Robert C. Kain, Jr. named Best Lawyers® 2009


Ft. Lauderdale, FL – The Intellectual Property Law Firm of Kain & Associates, is pleased to announce that partner Robert C. Kain, Jr. Has been named on South Florida’s Best Lawyers® 2009 Edition listing. Mr. Kain is a Board Certified Intellectual Property Lawyer with over 25 years of experience. Mr. Kain currently serves as Vice Chair of Florida’s Intellectual Property Certification Committee. Mr. Kain limits his practice to the increasingly complex I.P. field of patents, trademarks, copyrights, trade secret, and computer law, and the related fields of domain disputes, trade dress, false advertising, and unfair competition.

“Best Lawyers compiles lists of outstanding attorneys by conducting exhaustive peer-review surveys in which thousands of leading lawyers confidentially evaluate their professional peers. In the U.S., Best Lawyers publishes an annual referral guide, The Best Lawyers in America, which includes 36,126 attorneys in 78 specialties, covering all 50 states and the District of Columbia.” For more information regarding Best Lawyers® please see their web site

Darren Spielman named as part of Super Lawyers® 2009 Florida Rising Stars


Ft. Lauderdale, FL – The Intellectual Property Law Firm of Kain & Associates, is pleased to announce that Darren Spielman has been named on Florida Super Lawyers® 2009 Florida Rising Stars list. Mr. Spielman earned a Masters in Mass Communications degree from the University of Florida, as part of a joint degree with the University of Florida Levin College of Law. Mr. Spielman dedicates his practice to the increasingly complex I.P. field of patents, trademarks, copyrights, trade secret, and computer law, and the related fields of domain disputes, trade dress, false advertising, and unfair competition.

The Florida Rising Stars® section of the Super Lawyers® publication is based upon other lawyers who nominate the best attorneys who are 40 or under, or who have been practicing for 10 years or less. “Super Lawyers is a listing of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. Super Lawyers is published as a special supplement in leading newspapers and city and regional magazines across the country. Super Lawyers magazine, featuring articles about attorneys named to the Super Lawyers list, is distributed to all attorneys in the state or region, the lead corporate counsel of Russell 3000 companies and the ABA-approved law school libraries.”

For more information regarding Super Lawyers® please see their web site

Twelve (12) Things to Improve I.P. Rights Under $1,200

Re: General Intellectual Property Matters

Dear Valued Client:

We know that these economic times are challenging however, at Kain & Associates, we also know that now is the best time to improve and protect your intellectual property (I.P.) position with

some fairly low cost measures. Creative people normally outperform others during an economic crisis. Our firm is optimistic that our valued clients will survive these difficult times. Recently, the CEO of

IBM, Samuel Palmisano, said: “We entered this turbulent period strong, and we expect to exit it stronger… We will simply not ride out the storm. Rather, we will take a long-term view, and go on offense.”

Our firm stands side-by-side with its clients to provide assistance and improve your I.P. rights.

Twelve (12) Things to Improve I.P. Rights Under $1,200:

I. Update Your Product Lines with a new trademark.

1. Trademark Search and Opinion $750.00.

2. Federal Trademark Application $1,075.00.

II. Update Your Web Site.

3. Select a new domain name, use it as a trademark on your web site.

i. Domain – Trademark Search and Opinion $750.00.

4. Register your existing domain as a trademark. Note: the domain must be shown in

the banner for “good” trademark use.

i. Federal Trademark Application for Domain $1,075.00.

5. Register the copyright to your website. $850.00. Mark at least the first page with the

copyright notice “© Corp. Name 2009.”

6. Add a “Terms of Use” contract to your web site. $1,200.00.

7. Update your “Subscriber or Member Agreement.” minimum charge, $1,200.00.

III. Update your Product Labels and Brochures

8. Register the copyright for the label or product brochure. $350.00. Mark the item

with the copyright notice “© Corp. Name 2009.”

IV. Design a New Look for your Products

9. File a design patent on the look of the product. $1,200.00.

V. Build a New Product or Design a New Functional Service

10. Conduct a patent search on the product or service function $1,200.00.

VI. Enforce Your Rights and Stop Infringers

11. Trademark – Domain – Copyright cease and desist letters $1,000.00.

12. Patent infringement cease and desist letters $1,200.00.

Due to the increase in litigation inquires, it is clear that many I.P. owners are aggressively enforcing their patent and trademark portfolios. As you know, we represent both I.P. owners, seeking to stop infringers, and companies accused of infringement. We

know how to enforce I.P. rights and defend your rights to use off-patent technology, public property, generic or descriptive terms and independently created works. As always if you have any I.P. issues, please call or email our office. Our web site at is a good source of information about I.P. with many useful forms. See, for example, the “Employment Agreement” and the “Consultant Agreement,” under Resources/Forms, which confirms that your company owns its I.P. Finally, do

not forget to check out our blog about domain disputes at



Robert C. Kain, Jr.

Board Certified Intellectual Property Law

for the Firm

“Law Briefs – U.S. Companies Retain Trademarks on the Internet from Foreign Companies,” Daily Business Review

Boca radiologist settles Medicare case for .$7 million

Daily Business ReviewA ‘Boca Raton radirilogist has agreed to pay $ 7 million to settle a civil fraud case for falsely·billing CT scans and ·ultrasounds to physicians and Medicare, the ·U.S. attorney’s office in Miami announced· Monday.

