Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Protecting New Jersey trademarks

The importance of protecting trademarks was emphasized recently when a lawsuit was filed in federal court regarding ownership of the Craftsman tool line. Sears previously sold Craftsman tools and owned the rights to its iconic name. However, that all changed when Sears began to struggle financially prior to its bankruptcy filing. According to a recent news report, Stanley Black & Decker acquired the Craftsman brand in March 2017, for which it paid Sears approximately $900 million.

As part of a contract between Stanley and Sears, Stanley gave Sears a limited license to market certain Craftsman products. However, the lawsuit alleges that Sears began to sell a new line of tools based on the Craftsman name once Sears emerged from bankruptcy protection. The suit further alleges that Sears marketed the new tools in such a way as to make it appear that the Sears tools were superior to the Stanley tools and casting doubt on the legitimacy of the Stanley line.

Protecting a trademark

Businessmen of New Jersey may be aware that the business landscape is a vibrant ecosystem with millions of new businesses budding every year. However, what they may not be aware of is that more businesses showing up means that there is a commensurate rise in trademarks: In comparison to the year preceding it, the year of 2017 saw a rise of 30 percent in the number of trademark applications filed, or about 9.11 million applications in total for that year. This ever-growing number of trademarks means that lawyers and brand strategists need to work harder than ever to protect their brand.

In the event that a business doesn't protect its brand well, it could get into some real trouble, including the inability to secure a mark, accidentally infringing on another business's brand or having their mark infringed upon. Trademark infringement has been increasing over the past several decades to such a degree that more than four out of every five brand experts have reported experiencing infringement during the past year; even social media names and web domains aren't safe.

History Repeats Itself via Scientific Patents

In New Jersey, legislators are contemplating making changes in legal regulations regarding patents. In January 2019 and February 2019, Sen. Thom Tillis and Sen. Chris Coons held meetings about patents and the law. The senators are proposing to make new rules similar to those invented by Francesco Ruffini in 1923. At that time, Ruffini, an Italian senator, wanted to allow scientific researchers rights to patent their discoveries.

Ruffini wrote a fascinating text backed by both the League of Nations and well-known scientists. However, Ruffini's idea failed. Scientists across the globe did not approve of his plan. Lawmakers disregarded his concept. Ruffini's Committee on Intellectual Cooperation, a branch of the League of Nations, regarded his notion as an undertaking devoid of any noticeable merits. The committee's prestigious members included Albert Einstein and Marie Curie. Today's scientists tend to agree with these past decisions. The committee's mission was to create a university for all nations and an academic exchange program. The committee also wanted to adopt Esperanto as its official language.

Fortnight sued by Alfonso Ribiero

Alfonso Ribiero, known for his signature "Carlton" dance performed by his character on "The Fresh Prince of Bel-Air," filed suit against Epic Games, owner of the Fortnite video game. Epic featured Ribiero's distinct dance moves as an add-on dance players may purchase for their Fortnite characters.

Ribiero's lawsuit raised the question of whether he, in fact, has legal ownership of the "Carlton" dance. The U.S. Copyright Office has answered with a resounding "no" and even went as far as to poke fun at Ribiero. A supervisory registration specialist from the U.S. Copyright Office has reportedly claimed the "Carlton" dance is merely a simple dance routine anyone is capable of doing.

Appeals court says certain diagnostic tests cannot be patented

Some New Jersey medical researchers may be affected by a federal appellate court decision on Feb. 6 regarding diagnostic test patenting. Rather than providing clarification about this type of patenting, the decision instead increased the pressure on Congress to provide guidance.

The Athena unit of Quest Diagnostics, Inc., filed a lawsuit against the Mayo Clinic in 2015 regarding a diagnostic method for neurological disorders that involves the detection of certain antibodies. The company argued that the Mayo Clinic owed it royalties, but the case was dismissed. The argument was that the diagnostic test could not be patented because it only dealt with a correlation between the presence of antibodies and the condition. Therefore, it was a matter of "natural law".

Ariana Grande sued for copyright infringement

New Jersey fans of Ariana Grande may be interested to learn that the pop superstar is being sued for copyright infringement. A painter based in Las Vegas, Nev., claims that the singer used some of his work in her music video for "God Is a Woman" without his permission. The image, which shows a woman as a candle wick in the sky, was only altered slightly from the original painting, according to the federal lawsuit. The painter said he only learned about the music video after reading about it online.

The attorneys representing the Las Vegas painter have claimed that the director and production team for "God Is a Woman" has already faced two previous lawsuits based on copyright violations. This lawsuit asks that Grande remove the music video from the internet and pay for any legal fees incurred by the plaintiff. The painter is also seeking damages for an undisclosed amount.

Why companies may want to file an international trademark

Some New Jersey entrepreneurs and business owner might want to consider filing an international trademark. This may not only be necessary if the company is operating outside of the United States. Protection may be needed for any company with some degree of online exposure.

This protects the company from overseas counterfeiters and cybersquatters, but filing can be time-consuming and tedious. However, the international treaty informally known as the Madrid Protocol allows a company to file an application with the World Intellectual Property Organization that covers trademarks in all the countries that have signed onto the treaty. Unfortunately, this only includes 90 countries. Individual filings must be made for other countries, including most of South America and the Middle East.

Judge grants summary judgment in patent case

New Jersey residents face a number of advertisements when they scroll the internet or even use their mobile phones. Two of the companies involved in creating the technology targeting ads to viewers' interests have been engaged in an intellectual property dispute over their software. Free Stream Media, otherwise known as Samba, patented a system that allows the company to send advertisements to mobile phones based on the owners' television viewing options. The company can charge advertisers for its ability to target advertisements based on customers' viewing choices.

The company sued another firm, Alphonso, which also allows companies to target ads to mobile customers based on their television choices. Unlike Samba, however, Alphonso does not maintain its own server detecting television choices and matching relevant ads to customers' interests. Instead, this company partnered with a TV manufacturer, Vizio, to buy customer data and sell advertising based on the information. However, Samba said that even though the system appeared to be different, Alphonso was simply contracting the patented TV communication system to Vizio.

Chooseco sues Netflix for trademark violation

Choose Your Own Adventure books from Chooseco enjoy a wide audience in New Jersey and around the world. The publisher of the popular book series that printed over 620,000 books last year alone and licensed translation rights in 27 countries has filed a lawsuit against Netflix and wants $25 million in damages. The book publisher claims that the streaming video service's show "Black Mirror: Bandersnatch" infringes upon Chooseco's trademarked phrase "choose your own adventure".

In "Black Mirror: Bandersnatch", the lead character is adapting a fictional book based on choosing adventures into a video game. The content of the show is dark, and the book publisher asserts in its lawsuit that many concerned people and parents have contacted it under the belief that it was involved in the Netflix production. The company believes that the disturbing content in the Netflix show has tarnished the reputation of its books for young people.

Supreme Court will hear FUCT trademark appeal

People in New Jersey might be interested in learning about an upcoming trademark case that will appear on the docket of the Supreme Court of the United States. The case involves the owner of a clothing line who is fighting to register the name of his line with its name, which is FUCT.

The U.S. Patent and Trademark Office originally denied the man's trademark application in 2011. The office ruled that the man's proposed trademark could not be registered because it represents a vulgar word and is thus scandalous. Under trademark law, proposed trademarks may be denied if they are immoral, contain material that is scandalous, or are deceptive.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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