Category: Trademark Infringement

How Does Intellectual Property Work?

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Intellectual Property

Intellectual property (IP) encompasses patents, trademark, copyrights, and trade secrets. In general terms, IP refers to any intangible product made by a person, and it is important to protect your IP.

Fortunately, safeguards can be put in place to protect inventions, company branding, trade secrets, and other forms of IP. Innovators should work with a lawyer when they are seeking guidance for issues related to IP, including trademarks, copyrights, patents, and trade secrets. Listed below are ways you can protect your IP.

Trademarks

Trademarks usually safeguard brands and the logos used on products and services. You should follow these steps in order to receive a trademark:

  • File a submission, and choose what types of products and services you want to use for the trademark.
  • A trademark examiner examines the submission to see if anyone has already registered the same or similar mark. If nothing is found, a trademark is published in a public register to other parties to object. If no objection is provided, then the trademark is approved.
  • A trademark stays in effect for successive 10-year periods if the owner meets the legal necessities for renewals.

Copyrights

When an author writes, draws, or designs a piece of work, they have immediate copyright. A person can file an application to receive a federal registration for a copyright via mail, online, or in person, which endures for the creator’s lifetime, along with an additional 70 years.

Patents

Patents shield innovative ideas, processes, and inventions. Once the innovator files a patent application with the U.S. Patent and Trademark Office (USPTO), an examiner reviews it to make sure that the invention has not been previously utilized.

Usually, the examiner and innovator seeking the patent will have a discussion on the merits of granting the patent. It is worth nothing if the person receives a patent, it is valid for 20 years from the application’s filing or 17 years from the patent’s issuance, whichever is longer.

Trade Secrets

A trade secret is private, specific information that affords its owner a financial edge over competitors. To protect a trade secret, the owner must do the following:

  • Regulate physical and electronic access.
  • Utilize nondisclosure agreements with any party that requires you to share the information, such as a regulatory agency.
  • Stamp documents with a trade secret stamp or watermark.

Innovators should seek legal counsel to clear any hurdles in the patent process to avoid issues and possible business litigation.

Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Are Skilled at Protecting IP

Protecting your IP rights can be contentious, with several hurdles to clear. Our Philadelphia business lawyers at Sidkoff, Pincus & Green P.C. can help you avoid issues related to your IP. Call us at 215-574-0600 or complete our online form for an initial consultation. We are located in Philadelphia, and we serve clients throughout Pennsylvania and New Jersey.

Lanham Act’s Ban on Immoral Trademarks is a Violation of the First Amendment, Superior Court Rules

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Philadelphia business lawyers assist clients with business and trademark issues.In the case of Ianco v. Brunetti, the clothing line, FUCT, was denied a trademark for its use of the F-word, even though it is spelled differently. The founder of the clothing company, Erik Brunetti, wanted to trademark FUCT, which stands for “Friends U Can’t Trust,” but the application was denied by the U.S. Patent and Trademark Office because the brand name was considered vulgar. However, the U.S. Supreme Court ruled in favor of the clothing brand and found that the Lanham Act’s ban on scandalous trademarks is a violation of the First Amendment.

Justice Elena Kagan wrote the majority opinion, which stated that the law violated the First Amendment rights of artist Erik Brunetti. The Justice Department tried to limit the meaning of “scandalous” to only cover names that are sexually explicit, but Kagan said that the Lanham Act covers all scandalous and immoral ideas. Therefore, denying the trademark for Brunetti’s clothing brand violates the First Amendment. Justices Clarence Thomas, Ruth Bader Ginsburg, Samuel A. Alito Jr., Neil M. Gorsuch and Brett Kavanaugh endorsed the opinion.

According to Justice Kagan, the Lanham Act’s ban on immoral trademarks favors ideas that are socially acceptable and rejects those that provoke offense and condemnation. For example, the U.S. Patent and Trademark Office rejected a trademark for “You can’t spell healthcare without the THC,” which was a suggested tagline for a pain-relief medication. However, it approved a trademark for “Say no to drugs – reality is the trip in life.” It also rejected a trademark for “Madonna” for a wine label but approved “Jesus died for you” on t-shirts and other clothing items.

In a separate concurrence written by Justice Alito, he wrote that it is crucial that the court stand firm on the principle that the First Amendment will not tolerate viewpoint discrimination, particularly at a time when free speech is under attack. He went on to say that the Court’s decision does not prevent Congress from passing statutes that ban registration of trademarks that may contain “vulgar terms that play no real part in the expression of ideas.”