Dr . .Fred Steinberg, his imaging centers and related businesses in Palm Beach County billed for scans with and without dye bat never performed scans without dye, the Justice Department claimed.

The government also alleged Steinberg’s companies billed for CT scans and ultrasound exams that were not necessary, ordered or performed.

A whistle-blower sparked the investigation under the False Claims Act, which allows individuals to bring fraud actions on behalf of the federal government and collect a share of any settlement.

Dr. David Clayman, a former employee of· one .of Steinberg’s practice groups, will colect ·s 1.7 million as the whistle-blower under the settlement.

“This settlement is among the largest recoveries ever for Medicare fraud against a single,physician and his practice,” said Peter W. Chatfield, a Washington attorney with Phillips & Cohen, Which represents Clayman.

“It took a lot of guts for Dr. Clayman to risk his professional career to pursue this case,” Chatfield said

U.S. companies retain trademarks on Internet from foreign companies

Foreign companies do not have the right to usurp the name of U.S. companies on the Internet, a Fort Lauderdale federal judge concluded in a trademark infringement case.

U.S. District Judge James I. Cohn awarded Fort Lauderdale-based Punch Clock $1.2 million in its lawsuit against competitor-Smart Software Development of Alberta, Canada.

Time Clock sold its timekeeping software to ·employers to track work hoursihrough its Web. site www.punchclock,com, Jt sued when Smart Softwa~ started peddling a . similar product through a Web site using the same name with a hyphen between punch. and clock.

Smart Software said it was not subject to U;S. cybersquatting and trademark laws because it was based in Canada. Cohn disagreed in a default judgment April 4.

“This should serve as a lesson for business owners who operate outside the U.S. but sell goods or services to U.S. customers,” said Time Clock attorney Robert C. ~an, a partner with Fliet Kain Gibbons man Bongini & Bianco in Fort Lauderdale.

“You can’t sell products to U.S customers and commercially benefit from our laws while at the same time infringe another’s legitimate U.S. trademark rights and then when convenient hide behind a foreign border,” he said.

“Trademark Infringers Cannot Hide in Canada.” Attorneys Kain and Spielman obtain a judgment of nearly $1.2 million dollars against a Canadian company under the Anticybersquatting Consumer Protection Act (ACPA)


FORT LAUDERDALE, FL – Florida-based Internet company Punch Clock, Inc.(“PCI”) was awarded a judgment of nearly 1.2 million dollars against a Canadian company, Smart Software Development(“SSD”), for willful trademark infringement and cybersquatting. Attorneys Robert C. Kain, Jr. and Darren J. Spielman successfully obtained the million dollar judgment for their client PCI. Fort Lauderdale company PCI markets and sells computer timekeeping software to employers that track employee work hours.

On April 4, 2008, federal court Judge James I. Cohn of the U.S. District Court, Southern District of Florida, Broward Division, awarded PCI money damages and issued a permanent injunction in the case of Punch Clock, Inc. v. Smart Software Development, Case No. 07-61684-CIVCOHN, against SSD for willful trademark infringement of PCI’s federally registered trademark “PUNCH CLOCK” and for violations of the federal Anticybersquatting Consumer Protection Act (“ACPA”). Judge Cohn found that SSD had deliberately infringed PCI’s rights by using PUNCH-CLOCK, a hyphenated version of PCI’s federally registered trademark, to sell identical timekeeping software and also violated the ACPA by using the hyphenated version of PCI’s domain

Since the mid 1990s, PCI had sold its timekeeping software on the Internet at its website www. In 2001, newcomer SSD launched a competing site at www. and began selling the same type of software. SSD’s owner claimed “I am not in violation of your trademark simply because I operate my company in Canada” in an email dated September 3, 2001. Notwithstanding SSD’s statement that its business was Canadian-based, over the next eight years, SSD aggressively promoted its timekeeping software in the U.S. and captured almost 10,000 customers, including such local companies as Burger King Corporation and Florida Atlantic University. As the court documents reveal, SSD willfully used a confusingly similar trademark “Punch-Clock” and an infringing website www. to deceive U.S. customers. Judge Cohn ruled that the “willful and blatant nature of the infringement in this case, as well as the duration of the infringement and level of harm caused to” PCI was one of the justifications for the award of the damages.

“This should serve as a lesson for business owners who operate outside the U.S. but sell goods or services to U.S. customers,” said Kain. “You can’t sell products to U.S customers and commercially benefit from our laws while, at the same time, infringe another’s legitimate U.S. trademark rights, and then, when convenient, hide behind a foreign border.”

“This case reminds us how valuable and important U.S. intellectual property rights remain in the eyes of the courts,” said Spielman.

“The mission of Punch Clock is to deliver a quality product at an affordable price. We need to make sure that no one interferes with that mission by improperly using the Punch Clock trademark. We are very pleased with the result,” said PCI’s general counsel, Clifford A. Wolff.

Ultimately, the judge awarded PCI $1,174,251.00 in damages and attorney’s fees and issued a permanent injunction commanding SSD to stop the infringing activity and relinquish the domain.

Kain handles complex I.P. matters locally and throughout the U.S. and is a specialist in intellectual property law. This Florida Bar member is certified by the Bar in Intellectual Property Law. He is also a registered patent attorney with the U.S. Patent and Trademark Office, a member of the New York and the Washington D.C. Bars and has been appointed by the President of the Florida Bar to sit on the Bar’s Certification Committee for Intellectual Property Law.