Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Trademark infringement major concern for businesses

Many New Jersey companies have good reason to be concerned about trademark infringement, particularly with the challenging global environment of online sales and e-commerce. Infringement types can range from confusingly similar products sold by legitimate competitor brands to blatant counterfeits marketed for sale online with fake brand logos and imagery. One company reported that 85% of the brands it works with faced at least some problems with trademark infringement in 2019, an increase from the already high numbers of 2018 when 81% reported the same concerns. In 2017, 74% of the businesses the trademark research firm works with reported that their intellectual property had been violated.

Many of these trademark violations were linked to online sales. Consumers and companies have complained about the proliferation of counterfeit products on online marketplaces, and those numbers were reflected in the survey results. Almost 40% of the companies said that their trademarks had been infringed upon on various e-commerce sites in 2019, including large marketplaces like Amazon. While 44% said their business names had been copied, another 44% said that infringers set up web domain names to hijack their customers and divert them to another page. The businesses took the infringement seriously with 75% reporting that they had taken legal action, up to and including trademark litigation.

Colors can be trademarked by companies

Companies in New Jersey and throughout the country may be able to claim a trademark over a color. For instance, T-Mobile has successfully claimed a trademark for the color magenta, and it asserted those rights in a lawsuit against an insurance company called Lemonade. A trademark is typically granted when a company has managed to use a logo, word or color in a way that distinguishes itself from the competition.

While trademarks do need to be renewed every 10 years, they can last for an indefinite period of time. If a company has a trademark, it has the exclusive right to use it unless it gives another entity permission to do so. There have been many reasons given as to why a single color shouldn't be eligible to be trademarked. One argument is that there are a limited number of colors, which means that there would eventually be none to protect.

Apple Watch makers sued over possible patent infringement

New Jersey fans of the newest Apple Watch may be interested to know of a lawsuit filed against the company. The lawsuit was filed by a New York cardiologist who alleges that Apple infringed on an atrial fibrillation detection patent he filed in 2006 by using the technology he developed in their Apple Watches.

The cardiologist developed a method for detecting atrial fibrillation via an inflatable cuff or a special light that is emitted through the skin. Atrial fibrillation, also known as an irregular heartbeat, is a serious medical condition that may cause blood clots, heart attack and stroke. Early detection of atrial fibrillation may help prevent heart-related deaths from occurring.

Trademark dispute over the letter "O"

New Jersey residents may be familiar with the sports video sharing platform Overtime.tv. The website, which is popular with teenage athletes and sports fans, uses a simple letter "O" as its logo. When Overtime attempted to have its logo trademarked, it became involved in a legal battle with Ohio State University.

Ohio State also uses the letter "O" in its marketing, and on July 26, lawyers for the college asked Overtime to cancel its pending trademark application. According to Ohio State, the "O" used by Overtime is likely to be confused with the "O" that the school has used for a very long time. The university also sent a formal letter to the Trademark Trial and Appeal Board opposing Overtime's trademark application.

Counterfeiting poses a threat to profits and reputation

Many New Jersey businesses may be concerned about the effect of counterfeit products on their bottom line, especially as more consumers shop online with fewer opportunities to verify the provenance of the products they buy. The International Trademark Association estimates that counterfeit goods may be a $2.81 trillion business by 2022. In 2017 alone, U.S. companies lost more than $1 trillion due to counterfeiting, a $400 billion increase in counterfeit-related losses over the prior year. The winter holidays can be a particularly challenging time as people seek out name-brand products.

Counterfeit problems do more than just take away business from the legitimate trademark holders. In addition to lost sales, counterfeit products may lead to false returns and warranty claims based on fake products, particularly when the buyers believe them to be real. While many people buy dubious, cut-rate items from street vendors or online without believing them to be real, others pay full price for items marketed as legitimate. They may never know that they actually purchased a counterfeit. As a result, legitimate businesses' reputation for quality can take a hit as people use inferior, fake items and believe their problems to be caused by the original manufacturer.