In dissents written by Chief Justice John G. Roberts and Justices Sonia Sotomayor and Stephen G. Breyer, the justices said that the ban on scandalous trademarks did not violate the First Amendment when only addressing obscenity, vulgarity and profanity. Sotomayor said that the decision will limit the government’s power to refuse trademarks that contain extremely vulgar and obscene words.

Philadelphia Business Lawyers at the Law Office of Sidkoff, Pincus & Green P.C. Assist Clients with Trademark Issues

If your trademark application was denied, or your First Amendment rights have been violated, contact the Philadelphia business lawyers at the Law Office of Sidkoff, Pincus & Green P.C. Our skilled legal team will review the details of your case and ensure that your rights are protected as we work to resolve your trademark dispute. To schedule a confidential consultation, call us today at 215-574-0600 or contact us online. From our offices in Philadelphia, we represent clients across Pennsylvania and New Jersey.

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Third Circuit Adopts McCarthy Test for Distributor-Manufacturer Trademark Disputes

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On April 18, 2017, the Third Circuit held that the McCarthy Test should be applied in trademark disputes between distributors and manufacturers when there is no written contract. Covertech Fabricating, Inc. v. TVM Bldg. Prod., Inc., 855 F.3d 163 (3d Cir. 2017). Plaintiff Covertech Fabricating, Inc., headquartered in Canada, manufactures protective packaging and reflective insulation. In 1998, Plaintiff entered into an informal agreement with Defendant TVM Building Products, Inc. which designated Defendant as the exclusive marketer and distributor of Plaintiff’s rFOIL insulation products in the United States. After disputes regarding payment and Defendant’s purchase of competitor insulation products, Plaintiff terminated its informal agreement with Defendant and trademarked the rFOIL product in Canada. In response, Defendant petitioned to register rFOIL as a trademark in the United States. Plaintiff sued Defendant to assert its ownership over the trademark. The lower court granted Plaintiff’s claims. The Third Circuit affirmed the decision but found that the lower court’s use of the first use test was legal error.

The Third Circuit held that the McCarthy Test should be applied in distributor-manufacturer disputes rather than the First Use Test due to the unique attributes of a relationship between an exclusive and noncompetitive distributor and manufacturer. The First Use Test is generally appropriate for unregistered trademark disputes as it favors the entity that used the trademark first thus rewarding the party with actual and continuous use of the mark. The Third Circuit held that the McCarthy test is more appropriate under these circumstances because it would unjustly benefit the distributor in the majority of cases simply due to the distributor making the first sale of the goods solely at the manufacturer’s request. The McCarthy tests states that “the manufacturer is the presumptive trademark owner unless the distributor rebuts that presumption using a multi-factor balancing test.” The factors of the balancing test are:

(1) which party invented or created the mark”; (2) which party first affixed the mark to goods sold; (3) which party’s name appeared on packaging and promotional materials in conjunction with the mark; (4) which party exercised control over the nature and quality of goods on which the mark appeared; (5) to which party did customers look as standing behind the goods, e.g., which party received complaints for defects and made appropriate replacement or refund; and (6) which party paid for advertising and promotion of the trademarked product.

The Third Circuit ruled that Plaintiff was the proper owner of the trademark given a balancing of the McCarthy factors. Even though the balancing clearly favored Plaintiff in this case, the Court asserted that ownership generally goes to the manufacturer if the factors are equal given the presumption of ownership for the manufacturer. The Court also dismissed Defendant’s challenges regarding Plaintiff’s successful fraud and acquiescence claims.

For more information, please call our Philadelphia Trademark Lawyers at the Law Office of Sidkoff Pincus & Green at 215-574-0600 or submit an online inquiry.

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Third Circuit Strikes Down Philadelphia Trademark Claim

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In July 2017, the Third Circuit ruled against Appellant Parks, LLC (“Parks”) in its false association trademark claim against Tyson Foods, Inc. and Hillshire Brands Company (collectively “Tyson”). Parks, LLC v. Tyson Foods, Inc., 863 F.3d 220 (3d Cir. 2017). Parks manufactured sausage under the brand name “Parks,” taken from the founder’s surname, from the 1950s until 2000 when it entered into a licensing agreement with Dietz and Watson, a Philadelphia based producer of delicatessen meats. Dietz and Watson, as well as Super Bakery, Inc., has continued to make and sell Parks branded products since partnering in 2000. In 2014, Tyson introduced a line of frankfurters under their trademarked “Ball Park” line called “Park’s Finest.” In 2015, Parks filed suit against Tyson for false association, among other claims, in the District Court. The trial court granted Tyson’s motion for summary judgment, and the Third Circuit affirmed.

