Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Girl Scouts taking Boy Scouts to court over trademark issues

For decades, boys and girls in New Jersey have participated in programs operated by the Boy Scouts and Girl Scouts. The Boy Scouts of America's decision in 2017 to include girls has prompted the Girl Scouts of the United States of America to file a lawsuit alleging that BSA has confused consumers and infringed on trademarks held by the GSUSA.

The lawsuit calls for BSA to cease using trademarks held by Girl Scouts in their communications and recruitment. The Girl Scouts leadership wants BSA to apply distinguishing terms when using words like scout, scouts, scouting or Scouts BSA. Court filings cite examples such as Google ads for BSA organizations appearing when people search for "Girl Scouts" or recruiters telling parents that BSA and GSUSA have merged. The lawsuit adds that the confusion has undermined opportunities for GSUSA to collect membership dues. Concerns about becoming associated with sexual abuse allegations directed at the Boy Scouts were also mentioned in the lawsuit.

Appeals court sends Converse shoe trademark case back to ITC

Many consumers in New Jersey recognize Chuck Taylor shoe designs for Converse. Over the past several years, the shoe company has battled with competitors over alleged infringement of its trademark design for the Chucks. A new decision from a federal appeals court has reversed a previous court ruling and directed the U.S. International Trade Commission to reconsider the trademark claims based on evidence from only the previous five years instead of the information spanning decades used in the original case.

In October 2014, Converse took 30 shoe brands and retailers to court claiming that they were producing or selling knockoff shoes that looked like Chuck Taylor designs that the company registered in 2013. Most of the defendants settled out of court, but Skechers and New Balance continued to dispute accusations of trademark infringement. In June 2016, the ITC determined that Converse did not have valid claims to the trademark elements at issue.

Be on the lookout for trademark scams

Those who come with up with new or unique ideas in New Jersey or elsewhere may be able to trademark them. However, the United States Patent and Trademark Office (USPTO) is warning those with active trademark applications about a scam designed to alter them without permission. If a trademark application or registration has been changed, the USPTO will send an email to whoever submitted it. It is important to take such an email seriously.

If the change was not authorized, impacted parties are advised to forward the email to the USPTO. They are also advised to provide their name, telephone number and information about the case that could be relevant. This will generally include the application or registration serial number as well as the time and date of the initial alert. It is important to note that those who have hired or changed attorneys may receive an alert as well.

Office space giants in trademark battle

Two giants in the flexible office space market in New Jersey and across the country are engaged in a trademark infringement battle over the term "HQ." The dispute was launched after WeWork created a new business line, HQ by WeWork. In response, Regus alleged that the name violates a trademark of HQ Network Systems that has been in place for 28 years. The HQ trademark was acquired with the company by Regus in 2004.

Regus says that HQ by WeWork could confuse consumers, as it still operates a website at hq.com and offers workspaces under the branding of HQ Global Workplaces. The lawsuit alleges that the brand has been active since the 1970s and that people could be confused by the new WeWork branding. According to the suit, customers expect that HQ-branded flexible office spaces and related services would be linked to Regus, not its competitor.

Copaxone dosing patents ruled invalid by appeals court

In the pharmaceutical industry, patents can be the key to financial success. Multiple sclerosis patients in New Jersey and across the country have made Teva Pharmaceuticals' Copaxone a high-earning drug. The treatment for relapsing MS had brand-only sales of $527 for the 20 mg/mL dose from August 2017 to August 2018; the 40 mg/mL dose brought in $2.86 billion in sales for the Israeli company in the same period of time. While multiple generics have been introduced into the market to compete with Teva's 20 mg/mL original, the company has kept competitors out of the market with dosing patents on the higher-volume injection.

