Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

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.

The Eagles file lawsuit over alleged infringement

New Jersey music fans will likely have little problem recognizing the Eagles hit "Hotel California". The timeless lyrics by Don Henley and Glenn Frey have inspired songwriters for generations, but the band claims that a Los Angeles hospitality company strayed beyond homage and entered the area of intellectual property rights infringement when it named a hotel in Mexico after the 1976 hit. The Eagles are seeking unspecified damages and injunctive relief in a trademark infringement lawsuit filed in a California federal court.

The owners of the hotel deny the allegations and claim that the band does not even hold the rights to its most popular song's trademark. The company also points out that its website clearly states that there is no formal relationship between the band and the hotel. The hotel is built in the Mission style and overlooks the Pacific Ocean in the village of Todos Santos.

Early protection of intellectual property essential

Owners of New Jersey startups will have their plates full as they strive to stake a claim in the marketplace. Protecting intellectual property needs to be high among their priorities. Intellectual property consists of trademarks, patents, copyrights and trade secrets.

Entrepreneurs can think of a trademark as a logo, name, slogan or phrase that identifies a company's brand. The symbol or phrase distinguishes the product or service and, once established, can provide significant value in the marketplace. Patents refer to official claims upon an invention or technical innovation. By registering a design with the U.S. Patent and Trademark Office, a company can enforce exclusive rights to control and profit from the invention.

Ruling bars practice of venue shopping in patent disputes

A ruling by the Supreme Court has put an end to one practice common to what some professionals in New Jersey and around the country have termed abusive patent challenges. The decision set a new standard for venue in patent cases by ordering that claims must be brought in states where the defendants are chartered. This could result in more security for small businesses or start-ups concerned about the potential costs of patent litigation.

Prior to the ruling, small businesses often faced insurmountable challenges in defending themselves from patent litigation. Plaintiffs in these cases are sometimes referred to as patent trolls for the practice of buying patents and filing disputes to collect damages or licensing fees. The entity could buy a patent and claim infringement using any venue, which led to venue shopping. This would force a small business to take on excess costs, such as travel and finding legal counsel in what was often a hostile jurisdiction.

Google lawsuit tests boundaries of generic trademarks

New Jersey residents may not be aware that the names of many common household items were once fiercely protected intellectual property. Thermos, cellophane and aspirin are all used generically today to refer to a broad range of goods, but they were once trademarks associated with specific products. Legislators addressed the issue of genericized trademarks with the passage of the Langham Act in 1946, but the law does not make clear how trademarks should be treated when they become commonly used as verbs rather than nouns.

This legal question was put before the courts in 2012 when an entrepreneur sued Google after the Mountain View company attempted to prevent him from registering hundreds of domain names. The domains all used the word "google" as a verb, and the businessman claimed that the term should no longer be protected intellectual property because it was commonly used by internet users to refer to searching for information online. However, a district court judge disagreed, and his decision was upheld on May 16 by the U.S. Circuit Court of Appeals for the 9th District.

Determining the value of patents

Companies in New Jersey and around the country are often fiercely protective of their intellectual property, but they may find it difficult to determine how much these crucial business assets are actually worth. Patents for inventions that have never been put into production will generally be less valuable than those for devices that sell well, and patents may increase in value over time as the products they protect gain in popularity. Patents may also lose value if new technology emerges or consumer preferences evolve.

One way to put a value on patents is to study how they benefit the businesses that own them. Patents that protect revenue streams or hinder competitors will usually be worth more than those that do not. Patents may also appreciate in value when they help the interests of a business to align with those of their corporate partners during joint ventures or mergers. The most valuable patents will generally protect core products that are widely associated with brand identity.

The importance of monitoring to protect against infringement

New Jersey businesses understand that customers tend to have loyalty to certain brands, but many businesses do little to monitor their trademarks in order to protect against infringement. Unfortunately, the incidence of trademark infringement has been increasing, potentially harming the bottom lines of their owners.

When trademarks are infringed, it can severely damage a business. Infringers release counterfeit products and dilute the market, potentially causing losses and damage to the company's reputation. When businesses do not fully monitor their trademarks, the harm can be extensive. The internet has made the world much smaller and has allowed infringement to exponentially increase.

The U.S. military holds valuable intellectual property

New Jersey residents may be surprised to learn that the U.S. military holds a wide variety of valuable intellectual property ranging from logos and names to camouflage designs. The U.S. Army, Navy Air Force and Marine Corps earn millions each year from licensing their trademarks and copyrights, and they also all have attorneys on staff tasked with clamping down on infringement. Legal experts believe that a T-shirt offered by the California-based fashion retailer Forever 21 could draw the ire of some of these lawyers as it appears to be a near identical copy of the Army's standard-issue training shirt.

The Army's trademarks include its iconic star logo and the word 'Army" when it is used on men's', women's or children's clothing, and Army attorneys have been quick to send out cease and desist letters in the past when protected military logos and branding have been used without consent. Forever 21, which has faced several intellectual property infringement complaints in the past, has removed the T-shirt from its website, but reports indicate that other possibly infringing articles remain.

Using a trademark first may not provide protection

Using a trademark first may not protect New Jersey trademark applicants from losing out to a registrant who files first for the mark. In an April federal court decision, the company EMC lost its claim to the trademark "Unity" for software products in data management, despite having given presentations using the name over half a year before another company filed for a trademark.

EMC began using the name "Unity" in mid-2015 on its products, giving 84 presentations to customers, partners and potential customers that included the name for new products. In fact, beta versions of these "Unity" products had even shipped to some consumers by December 2015. All of the customers and partners involved in these presentations and beta access signed confidentiality agreements about the products and their name.

Disney planning soft-body robots for human interaction

In the future, people from New Jersey planning a trip to a Disney resort might experience interactions with soft and touchable robots. The filing for a patent in the United States by Disney Enterprises Inc. indicates that the company has designed a 3D-printed soft-body robot designed to interact physically with visitors.

The patent proposal submitted by Disney stated that the robots would engage in interactions with children and adults. They appear to be intended for use at the company's stores and entertainment parks.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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