Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Record label fights to trademark the term 'empire'

A real-life court battle involving the Fox Network's television show "Empire" adds to the show's fictional drama that has attracted many viewers in New Jersey and around the world. A record label known as Empire Distribution has challenged the network's use of the word "empire" and alleged trademark infringement.

According to a lawsuit filed by the network as it pursued declaratory relief from the challenge, the recording company claimed that the television show's depiction of a fictional rap mogul tarnished the company's image. The record label offered the network three ways to settle. Fox could pay $5 million and grant the label's singers guest appearances on the show, pay $8 million or cease calling the show "Empire" altogether.

Kmart sued by Rasta Imposta over banana costume

As New Jersey residents gear up for Halloween, they may head to local stores to purchase costumes. Halloween costumes are big business, and because of the money involved, they may be the subject of intellectual property lawsuits.

According to news sources, Rasta Imposta, a costume company, recently filed a lawsuit against Kmart for allegedly infringing on the company's banana costume design. Rasta Imposta and Kmart had engaged in business together for almost 10 years before the lawsuit was filed. Kmart and Rasta Imposta failed to come to an agreement about the costumes this year, so Kmart chose to go with a different vendor.

Trademark owners should beware of scams

New Jersey trademark owners and applicants should remain vigilant against ruses designed to compel them to purchase unnecessary trademark services. Scammers are obtaining the names of the owners from a database at the United States Patent and Trademark Office and are pretending to operate on behalf of the USPTO. The prevalence of this practice has been so rampant that a public meeting was held by the USPTO in order to spread awareness about the issue and to propose methods for combating it.

The scamming organizations frequently use names that are similar to those of government organizations. They will obtain information about a certain application or registration and will design official-like documentation requesting payment related to the targeted trademark. The scam artists are using a variety of forms for their solicitations and offer services like monitoring for similar trademarks, the filing of renewal and maintenance documentation or recording registrations or applications in phony directories.

Waymo lawsuit against Uber will likely go to trial

It seems self-driving cars are on their way to New Jersey and the rest of the nation. However, there's a lot of debate and conflict regarding which companies will lead the way. While tech giant Google has spun off its own self-driving vehicle company, called Waymo, the ride sharing service Uber has thrown itself into the fray as well. However, Waymo is claiming that Uber's technology was not developed or acquired legally. It has filed a lawsuit in federal court claiming trade secret violations.

Specifically, Waymo alleges that a former employee of Google took more than 14,000 files that were confidential when he left Google. Among those files were a number of documents relating to self-driving technologies that Google was developing. The former Google employee then launched Otto, a self-driving trucking company, which Uber paid $680 million for in 2016. A spokesperson for Waymo said Uber is using stolen trade secrets to make its self-driving vehicles go.

Patent holders criticize new patent challenge review process

Intellectual property plays a significant role in the economy of New Jersey, and patent holders have a financial interest in defending their ideas. The Inter Partes Review system developed five years ago by the America Invents Act was intended to be an alternative to lengthy litigation when someone challenged the validity of a patent. The process gave the Patent Trial and Appeals Board the ability to settle a patent question. Critics, including many patent holders, have concerns about the fairness and consistency of the process.

The ease of launching an appeals board review has increased the frequency with which patent owners have to defend their patents that have already been granted by the U.S. Patent and Trademark Office. Accusations of parties using multiple challenges against the same patent, called gang tacklings, have emerged. This tactic could wear down a patent owner who does not have the deep pockets to continually protect the intellectual property.

Hasbro takes legal action in trademark dispute

New Jersey comic fans might be interested in a trademark dispute involving Hasbro, Warner Bros. and DC Comics. Hasbro is the owner of the Transformers brand, and it claims that Warner Bros. and DC have committed trademark infringement. Specifically, Hasbro claims that a DC character named Bumblebee could be confused with the Autobot also named Bumblebee. The character created by DC is a teenage girl who has the ability to shrink.

The Bumblebee character is set to be part of a Transformers spin-off that is scheduled to be released in time for Christmas 2018. According to Hasbro, it has been selling Bumblebee toys since 1983, and it has been selling toy sets consisting of blocks since 2011. Records indicate that Hasbro applied for a trademark for the name Bumblebee in July 2015 and that the trademark was registered in December 2015.

Disputed song copyright legal case depends on two words

The song "We Shall Overcome" associated with the civil rights movement is known to many New Jersey residents. Although based upon an old African-American spiritual, people claiming copyright to the more recent version asserted their rights by declining to license the song for use in a movie. The resulting legal case pitted plaintiffs who argued that the modern version should be in the public domain against those insisting that the modern authors made enough changes to the original to qualify for copyright protection.

A district court has allowed the case to advance, but the documentation indicates that the new and old versions differ by only two words. The modern version uses "shall" instead of "will" and replaces the phrase "down in my heart" with "deep in my heart." The defendants agree that later authors did not alter the melody of the song. Both versions of the song spring from the melody "O Sanctcissima,", a Catholic hymn from the 18th century. In the view of the plaintiffs, the changes to the song as it was published in the 19th and 20th centuries represent only trivial alterations undeserving of copyright protection. The law does allow for a work of authorship derived from an earlier work to become copyrighted, but the derivation must represent something new and original.

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.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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