Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Trademark filing by university denied by patent office

Attempts to file for and receive trademarks are common among organizations throughout New Jersey and the rest of the United States. While some requests may sound unusual, there are many reasons to seek trademark approval.

For example, a trademark application by Ohio State University was recently denied. The university sought to trademark the word "the" in relation to its full name. Students and faculty often refer to the school as The Ohio State University. The school already sells products to commemorate this name. However, the trademark office said that Ohio State failed to show that the word fits the requirements to be trademarked.

WeWork CEO returns trademark payment

WeWork is a popular brand for co-working spaces, attracting freelancers, small businesses and even outposts of large corporations to share office space at its locations in New Jersey and across the country. The company has been criticized, however, for its corporate structure. One area of criticism has been the relationship with the company's founder and CEO. Following media reports, the company's CEO recently returned around $5.9 million worth of stock options that he had received earlier. The CEO was paid in stock options for the company to acquire the trademark "We," which had originally been held by a smaller company controlled by the chief executive officer and his co-founder.

The We Company, owner of WeWork, filed an amended S-1, stating that the CEO had directed the company to unwind the payment. The payment had been issued after We Company took its new name, changing from WeWork. The trademark was held by WE Holdings LLC, an investment company owned by the CEO and the WeWork co-founder. WeWork has a corporate structure called an umbrella corporation, criticized by some as being overly complex for a company aiming at widespread investment after an upcoming initial public offering (IPO). The We Company stated that it continues to hold all of its "we"-related trademarks.

Ariana Grande sues Forever 21 over alleged copyright infringement

New Jersey residents who follow developments in the entertainment industry may know that Ariana Grande has taken legal action against the fashion retailer Forever 21 and its beauty products spinoff brand Riley Rose. In her lawsuit, the popular singer claims that the California-based company used images of her without consent and even went so far as to hire a look-alike model in order to fool the public. Grande is seeking damages of $10 million for alleged copyright and trademark infringement.

According to attorneys representing the Grammy Award-winning singer, Grande chose not to enter into an endorsement deal with Forever 21 in 2019 after negotiations lasting for several months because the compensation on offer was inadequate. Forever 21 is accused in the lawsuit of using 30 or more images and videos of Grande in its marketing campaigns without permission. The retailer also allegedly used images of a model who looked like Grande wearing clothes similar to those worn by the singer in a popular music video.

USPTO denies Tom Brady's "Tom Terrific" trademark application

Football fans in New Jersey and around the country will likely know that a catchy nickname can add to the aura surrounding an athlete. Nicknames can be valuable intellectual property, but they can be difficult to protect if they are not original. New England Patriots quarterback Tom Brady learned this lesson on Aug. 22 when the U.S. Patent and Trademark Office rejected his application to trademark the nickname "Tom Terrific".

The USPTO denied Brady's trademark application because the nickname has long been associated with the legendary Major League Baseball pitcher Tom Seaver. Trademarks are commonly denied when they could confuse consumers by suggesting that one brand is associated with another. Brady will now have six months to decide whether or not to appeal the decision. If he declines to take action, the trademark application will be considered abandoned.

Zumba sues J.C. Penny over fitness slogan

New Jersey residents may be aware that many traditional brick-and-mortar retailers are struggling to compete with online sellers like Amazon. The big-box chain J.C. Penny was once one of the country's most successful retail chains, but it now faces falling sales and an uncertain future. An earnings report released on Aug. 15 reveals that the chain lost $48 million during the second quarter, and the company's fortunes took another hit recently when the popular exercise and weight loss program Zumba sued it for trademark infringement.

The lawsuit was filed when Zumba discovered that J.C. Penny was selling fitness apparel using the slogan 'From A to Zumba." Zumba Fitness, LLC, says that it did not produce, license or authorize any of the products being sold by J.C. Penny, and it claims that the slogan is being used by the retailer to deceive and mislead consumers. J.C. Penny has been accused of trademark infringement before. In 2016, the luxury fashion brand Burberry sued the retailer for selling products bearing a design virtually identical to its own. That lawsuit was settled for an undisclosed amount, according to reports.