Pharmaceutical company Mylan, working in partnership with Natco, began to challenge those dosing patents after it sought Food and Drug Administration approval for its 20 mg/mL and 40 mg/mL generics. The FDA approved the glatiramer acetate injections in October 2017, and Mylan brought them to market despite the pending intellectual property issues. Mylan has prevailed against Teva's claims on several occasions, and it scored a major victory as the U.S. Court of Appeals for the Federal Circuit ruled Teva's patents invalid on grounds of obviousness.

Lawsuit against Apple has confusing trademark paper trail

Financial motives typically motivate companies in New Jersey to defend their intellectual property. The trademark dispute between Apple Inc. and Social Technologies LLC illustrates the high stakes that prompt companies to establish their trademarks and patents. The companies are contesting ownership of the trademark for Memoji, but a strange paper trail from the U.S. Patent and Trademark Office confuses the matter.

Social Technologies sought registration of a trademark for Memoji with a filing dated April 1, 2018, and marked with serial number 86961925. Apple also filed a trademark application for Memoji that was given the serial number 87397135. On June 5 and June 26, the USPTO mailed suspension letters to Apple stating that One Monkey LLC had already requested trademark registration and Apple did not qualify.

Dunkin' Donuts heads toward a new future for its trademarks

When people in New Jersey think about an early-morning coffee or sweet treat, the Dunkin' Donuts name may be one of the first things that come to mind. The brand is well-known nationally and internationally for its doughnuts, donut-hole treats and coffee beverages. It has also garnered attention for its announced plans to rebrand itself in January 2019, dropping the term "Donuts" and becoming simply "Dunkin'". Some have argued that it is an attempt to make the brand seem more health-conscious, while the company noted that it is because it is focusing more heavily on coffee, a major driver of daily visits to the chain stores.

The company's trademarks highlight some interesting points about how they are protected under American law. In fact, the word "donuts", popularized by the company, is now widely accepted as an accurate spelling of the name of its specialty baked goods. By becoming so widely accepted and, indeed, generic, "donuts" is no longer a specific trademark of the Dunkin' brand. Some argue that it is dropping the word from its brand because it is no longer a protected trademark and, thus, its removal strengthens the company's new, shorter mark.

Qualcomm and Apple square off in second ITC trial

New Jersey readers may be interested to learn that another trial involving Qualcomm Inc. and Apple Inc. kicked off before the U.S. International Trade Commission in Washington, D.C., on Sept. 17. The two technology giants are squabbling over Apple's right to import certain iPhone models into the U.S. This is the second patent infringement case between the companies to go to trial this year.

The current case involves three instances of alleged patent infringement on the part of Apple. According to Qualcomm, which is the largest mobile phone chipmaker in the world, Apple is violating its patents by importing several newer iPhone models that contain modem chips made by Intel Corp. The key accusations involve the way the Intel chips handle radio signals and the way Apple processors put iPhones into sleep mode.

Protecting confidential information when firing employees

Terminating an employee can be a risk to a company, especially if that employee had access to trade secrets or confidential technology. An ex-employee can have many motivations for stealing and selling this type of information, but the motivations behind this activity don't change the fact that companies need to protect themselves. There are a few best practices that organizations should follow to ensure terminated employees can't access confidential data.

The first step to protecting IP is to cut off an employee's access to information during their termination meeting, not after or before it. Removing login credentials before a termination can alert the employee to what's going on, causing them to act in spite before their privileges are lost. During the termination, management should remind the employee of all restrictive covenants and post-employment confidentiality obligations. They should also make sure the ex-employee no longer carries any company devices that they can take out of the office.

Universities battle over trademarks

New Jersey sports fans might be interested in learning about a trademark battle between Ohio State and Oklahoma State University as well as the University of Oklahoma. The schools have been arguing over their respective trademarks.

According to news sources, Oklahoma State University filed an extension of its patent of OSU after Ohio State University filed an application to use OSU on hats, sports gear and clothing in February 2017. The two schools negotiated an agreement in September 2017 over Ohio State's use of the acronym.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

27 Bennington Drive
Flanders, NJ 07836

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