perpetually so long as the trademark is in use.

Coca-Cola first obtained U.S. design patents on its ornamental bottle shape in 1916, and again on it’s redesigned contoured bottle in 1923 and 1937.  Design patent protection at that time lasted 14 years (currently 15 years). Years later in April 1960, after the product gained established customer recognition over time, Coca-Cola obtained federal trademark registration for its fluted contour bottle shape, thereby enabling the company to protect its fluted bottle design indefinitely with continuous use and protecting the iconic bottle that it is today.

If Coca-Cola is seeking to protect its new bottle shape in the U.S., one avenue may be to investigate the availability of design patent protection for the initial protection of the new bottle shape, and then look to secure trademark protection after prolonged continued use of the product.  This strategy faired well for Coca-Cola in obtaining initial design patent protection and then continued trademark protection of its original rippled bottle shape.

Discussing these concepts in the current age – the design elements of product are becoming very important.  For example, Apple protected its iPhone design and recovered significant damages against Samsung for infringement.  Car manufacturers have recently filed claims against game manufacturers for digitizing their car shapes into a game.  See as an example BMW v Turbosquid.

Should you seek Design Patent Protection for the Appearances and Shapes on Products or Packaging?

A protectable design must be manifested in the appearance of the product and consist of “visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”  MPEP 1500 et seq.; 35 USC 171 et seq.  Design protection is based on specifically drawn product figures made in accordance with the U.S. Patent Office Rules, and submitted to the U.S. Patent Office with a patent application in order to identify the legal metes and bounds of the protected design. If you are interested in preventing others from making, using, selling or importing the same or similar product shape or appearance, you may want to engage a patent attorney to investigate whether design patent protection may be available for your product or packaging.  An investigation generally consists of a preliminary search and initial evaluation of your product shape or appearance as being new, novel and non-obvious in order to meet the requirements of the U.S. Patent Office.

Should you Trademark the Appearance and Shape of Products or Packaging?

You do not need to register a trademark with the U.S. Trademark Office to establish trademark rights.  Protection is established through use of the trademark.  However, without federal registration, the trademark is only enforceable in the geographic area where the product is sold.  A federal registration on the principal register, however, provides additional advantages and is likely beneficial in most cases primarily because a federally registered trademark on the principal register establishes nationwide priority throughout the entire U.S.  Therefore, registration ultimately gives you the right to prevent others from using or registering your trademark nationwide and provides notice to third-parties of your registration.  It should be noted that even with principal register trademark protection you cannot prevent someone in a remote location where you do not actually market or sell your product from using a trademark or product design that is confusingly similar until you actually enter that market.  A registered trademark is also presumed valid and may eliminate certain invalidity arguments after 5 years of continuous use (incontestability).

How to Register Appearances and Shapes on Products or Packaging:

In order to register your product shape or packaging in the U.S. Patent and Trademark Office, as a trademark your packaging or product design must have acquired secondary meaning – that is, unique, original, and recognizable by consumers as the source of origin.  Can the public identify your company as the source of origin of the product or the packaging by its distinctive features?

In addition, the trade dress must not be functional.   See generally, Manual of Trademark Examining Procedures (TMEP) Section 1202.02  The original Coca-Cola bottle design met all of these requirements (i.e. the fluted ridges did not serve a significant function in the product, but rather were merely ornamental).

If a product design or packaging is not inherently distinctive it can still be registered after it acquires distinctiveness through long use, known as secondary meaning.

There are three ways that a mark itself may be inherently distinctive—if its intrinsic nature serves to identify a particular source.

1) Fanciful trademarks, such as a made-up word (Xerox- a created name with no other meaning than acting as a trademark);

2) Arbitrary trademarks, having no relation to the product other than as a means of identifying the company that produces it (Apple computers- a word in the English language not related to the product);

3) Suggestive trademarks, providing a link between the characteristics of a particular product and its producer (Microsoft- suggestive of software for microcomputers).

Generally, any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product.

To prove that the trademark product or packaging has acquired distinctiveness through secondary meaning, a mark must be shown to be distinct in the minds of the consumer and with a recognizable source of origin.  Proving distinctive secondary meaning, however, is often expensive and legally challenging and often involves consumer surveys for recognition.

If you are interested in filing a design patent and/or registering your product configuration or packaging with the USPTO, you should contact an attorney to investigate, advise, and file an application for your product or packaging for registration.

