Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

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.

Sony denied trademark for new game

New Jersey businesses are able to seek copyrights and trademarks of their intellectual property in order to protect it. After companies file for copyrights or trademarks with the United States Patent and Trademark Office, their proposed marks and intellectual property will be investigated to make certain that they comply with the law and are not too similar to material that has already received trademarks or copyrights.

In one case involving Sony, the company's new Frozen Wilds DLC, which was set to be released in two weeks, was denied its trademark. The USPTO found that the name was too similar to another game by HUUUGE Studios, which is called Frozen Wild. The USPTO also found that Sony's game is too similar to the HUUUGE Studios game, which already has a trademark.

What to know about transferring a trademark

It may be possible for a New Jersey trademark holder to transfer that mark to another party. Once the transfer occurs, that party has the same right to use and defend it against infringement that the original owner once had. In the event that only one mark is being transferred, the process may be relatively easy. However, that may not be the case if multiple marks are being transferred.

It may be even more complicated if the marks are being transferred in multiple countries. This is because each one must be recorded wherever the mark has been assigned. To make the process easier, make sure ahead of time that the assignment covers all the marks in a given jurisdiction. In addition to saving time, this may save money on assignment and other fees.

The rules for using trademark symbols

New Jersey business owners who are interested in trademark registration might not be clear on the differences between different symbols associated with trademarks, and when they are allowed to be used. The two common symbols for trademarks and registered trademarks can mean different things and can be used at different times during the process of trademark registration.

The primary difference between the trademark symbol - TM - and the registered trademark symbol - ® - is that the registered trademark symbol indicates that the mark has been registered, but the trademark symbol can mean only that the owner intends to register the mark. The trademark symbol for products and the service mark symbol for services can be used before or after a product or service is actually registered. By using these marks prior to registration, a business can alert competitors to the fact that it has applied for the brand or logo to become a registered trademark.

Record label fights to trademark the term 'empire'

A real-life court battle involving the Fox Network's television show "Empire" adds to the show's fictional drama that has attracted many viewers in New Jersey and around the world. A record label known as Empire Distribution has challenged the network's use of the word "empire" and alleged trademark infringement.

According to a lawsuit filed by the network as it pursued declaratory relief from the challenge, the recording company claimed that the television show's depiction of a fictional rap mogul tarnished the company's image. The record label offered the network three ways to settle. Fox could pay $5 million and grant the label's singers guest appearances on the show, pay $8 million or cease calling the show "Empire" altogether.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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