Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Facebook sues web hosts over alleged phishing sites

Many people in New Jersey have encountered hacked or fake Facebook or Instagram accounts. Some might be used to boost a user's follower count, while others are real accounts where the owner lost control or fell victim to a phishing scheme. Facebook has struggled to put an end to schemes that seek to gather users' passwords, and many social network users are technologically unsophisticated and may not be aware of best practices for security, despite the site's attempts to promote a higher level of account security.

Facebook is now attempting to fight hacking attempts by using trademark law. The social media giant sued two web hosting companies, ID Shield and OnlineNIC, accusing the firms of cybersquatting and infringement of its trademarks. The complaint alleges that both companies knowingly host an array of websites that provide tools for hackers to compromise the social media site. In addition, Facebook says that the sites hosted by these providers are often used in phishing attempts. Others, they allege, are used in scams targeting Instagram. Facebook also says that it sent multiple requests to the companies to take down the websites under provisions targeting cybersquatting and other violations, but both companies kept the sites up despite several requests.

Lawsuit filed by Chuck D against his publisher

New Jersey music lovers might be interested in a recent lawsuit filed by Chuck D against Reach Global Music, the Public Enemy founder's publisher. The lawsuit was filed in California on Oct. 15.

According to the pleadings, Chuck D alleged that Reach Global Music fraudulently registered some of his works with the U.S. Copyright Office. He claimed that the songs were represented as being owned by a joint venture company instead of as being owned by himself alone.

Facebook's cryptocurrency hit with trademark lawsuit

While many Facebook users in New Jersey may be curious about the social media giant's planned jump into the cryptocurrency field, an e-commerce business is accusing it of trademark infringement. A company called Finco Services, which provides mobile online banking applications, says that its former design company produced the logo for Facebook's Libra token, the name given to the cryptocurrency. It alleges that the logo, which includes several wavy lines similar to tildes, is reused from work done for Finco's own cryptocurrency projects in violation of its trademarks filed for registration.

Finco's lawsuit accuses Facebook and Character SF, the design firm, of unfair competition, trademark infringement and false designation of origin. It says that Character SF recycled a logo developed for Finco's app, called Current, and used it for Facebook's cryptocurrency when hired by the social media firm. Cryptocurrency was one potential aspect of Current noted when Finco sought the trademark, and it currently markets apps and debit cards that use a similar logo with wavy lines inside a circle. It is not clear if the same individual designers or account managers worked on the two accounts.

Under Armor takes action to prevent trademark dilution

Companies in New Jersey and around the country file applications with the U.S. Patent and Trademark office to protect branding elements like their names and logos, but their applications sometimes prompt other businesses to take legal action to prevent what is known as trademark dilution. They might do so to maintain brand uniqueness against businesses that have similar names even when their product lines do not overlap. The apparel and footwear company Under Armor has initiated several such actions.

Under Armor's latest trademark dilution legal action is against an Oregon-based apparel company called Cascade Armory. The owners of Cascade Armory say that they received a cease and desist letter from Under Armor shortly after filing a trademark application in 2018. The husband and wife team say that they offered to change the name of their company if Under Armor agreed to pay $200,000 in rebranding costs. They claim Under Armor offered them $200. The Baltimore-based company reported 2018 sales of more than $5 billion.

Intellectual property dispute continues for comic creator's heirs

Many people in New Jersey are fans of Stan Lee's work; the comic book characters the artist created, like Spider-Man and the Avengers, are loved by millions. However, at the end of his life, a battle began to arise over the rights to his vast swath of intellectual property. In September 2019, Lee's daughter, through the Lee Family Survivors' Trust, filed a lawsuit alleging that his creations had been "looted" by POW! Entertainment since 2001. The claim follows the death of the famed comic creator at 95 in November 2018.

Stan Lee had sued POW! for $1 billion before he passed away; he said that executives exploited his declining health to pressure him to sign agreements with them under false pretenses. He even claimed that the company forged his signature on some of their agreements. Lee argued that his intellectual property should not be transferred to a third party in Hong Kong and also aimed to reclaim his rights to the names and likenesses he originally created. However, the lawsuit was dropped before Lee's death, and a statement was released in Lee's name saying that he looked forward to putting the case behind him and working with POW! in the future.

Monster Energy files trademark objection against startup

Some people in New Jersey enjoy drinking Monster Energy drinks to pep up in the middle of the day, but they may not know that the company has developed a reputation for aggressive trademark enforcement. While companies have a responsibility to protect their intellectual privacy, some have questioned Monster's eagerness to pursue potential trademark violations that seem to be far from the company's primary area of work. In addition, the company is often unsuccessful in its trademark cases, especially those that seem to be a significant reach outside its registered area of protection.

Most recently, Monster Energy filed an opposition to a 21-year-old's application for a trademark for his business. The man filed a trademark application for Monarch Energy, a company making tablets designed to help young people with arthritis remain active in sports. Monster did not challenge the company's name; instead, it said that the man's proposed logo was too similar to its own. However, Monster Energy's logo is a "monster-style" M, with a unique font below. On the other hand, Monarch Energy's logo is a simple, bold M in a laurel wreath with its name below in a standard sans-serif font.

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.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

27 Bennington Drive
Flanders, NJ 07836

Toll Free: 877-649-6002
Fax: 973-584-2621
Map & Directions