Should you need assistance with design patents or trademark protection, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC at: Pamela@olivergrimsley.com

More information may be found on the following websites:

http://www.uspto.gov/patent

http://www.uspto.gov/trademark

http://en.wikipedia.org/wiki/Trade_dress

http://heritage.coca-cola.com/

http://blogs.wsj.com/brussels/2016/02/24/without-the-ripples-coca-cola-bottles-arent-the-real-thing-says-eu-court/

http://curia.europa.eu/juris/document/document.jsf?text=&docid=174563&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=640112

“Dear Prospective Defendant:” …

Having practiced enough years I should be able to say I have seen it all, sadly, I realize I never will.  Today is no different.  Today I reviewed a letter to one of our clients with the salutation of “Dear Prospective Defendant:”  It struck me immediately – was this necessary?  Do lawyers need to be so antagonistic, bombastic or just plain abrasive, to start a letter this way?

Talk about sending the wrong message.  The sender of this letter wants something from our client (money).  They clearly wanted to signal they were willing to take additional action, but really, is it not better to ask nicely, even in a dispute?  I did not even get to the first sentence of this letter without having formed a negative opinion of the sender.  A person so insecure in their position to start a letter this way cannot possibly be taken seriously can they?

The letter also reminded me immediately of the direct opposite – a firm that from top to bottom is run by the most respectful, honest, trustworthy just plain good  people you could ever find.  The title of the person that greets you at the door to this business and answers your calls is the “Director of First Impressions” – and she is fantastic at her job (of making good impressions!).  Leadership runs here from top to bottom.  And yes, I will name them:  Brooks Financial.

I never really put much stock in a person’s title – to me you have to earn it, so titles in many businesses are hollow and meaningless.  But this one title has stuck with me because if we were all better at being directors of first impressions, we would all be better people, and most likely get a lot more of what we want from others.  We would also be much better at resolving disputes.

We lawyers are called on often to deal with stressful situations where two or more parties are fighting – claiming one or the other violated some law or breached some agreement.  Even in a dispute it is important to remain cordial and civil, doing so will be more likely to get the result you want.

– Mike Oliver

Avoiding a Fair Use Fiasco

FAIR USE FIASCO – BE CAREFUL USING *ANY* IMAGE ONLINE by Mike Oliver

The internet is littered with millions of images – taken by professional and amateur photographers alike, that contain NO identification of the author of the image. In part, this may be because it is not known, and in part it could be that the “meta data” in the image – which if done professionally will typically have the author’s name and the claim of copyright embedded as text inside the file (known as EXIF data) – is stripped off.

A recent decision in the 3rd Circuit (Pennsylvania, New Jersey, Delaware, and the Virgin Islands), Murphy v. Millennium Radio Group, LLC, [https://www.ca3.uscourts.gov/opinarch/102163p.pdf] demonstrates how dangerous it is to post on your website an image that does not contain this “copyright management information.”

In Murphy, a professional photographer took a picture of two radio show shock jocks, partially nude, for a print publication. The photographer maintained copyright. A radio station employee scans the image, posts it on the radio station website, and invites people to “photoshop” the image in a contest. No attribution identifying the photographer is given.

The photographer sues and loses in the trial court – essentially because that court believed the use was a fair use or licensed. The appellate court, however, reverses. It holds that under the Digital Millennium Copyright Act, the “copyright management information” includes identification of the author of the image. Of important note – the DMCA for the purposes of this provisions, has no “fair use” defense – in other words, the copyright management information must always be included.

The take away here is that if you are electronically displaying images in which you are not the author, the EXIF file data – the data that is embedded in the image and can be read by software to see the copyright management information – cannot be stripped off the file. In addition, if you are using stock photography, or manage a stock photo site, the EXIF data must be retained in the image.

For more information, please contact Mike Oliver.

FTC issues privacy guide for facial recognition technology

The FTC released a study and guide on facial recognition technology, and provided guidance on notice, transparency and options required when making use of, storing and sharing facial recognition information.  The case studies included a basic use (for example, a face is scanned and then the user may make changes to see what hair, clothes, jewelry or other things look like), a more advanced use – an interactive kiosk that takes a picture of a consumer, assesses their age and gender, and presents an advertisement specifically for that consumer, and finally an example of use of facial recognition in social media and sharing those images (a la Facebook).

Anyone making use of facial recognition technology should consult these guides as they would any other FTC advertising or privacy guide, before they commence collecting, using or sharing facial recognition images.

For more information on privacy law compliance, contact Mike Oliver or Kimberly Grimsley.