To make a successful false association claim, a plaintiff must prove that “(1) the marks are valid and legally protectable; (2) the marks are owned by the plaintiff; and (3) the defendant’s use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods or services.” A mark can be valid and legally protectable if it is either inherently distinctive or achieves secondary meaning. Since trademarks based on a surname are not inherently distinctive, Parks argued that “Parks” has a secondary meaning which occurs when “the mark is interpreted by the consuming public to be not only an identification of the product or services, but also a representation of the origin of those products or services.” In order to evaluate if “Parks” has a second meaning, the Court examined factors including the extent of advertising, length and exclusivity of use, evidence of copying, customer surveys, size of the company and number of sales and customers, and actual confusion.

While Parks could show that it had a long history and exclusivity of use of “Parks,” considering its nearly 60-year history of using the mark, it was unable to prove the other factors. First, Parks could not show that there was recent evidence of extensive advertising sufficient to create a mental association between the mark and the product because their product was merely advertised locally. Second, Parks could not prove that Tyson purposefully copied the “Parks” brand. Third, Parks was unable to show that there was brand confusion using a Squirt survey, in which participants are asked questions about the products in the claim alongside control products to see if there is confusion. Here, the survey did show consumer confusion; however, the Court rejected the results as the participants were primed to find these products to be similar amongst the varied control products. Finally, Parks’ minimal sales compared to Tyson’s large presence in the national market lends to the conclusion that “Parks” did not have a second meaning because people more likely associate the mark with the larger Tyson and historically have not actually confused the two brands as evidenced through extensive discovery.

Even though the Court recognized Parks’ long history and exclusivity of the “Parks” mark, it found that Parks’ false association claim could not continue in the face of its lack of advertising, its “miniscule market share,” and its lack of brand confusion.

For more information, please call our Philadelphia Trademark Lawyers at Sidkoff Pincus & Green at 215-574-0600 or submit an online inquiry.

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Eastern District PA Court Finds Sites Reviewing Products are not Engaged in Commercial Speech

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On May 4, 2018 the United States District Court for the Eastern District of Pennsylvania held that certain websites that engage exclusively in reviewing consumer goods are not engaged in “commercial speech” and are not in violation of trademark law. GOLO, LLC v. HighYa, LLC, No. CV 17-2714, 2018 WL 2086733, at *1 (E.D. Pa. May 4, 2018). Plaintiff GOLO owns and operates a weight loss program which had been reviewed on both Defendants, HighYa and BrightReviews, websites. Plaintiff alleged that the reviews posted by Defendants and consumers on their sites were fraudulent and harmed its business. Neither Defendant sells any goods from their sites and both derive most, if not all, of their revenue from web traffic and advertisements on their sites. Plaintiff brought a claim for false advertising and trademark infringement under the Lanham Act as well as state law libel and unfair competition claims.

The Eastern District dismissed Plaintiff’s claims based upon the fact that Defendants did not engage in commercial speech. The court explained that to sustain a claim under the Lanham Act regarding issues of false advertising or false association it is required that such speech made be commercial. To identify if speech is commercial a court must decide “whether the speech (i) is an advertisement, (ii) refers to a specific product or service, and (iii) whether the speaker has an economic motivation for the speech.” Id. The main dispute was whether prongs (i) and (iii) were met by way of Defendants’ online reviews. Relying on a decision in the Eleventh Circuit, the Court reasoned that although Defendants were economically benefitted by consumers trafficking their sites and reviews, “the financial benefit is merely incidental to the content of the reviews.” Defendants did not directly make recommendations regarding Plaintiff’s program. Further Plaintiff could not cite to specific evidence of how Defendants’ reviews directly and negatively harmed business.

The Court went on to dismiss the trademark infringement or false association claim on the grounds that Plaintiff had not sufficiently alleged that Defendants’ use of Plaintiff’s name was “likely to cause consumer confusion.” The trade libel claim and unfair competition claims were dismissed due to such claims being time-barred and Plaintiff inadequately pleading falsity. The Motion to Dismiss on behalf of both Defendants was granted.