Prince's estate pursues trademark on purple

New Jersey fans may love Prince's music as well as the late entertainer's signature style. However, his estate is still fighting with the U.S. Patent and Trademark Office over an attempt to register a specific shade of purple as a trademark for musical recordings, music videos and entertainment services. Prince's estate is attempting to register Pantone's "Love Symbol #2", a particular shade of purple closely connected to Prince's public persona and musical works. The estate is working with Paisley Park Enterprises, the holding company for Prince's intellectual property rights, in an attempt to register the color as a trademark.

The USPTO said in a letter that so far the application failed to show how the color trademark would be applied to all the different items and services in question, including stage lights, tickets, painted venues, album colors, or website design. It said that different types of uses of the color would be separate marks, requiring separate applications for the office to consider on their own merit. Earlier, another entity issued a preliminary rejection, saying that it may be possible to protect color under trademark law, but it is not clear that the color trademark in question is sufficiently distinctive.

School sues retailers over patent infringement

When a person or company in New Jersey or anywhere else in the United States comes up with a new idea, it may be possible to protect it. According to the University of California, five major companies have infringed on patents related to LED light bulb technology. Amazon, Walmart and Ikea are among the companies that were named in the lawsuit. The lawsuit is asking that the retailers enter into licensing agreements to use the filament LED bulb technology.

According to the school, they were created thanks to research done by professors at the school. One of those professors won a Nobel prize for physics in 2014. In addition to the lawsuit filed in the U.S. District Court in Los Angeles, a complaint was made to the U.S. International Trade Commission. The complaint says that companies that supplied products to the defendants were not required to abide by the existing patents.

Venmo or Lenmo? PayPal claims trademark infringement

Many New Jersey consumers and businesses rely on PayPal or Venmo for money transfers or online purchases. A fewer number may have heard of Lenmo, an online startup that focuses on peer-to-peer loans. However, PayPal is suing Lenmo for trademark infringement, claiming that the company is seeking to unlawfully profit from the goodwill and fame of its Venmo brand trademark. Venmo is a PayPal subsidiary brand marketed primarily to younger people. While its lack of fees attracted many to the mobile app, where it is used to transfer money between friends or make online purchases, it is growing more popular overall as a way to pay for music, food and ride share services.

PayPal says that Lenmo is attempting to take advantage of the trust consumers have in the Venmo brand to make a profit, despite the fact that it has no connection to the PayPal-run service. It says that many consumers may be confused about Lenmo given its similarity to the Venmo trademark; they may actually think Lenmo is owned or operated by PayPal and Venmo. In addition, Lenmo is in direct competition with the larger company. While many people associate PayPal primarily with money transfers or online shopping, the company offers a credit service as well as direct loans.

Prime Inc. sues Amazon for trademark infringement

New Jersey readers have likely noticed Amazon trucks with "Prime" written on the side of them while traveling area roadways. However, Prime Inc., a Missouri-based trucking company, claims the retail giant's use of the word on its vehicles amounts to trademark infringement.

According to a federal lawsuit filed on July 2, Prime Inc. claims that Amazon's placement of "Prime" on its delivery vehicles is causing it to lose money. The trucking company also claims that it notified the California-based online retailer of the alleged trademark infringement over 24 months ago through written correspondence. The company was notified a second time when Prime Inc. brought a complaint before the Trademark Trial and Appeal Board. Despite this, the lawsuit contends, Amazon continues to display "Prime" on its shipping vehicles in an "intentional, willful and malicious" manner.

Iconic names restored at Yosemite National Park

As part of a $12 million settlement paid to the park's former concessionaire, many of the names for locations in Yosemite National Park were changed back to their original names. The lawsuit was originally filed when a new company took over many of the park's concessions and hospitality services and changed the names of many iconic locations. The result of this lawsuit could also affect the naming of locations in national parks in New Jersey and other states.

During the transition of services from one company to another, much of the signage in the park was covered up or removed to show new signs. It's estimated that it will take days or weeks to return signage and other postings to their original names. All trademarks and service marks will be the intellectual property of the new company as long as they have a contract with the government.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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