Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

An old trademark is involved in a new lawsuit.

A trademark of one of America's most beloved sitcoms is currently the subject of a federal lawsuit. The term 'Desilu" is currently the basis of a federal lawsuit against a network, more than a half-century after the run of the TV show. As the case has a number of issues involved, it should be an interesting case to watch in the Intellectual Property Law field.

Desilu was at one time the name of a production company for a famous sitcom. The company was sold in the late 1960's and went through a number of different ownership changes. The issue seems to be whether trademark rights were included in the sale. The defendant network claims it purchased all trademark rights. It has been using the name from time to time over the past several years.

Microsoft takes legal action in licensing case

Many people and businesses have experience with Microsoft products. This was true for Community Health Systems based in Franklin, Tennessee. However, it may have used its products in a potentially illegal manner. Microsoft has sued Community Health Systems for willful breach of contract as well as willful copyright infringement. According to a license agreement between CHS and Microsoft, CHS cannot rent, lease or lend Microsoft software.

It is also barred from hosting or distributing those products. The companies have had a licensing relationship for the past 17 years, and the general terms of their relationship say that Microsoft has the right to assure compliance with them. Microsoft says that started a compliance process in 2016, but that CHS didn't provide enough data to ensure that it was adhering to the terms of the agreement.

Small company and Uber reach trademark infringement accord

Many New Jerseyans routinely rely on Uber Technologies to help them to get where they need to go. They might not realize that the tech giant was sued for trademark infringement for its name, however.

According to news sources, a small company that is located in Florida had trademarked the name Uber Operations and had been doing business under that name for longer than Uber Technologies had been in business. Uber Operations alleged that the confusion created by the similar names had led to a deluge of unwanted calls from customers of Uber Technologies who were unhappy with their ride-share experiences.

Match Group sues Bumble for alleged patent infringement

Many New Jersey residents use dating websites. Now, a lawsuit that was filed in March by Match Group, the parent company of Tinder, alleges that Bumble infringed on Tinder's patents in its dating site.

Match Group alleges that Bumble CEO Whitney Wolfe, who co-founded Tinder, infringed on two of its patents when she established Bumble by using its swipe feature. The company also alleges that two executives of Bumble who used to work for Tinder stole information from Tinder for a planned feature that would allow users to go back to select someone that they accidentally skipped past.

What to do when a trademark is infringed on

New Jersey companies and businesses throughout the country build themselves by creating a brand identity. Part of a brand's identity is its name, and that name can be protected by a trademark. It is possible that another company will try to infringe on the trademark either inadvertently or intentionally. Prior to taking any action to protect a trademark, it is important to know that it has actually been infringed upon.

Trademark infringement does not occur simply because someone else uses a word or phrase that sounds similar to what was trademarked. This only applies if the name could cause confusion among customers. In some cases, fair or nominative use of a trademark or portion of a trademark is allowed and not considered to be infringement. One way to handle a situation in which infringement has occurred is to inquire about a partnership.

Trademark congestion may be an issue for companies

Of the 1,000 most commonly used words in the English language, 81 percent of them have been used to create single-word trademarks. That may be a hindrance to companies in New Jersey and elsewhere that are looking to create quality brand names. The study, which was published in Harvard Law Review in February, analyzed 6.7 million trademark applications from 1985 to 2016. It also included 300,000 marks that were already registered as of 1985.

When the study expanded its reach to look at the top 5,000 words, it found that 69.4 percent of those had been trademarked as well. Of the top 86,408 words, 20,295 had been trademarked, and that represents roughly 74 percent of the words typically used. Therefore, most words that people use on a regular basis are likely to have been trademarked. Many of the words that had not been trademarked were considered to have negative connotations.

Avoiding problems when launching new websites

New Jerseyans who plan to launch new websites should take care to avoid certain types of common intellectual property pitfalls. Conducting proper due diligence prior to starting a new website can help to save people and companies substantial costs.

One common pitfall that businesses may encounter occurs when businesses choose brand names only to learn that their names have already been allegedly trademarked by someone else. When people receive letters claiming that their brand names have already been trademarked, they will then either need to change their names or decide whether to spend money litigating the issue. Businesses should choose several candidate brand names and then research them to make certain that the names are available. They should then take time to trademark the names so that others can't use them.

Trademark options may be limited

New Jersey residents and others who are starting a business may find that many of their preferred names are already trademarked. Of the 100,000 most commonly used words, 75 percent of them are trademarked. Even if a particular name is available, it may not be wise to use it. For instance, those who use their last name as part of their business name might lose rights to that name if the company is sold.

One of the challenges of creating a trademark is attempting to be unique while also being recognizable. In many cases, brands that are thought to be playing off of established company names may not establish a strong identity. Brands are also encouraged to keep the names of their companies short and easy to pronounce. Google is an example of a company that has a unique name and is less than seven letters.

NFL launches lawsuit to prevent Super Bowl counterfeiting

New Jersey residents may know that the Super Bowl attracts millions of viewers and generates billions of dollars in revenue each year. The National Football League has a reputation for fiercely protecting its brand and intellectual property, and the league was joined by the New England Patriots and Philadelphia Eagles on Jan. 24 in filing a lawsuit against an unnamed group of defendants to prevent the widespread counterfeiting of official Super Bowl merchandise.

The NFL is asking a federal court to issue restraining orders that would allow law enforcement to seize counterfeit Super Bowl goods. The league often takes this type of legal action in the weeks before the Super Bowl, and the same Minnesota court issued just such a restraining order the last time the big game was held in the North Star State. In addition to protecting its brand, the NFL says that issuing the restraining orders will safeguard the profits of about 180 companies that have purchased licenses to use its official trademarks and logos.

Patent filings by Apple give clues for new tech

New Jersey residents have come to rely on their iPhones, and Apple Inc. continues to pursue new technological innovations. In a single week, the company filed five patent applications. The technical details of the filings hinted at camera improvements, sleep tracking, more flexible screen displays and perhaps augmented reality.

One patent described an approach to adding adapter lenses to small devices to improve zooming and maintain the iPhone's preeminence as a camera device. Sleep tracking concerned two of the other patents. One proposed device sought to adjust someone's alarm based on when a person actually fell asleep. The other system monitored vital signs by placing sensors throughout a person's bed.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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