For more information, please call our Philadelphia trademark lawyers at Sidkoff, Pincus & Green at 215-574-0600 or submit an online inquiry.

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Star Trek and Dr. Seuss Mashup Copyright Suit

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ComicMix is currently embroiled in copyright and trademark litigation with Dr. Seuss Enterprises stemming from a crowd-funded book project called Oh, The Places You’ll Boldly Go! The project originated on the crowd-funding website Kickstarter. ComicMix intended to create a mashup of Dr. Seuss and Star Trek, and raised thousands of dollars to fund the project.

The lawsuit was filed at the end of 2016, and a federal court judge has recently ruled that the suit can proceed. Earlier, a U.S. District Court Judge had dismissed the trademark claims, allowing only the copyright claims to proceed. The claims were subsequently amended and are proceeding along with an additional claim for unfair competition.

This case, according to the District Court Judge, addresses an important and timely question about the new mashup culture, wherein two unique and independent creative concepts are mashed together. Courts are struggling to decide how this culture squares with the legal doctrine of nominative fair use. This doctrine allows for the use of another’s trademark for purposes such as commentary, criticism, comparative advertising, or parody. The legal standards for what constitutes fair use was articulated in 1992 after a number of newspapers used toll numbers to conduct polls on the popular band, The New Kids on the Block.

In trying to figure out whether ComicMix’s project constitutes nominative fair use, the Court considered whether the product is readily identifiable without the use of the trademark, and whether ComicMix falsely suggested that the project was sponsored by Dr. Seuss Enterprises. The trademark at issue was the title used and the font style.

The question still pending as the litigation proceeds is whether the use of the title, which the original use has sold over 650 million copies, was more than reasonably necessary. The most pressing issue in the case is that the mash-up used the exact same font as the Dr. Seuss original, even imitating exactly the unique shape of the original exclamation point. Because ComicMix was unable to establish fair use, the litigation was allowed to proceed to jury.

The licensing program of Dr. Seuss Enterprises currently allows other authors to publish books based off of its existing books and use of its characters. However, it does not have a licensing program that addresses the mash-up market. The company has stated if it decides to license mash-ups, it would be based on a new licensing program, not similar to or derived from its existing one.

Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green P.C. Represent Clients in All Types of Intellectual Property Claims

To schedule a consultation with the Philadelphia trademark lawyers at Sidkoff, Pincus & Green P.C., call us today at 215-574-0600 or contact us online. We represent clients throughout Pennsylvania and New Jersey in all types of business litigation, including fair use, trademark, copyright, contract, tortious interference, and unfair competition claims.

Philadelphia Intellectual Property Lawyers Discuss Costco “Tiffany” Rings

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Recently, Tiffany & Co., sued Costco for selling millions of dollars’ worth of knock-off Tiffany rings. Costco described the rings as “Tiffany” rings on their signs. Tiffany & Co. argued that this was misleading to customers and falsely suggested that the rings were actually designed and manufactured by the famous jewelry maker.

Tiffany & Co. was the first company to set rings in a claw to show more sparkle and light refraction. Prior to its innovation, diamonds were encased in a metal cup, reducing the luminosity of the stone. Now, all rings set in a claw setting are colloquially referred to as “Tiffany setting” rings.

Tiffany & Co. was successful in its suit and the Court barred Costco from using the word “Tiffany” to describe products not associated with the actual Tiffany jewelry brand, and ruled that Costco should pay Tiffany & Co. over $11 million plus interest, and nearly $9 million in punitive damages.

Costco has announced that it plans to appeal the decision, emphasizing that the rings were not stamped with the Tiffany & Co. name, but rather the name of the company that manufactured them. Further, Costco argues that the rings were accompanied by appraisals that did not say “Tiffany & Co.” The receipts also did not mention that the rings were Tiffany rings and the infringement was limited to the signage promoted by Costco to sell the rings in its retail outlets.

Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green P.C. Represent Clients in All Types of Trademark Disputes and Intellectual Property Matters

At Sidkoff, Pincus & Green P.C., we pride ourselves on providing clients with quality representation in various types of commercial and business matters. If you have questions about a trademark law issue, contact one of our Philadelphia trademark lawyers today at 215-574-0600 or contact us online.

