Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

What changes to the patent landscape could mean for IP cases

The patent landscape has changed dramatically since the first patent law was passed by Congress in 1790. There are some patent-related issues that anyone in New Jersey looking to protect intellectual property or secure a patent should know about. For starters, the America Invents Act has made it easier, faster and cheaper for challenges to patent validity to be initiated in the Patent Office instead of district courts. Consequently, many claims are now dismissed at the PO level.

A challenge was made to the patent law that grants more authority to the Patent Office by a company whose patent claims were dismissed following a PO trial. In another case, the Supreme Court made a change to previous practices by limiting where a case can be filed to the location where a defendant is either incorporated or has a "regular and established" place of business.

Constitutionality of U.S. Patent Office hearings

In 2011, Congress enacted the America Invents Act to simplify the process of contesting a patent. The law allows residents in New Jersey and other states to challenge the validity of a patent through the federal government's Patent Office procedures rather than at a jury trial.

In a case pending before the United States Supreme Court, attorneys are arguing that conducting patent examinations through the U.S. Patent Office is unconstitutional because the process involves revocation of property rights without a jury trial. Patent Office cases are heard by administrative law judges, or ALJs, instead of in a traditional courtroom setting before a jury.

Patent infringement row brewing over facial recognition tech

New Jersey residents are most likely aware that the smartphone market is highly competitive and driven by innovation. Electronics companies tend to be fiercely protective of features that separate their products from those of their competitors, and intellectual property disputes are not uncommon when a new phone or device uses a feature that is suspiciously similar to one protected under the nation's patent laws.

The latest smartphones can be opened in a number of ways. Samsung's Galaxy Note 8 and many other popular models use highly secure fingerprint scanners to ensure that private data is kept secure, but the Chinese electronics manufacturer OnePlus chose instead to use a complex facial recognition system on its top-of-the-line 5T model. The OnePlus unlock feature uses the 5T's 16-megapixel camera and more than 100 identifiers to tell faces apart; the biometric authentication company SensibleVision claims that the technology used by the Chinese company infringes on one or more of its patents.

Trademark case strikes down language restrictions

Trademark hopefuls in New Jersey may be interested in a trademark case decided in December 2017 that struck down some restrictions on obscene or offensive speech used in trademarks. The case played out as a contest between First Amendment rights and the obligation the government has to protect the population from offensive speech. In this instance, the First Amendment seems to have won the day.

The case focused on a particular trademark application that was denied under the law because it contained the word 'Fuct," which bears a close phonological resemblance to a word the majority of people would consider vulgar and offensive. The argument in favor of allowing the trademark indicated that the government does not have an interest in protecting the public from such words used in trademark applications. Individuals have a right to print and use such language, just as the general population has a right to see or hear it at their discretion. The trademark database is not to be considered a public forum where the government needs to censor the language for public view.

Deciding between state and federal trademarks

Business owners in New Jersey can create a trademark for their business regardless of the size of their enterprise. Trademarks can be used to protect the logo, name or slogan of businesses. However, business owners should know what type trademark they can have and how to register it.

One of the purposes of a trademark is to differentiate the services or goods created or sold by one entity from those created and sold by another. Trademarks are also brand names and identify from where the goods and services come.

Redbox and Disney tangle over digital download codes

Redbox is often the go-to solution for quick movie rentals in New Jersey, but Disney is now claiming that Redbox is pulling a fast one. Disney has accused Redbox of what amounts to illegal sales of its digital content. Attorneys for Disney say that Redbox is opening combo packs that contain a DVD, Blu-Ray and code for a digital copy of some films and then selling the digital redemption codes.

One of the issues at play in this case is whether or not Disney's intellectual property rights are being infringed upon through the sale of a digital code. On the one hand, Disney could try to claim that the code leads to a digital product that has not been sold to the Redbox customer because the code was included with the combo pack, which Redbox purchased and the customer did not.

Intellectual property law takes center stage in 'Frozen" case

Although Disney's 'Frozen" came out in 2013, a 2017 court case may have some people in California feeling a bit frigid. In the movie, the song 'Let It Go" became a breakout hit and was lauded by critics. Unfortunately, a musician who believes that 'Let It Go" is too similar to his own 2008 song, 'Volar", is suing Disney and the two singers who performed 'Let It Go" for both the movie and radio versions.

In his suit, the artist claims that his intellectual property rights have been infringed upon based on the note combinations, structures, melodies, lyrics and other aspects of both 'Let It Go" and 'Volar". He is seeking a portion of the proceeds from the movie and sales of the recorded version of 'Let It Go".

U.S. companies struggle against Chinese trademark squatting

Registering a trademark in the United States is insufficient to protect the interests of a New Jersey company that wants to market goods and services overseas, especially in China. Chinese law defends the intellectual property rights of those entities that register a claim within the country first. This means that a Chinese company can claim a trademark recognized in the U.S. as long as it does it before the creator of the brand. A U.S. company entering China could then be forced to buy the rights from the holder of the Chinese version of the trademark.

This common tactic is known as trademark squatting. Chinese companies usually register a Chinese version of the brand name that might not represent an exact copy of the U.S. trademark. For example, the Michael Jordan brand in China was trademarked by a company called Qiaodan Sports. Qiaodan is how the Chinese say Jordan.

SCOTUS to assess constitutionality of patent review system

Every day, the U.S. Patent and Trademark Office is inundated with patent applications, totaling to an average of 600,000 per year. This large number of requests combined with pressure from patent holders to speed up the deliberation process has led to an estimated 70 percent of patent examiners spending less time than they should on each application. The result has been an increase in erroneously granted patents. However, residents of New Jersey should know that there is a review system in place meant to address this problem. However, it soon may either be upheld or declared unconstitutional by the U.S. Supreme Court.

An Inter partes review is a process that challenges the validity of a patent, which may lead to it being revoked or canceled. This review is less costly than litigation and is considered useful in allowing for competition, cutting down on patent trolling and preventing bad patents from gaining monopoly power.

LeBron James and trademark law

New Jersey residents may know LeBron James from his time in the NBA. He has also formed a company called LBJ Trademarks that deals with trademarks such as those for inspirational quotes or sayings. While it may seem odd that someone can trademark a phrase, doing so can mean millions of dollars for the trademark holder. As it relates to simple words or phrases, a person may be able to trademark it even if he or she wasn't the first one to say it.

It is believed that LeBron James currently has 30 trademark applications pending in addition to the ones that he already owns. To trademark a phrase, it cannot be similar to other words or phrases that may have been used commercially. In other words, it shouldn't be so similar to confuse a person who may be looking to buy a good or service. Furthermore, the words must be more than a simple description of a good or service.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

27 Bennington Drive
Flanders, NJ 07836

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Fax: 973-584-2621
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