Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Supreme Court urged to rule on trademarks as verbs

Many New Jersey residents are familiar with using terms like Google or Xerox as verbs rather than the trademarked names they represent. A pair of entrepreneurs have been challenging these trademarks in court, arguing that the trademarks should be taken away. Although lower courts have ruled against the two entrepreneurs, they are continuing to pursue their lawsuit, filing a petition to take their case to the Supreme Court.

The trademark argument began in 2012 when the entrepreneurs sought to invalidate Google's trademark. They argued that many people used the word Google as a verb meaning 'the act of an online search" and that this usage made the word generic and thus not able to be protected as a trademark. The entrepreneurs had purchased a variety of domain names using the trademarked word, so they had a vested business interest in overturning the trademark.

Costco ordered to pay $19 million for trademark infringement

New Jersey residents will likely associate light blue jewelry boxes with Tiffany & Co. It can take decades to nurture and develop this kind of consumer awareness, and major companies generally act quickly when their intellectual property is used without their permission. Tiffany sued the Costco Wholesale Corporation in 2013 after learning that engagement rings made by other jewelry makers were being marketed as Tiffany rings. Costco attorneys denied any wrongdoing, but their arguments failed to impress the judge hearing the case.

Costco attorneys claimed that "Tiffany" was used to describe a type of diamond setting and not to mislead customers into thinking that the pieces in question had been made by Tiffany & Co., and they pointed out that no Tiffany & Co. branding was used in Costco stores and the rings were not packed in light blue boxes. However, a federal district court judge ordered the retailer to pay Tiffany $11.1 million to compensate it for lost profits and $8.25 million in punitive damages. The compensatory damages amount represents triple the loss suffered by Tiffany due to Costco's intellectual property infringement.

What to know about trademarks

The key to success for New Jersey business owners and others throughout the country is to create a powerful brand. However, after the brand name is created, it is important to know how to protect it. The first step is to create a name that stands out and is not being used by another company. Business owners can use the Trademark Electronic Search System (TESS) to find out if their preferred choice is still available for use.

To protect the name that a business owner has chosen for his or her company, it is necessary to file for a trademark. This is done through the United States Patent and Trademark Office (USPTO), and it takes about 90 minutes to complete online. There is a minimum $225 fee to apply, and business owners can expect a response within about six months.

Teva Pharmaceuticals files trade secret theft claim

New Jersey business owners may be interested to learn that, on July 7, Teva Pharmaceuticals USA filed a lawsuit against a former executive who it said divulged trade secrets and other information of a confidential nature with her boyfriend. It alleged that the boyfriend is the president and CEO of Apotex Inc., a rival drug company.

The defendant was the senior director of regulatory affairs for generic medication sold in the U.S. when she downloaded confidential files onto her work-issued laptop. She then allegedly sent approximately 900 documents to her boyfriend through a cloud-based account. The company fired her in October 2016 after a former Apotex Inc. employee reported that the former executive and Apotex had discussed information on a competing drug that was at the time being developed by Teva.

The Beatles prevail in intellectual property lawsuit

New Jersey residents may be aware that the surviving members of the Beatles and the estates of John Lennon and George Harrison have been involved in a number of lawsuits in recent years. The most recent litigation was filed against the Beatles' holding company Apple Corps Limited by a firm founded by the promoter behind the band's 1965 concert at New York City's Shea Stadium. The litigation was initiated over footage taken during the show that was recently used in the 2016 documentary film 'Eight Days a Week," but a New York judge dismissed the case on July 26.

The plaintiffs in the case claimed that the famous 1965 performance would never have happened if Sid Bernstein had not been involved, but the judge was unimpressed by these arguments. He pointed out that the contract entered into in 1965 between Bernstein, who passed away in 2013, and Nems Enterprises, which was the Beatle's holding company before Apple, gave the legendary promoter no rights to any recording of the concert. The judge also raised questions about the validity of the intellectual property litigation based on the statute of limitations.

Patent litigation can be costly, protracted and sometimes futile

New Jersey residents may be surprised to learn that some of the nation's largest companies routinely ignore patents in their rush to enter emerging markets. These companies produce similar products and then make it difficult for patent holders by using their legal departments or hiring attorneys to challenge the validity of the patent or patents involved. Litigation can be costly and protracted, and these companies hope that market dominance will have been won before it is resolved.

The prospect of lengthy legal battles over thorny areas of the nation's intellectual property laws can be a daunting one for patent holders, and this may be especially true when the defendant is a large company with virtually limitless resources. Even when patent owners do have the funds needed to pursue legal remedies, laws like the America Invents Act and bodies like the Patent Trial and Appeal Board make their chances of prevailing dishearteningly slim.

Waymo drops some claims against Uber in trade secret lawsuit

New Jersey residents may be interested in a development in the lawsuit that self-driving car manufacturer Waymo has filed against Uber. Waymo, formerly affiliated with Google, accused Uber of trade secret theft, but it has now dropped three of four patent claims it had against the technology and transportation company.

Waymo contends that one of its engineers stole 14,000 documents before creating his own startup company, Otto, which focused on self-driving trucks. Uber later bought Otto, and the former Waymo engineer became head of Uber's self-driving group. The man was eventually fired after Waymo's then-parent sued Uber over the issue.

Beatles music rights dispute settled by Paul McCartney

Music fans and copyright holders in New Jersey may be interested in learning that Sir Paul McCartney, who rose to international fame as a member of the Beatles, settled a long-running dispute over the rights to the band's songs. The settlement, reached at the end of June 2017, involved an undisclosed sum of money and assurances that McCartney will receive the copyrights as early as October 2018.

According to Reuters, U.S. copyright laws enacted in 1976 allow the authors of some songs to regain their rights to the music after a given amount of time. The lawsuit, which was filed in January 2017, targeted Sony/ATV, which had acquired legal dominion over the Beatles' catalog after the late singer Michael Jackson won them from McCartney in a 1985 bidding war.

Trade secrets and the inevitable disclosure doctrine

New Jersey businesses that want to safeguard their intellectual property may be interested to hear about a May 2017 court decision that seems to suggest that companies can make inevitable disclosure claims under the Defend Trade Secrets Act. The case arose when a motor company's quality control overseer left to join a competitor and took trade secrets that he had downloaded with him. His old firm sued the new employer based on these actions.

The competitor countered by trying to have the complaint dismissed on the grounds that there was no evidence that it had actually used the information. The court, however, deemed the lawsuit valid based on the fact that the companies were in competition and that the employee held a similar job at the new firm.

Supreme Court rules in favor of reclaimed slur as a band name

A June Supreme Court ruling may be of interest to New Jersey music lovers. A band by the name of The Slants consists of Asian-American members. The lead man in the group stated that the band name was meant to reclaim the offensive term so that it could be repurposed as a point of pride.

When the group attempted to register its name with the U.S. Patent and Trademark Office, they were turned down. This led the front man of the band to file a lawsuit. He won a federal suit against the U.S. Patent and Trademark Office, and when the office filed its own lawsuit, the Supreme Court sided with the band.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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