How Disney responded to Baby Yoda IP infringement

Some Etsy shoppers in New Jersey may have noticed Baby Yoda merchandise on the site and wondered whether the sellers were within legal bounds. In fact, Disney would probably be within its rights to pursue the creators for intellectual property infringement, but the company has chosen to take a different approach.

Disney has been aggressive about pursuing cases of IP infringement in the past, and shortly after the first episode of "The Mandalorian" was shown, GIFs of Baby Yoda appeared on the site Giphy. Although these types of GIFs are likely to fall under fair use since they are satirical and do not harm Disney's income, Giphy played it safe and pulled the images. A few days later, they were back up with an explanation from the company saying that they had wanted to review the situation.

Trademark infringement allegations from Chooseco

Indie game developers or any creatives in New Jersey may want to avoid using the phrase "choose your own adventure" in their work. Chooseco, the company that publishes the Choose Your Own Adventure series of books, has alleged that four games on itch.io have committed trademark infringement by using the phrase, and the games have been pulled from the platform. The company founder warned developers on Twitter not to use the phrase in their games.

It is not the first time Chooseco has pursued a claim of trademark infringement. In 2007, after Chrysler used the phrase "Choose Your Own Adventure" as part of an ad campaign, Chooseco sued. Chooseco has also accused Netflix of trademark violation after the "Black Mirror" episode "Bandersnatch" mentioned the Choose Your Own Adventure series.

Target sued for trademark infringement

New Jersey residents might be interested to learn that a Georgia woman has filed a lawsuit against the retail giant, Target, for allegedly infringing on her trademark with its Good & Gather line of products. The woman trademarked Garnish & Gather in 2014 as the name of her Atlanta-based business.

According to the lawsuit, the founder created Garnish & Gather in 2013 and trademarked the business name the following year. Garnish & Gather sells meal kits, prepared foods and locally-sourced groceries. Target's Good & Gather brand was launched in September of 2019. The retailer hopes that this brand will help the company to stand out from its competitors. The Good & Gather brand offers cheese, bagged salads, granola, fresh deli entrees, vegetables, frozen fruits, protein bars and chips.

Company files latest patent case against automakers

Major automakers with a substantial New Jersey footprint are facing a lawsuit accusing them of patent infringement. One company has filed 15 suits in the past four years, accusing General Motors, Fiat Chrysler and Maserati, among others, of infringing its patents to integrate mobile devices with auto entertainment systems. The Texas company, Blitzsafe, sells devices to connect smartphones and tablets to car stereo systems. It registered patents in 2009 and 2012 for the technology involved in its devices, which allow users to make hands-free calls and play music stored on their phones.

The patents cover both wired and Bluetooth integrations. The lawsuit says that GM, Fiat and Maserati are infringing Blitzsafe's patents through their systems that allow connections with phones and other mobile devices. They can be found in Cadillac, Chevrolet, Buick, Chrysler, Fiat, Dodge, Jeep, Maserati and other brand labels. Blitzsafe alleges that the companies are knowingly infringing on its patents because they are aware of its technologies due to previous litigation it has filed. The company says it is entitled to treble damages and attorneys' fees as a result. It has settled many of its past patent complaints against automakers.

Online retailer faces backlash over trademark lawsuits

Intellectual property owners in New Jersey and around the country walk a fine line when they decide how vigorously to pursue infringers. Allowing trademarks and copyrights to be used without permission or consequence encourages further infringement and sets a precedent that could make future litigation more challenging, but initiating legal action against companies operating in completely different market segments just because they have vaguely similar names can seem like bullying and provoke fierce consumer reactions.

This is the position the online retailer Backcountry.com com recently found itself in. The Salt Lake City-based company filed trademark applications to protect the word 'backcountry" in 2018 as it prepared to launch a new line of branded merchandise. It then initiated a flurry of lawsuits and filed petitions with the U.S. Patent and Trademark Office targeting dozens of companies that use the word 'backcountry" in their names including a ski store, an avalanche safety organization, a coffee company and an electric bicycle manufacturer.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

27 Bennington Drive
Flanders, NJ 07836

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