Trademarks and the First Amendment

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Recently, the United States Supreme Court ruled that trademarks are protected by the Free Speech Clause of the First Amendment. Many wonder what this means for holders of trademarks, or prospective trademark applicants. The United States government cannot reject a proposed trademark on grounds that the viewpoint it expresses is distasteful or offensive. According to the Supreme Court, this would amount to government censorship of free speech. No viewpoint can be discriminated against, according to the Court.

The Federal Government enacted the Lanham Act to encourage commerce and create a uniform standard. The relevant provision is the “disparagement clause,” which has heretofore barred trademarks that defame individuals, institutions, or beliefs.

The recent precedential case is known as Matal v. Tam. The facts underlying the case are as follows. The lead singer of a band known as “The Slants,” sought to trademark the band’s name, but his application was rejected by the United States Patent and Trademark Office (USPTO). The Office determined that the band’s name was derogatory toward Asians and offensive. As such, the USPTO determined that the band was not entitled to receive the government sanctioned benefit of trademark protection.  The Supreme Court disagreed and held that trademark registration cannot be denied by discriminating based on viewpoints.  While the government may discriminate based on viewpoint when it comes to its own speech, trademarks are private speech and the public expression of ideas may not be prohibited because the ideas themselves are offensive to some of their hearers.

Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green Represent Clients in Intellectual Property Litigation

At Sidkoff, Pincus & Green, our legal team provides services to businesses and individuals in trademark disputes and other intellectual property matters. To schedule a confidential consultation, call us today at 215-574-0600. With offices conveniently located in Philadelphia, our Philadelphia trademark lawyers represent clients throughout Pennsylvania and New Jersey.

Philadelphia Business Lawyers: Court Rules on Copyright

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Recently, the U.S. Supreme Court issued a watershed decision in Star Athletica v. Varsity Brands, holding that the decorative features on cheerleading uniforms are protected by federal copyright law. The issue before the court was what was the appropriate test to determine whether a feature of a useful article, such as an article of clothing, is protected under the 1976 Copyright Act’s Section 101. The Court set out to resolve a widespread disagreement as to what testing standard is most appropriate.

Justice Clarence Thomas authored the opinion. He wrote that an artistic feature of a uniform’s design can be copyrighted if it can be perceived as a two or three-dimensional work of art that stands separate from the uniform itself. The analysis applies equally to all “useful articles.” In addition, the feature must qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the uniform.

Varsity Brands manufactures cheerleading uniforms and athletic apparel. Varsity has more than 200 copyright registrations for two-dimensional designs consisting of various patterns, chevrons, and shapes. Designers create concepts that consist of original combinations, positionings, and arrangements of elements and do not consider functionality or the ease of actually producing uniforms. Varsity sued Star Athletica, who also markets cheerleading uniforms, after they allegedly copied two-dimensional art designs that Varsity had copyrighted. The Court held that the uniforms at issue met the requirements set forth by the newly devised test.

Justice Stephen G. Breyer dissented, finding that Star Athletica’s designs looked like generic pictures of cheerleader uniforms. He compared the situation to a pair of old shoes in a Van Gogh painting—stating that it would not qualify as a shoe design copyright, though the painting itself would be copyrightable.

Justice Ruth Bader Ginsburg concurred with the majority’s judgment, but not its opinion. She said that designs are not designs of useful articles, but rather are themselves copyrightable graphic works reproduced on useful articles. She found that the designs were standalone works of sculptural art that were covered by Section 101 of the 1976 Copyright Act.

Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Handle All Types of Trademark Litigation

If you are seeking representation in any type of business, copyright, or trademark matter, the Philadelphia trademark litigation lawyers at Sidkoff, Pincus & Green P.C. are available to answer your questions. To schedule a consultation with us, call us at 215-574-0600 or contact us online today.

Philadelphia Business Lawyers: Fitbit Gets New Attempt to Ban Rival

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The United States International Trade Commission has released a notice that they will revive efforts by Fitbit to ban the import of fitness tracking devices made by rival Jawbone. In November 2015 Fitbit filed a trade complaint alleging rival Jawbone’s wearable trackers infringed upon its patents.

The complaint requested an investigation and a cease and desist order. Jawbone moved for summary determination that the patents are directed to ineligible subject matter under the Patent Act. Presiding Judge Pender granted Jawbone’s motion for Summary Determination that the three patents by Fitbit did not deserve legal protection, and terminated the investigation in its entirety.

On September 7, 2016, the U.S International Trade Commission decided to review this initial decision by Judge Pender. The Commission found that the initial grant of Summary Determination was improper and remanded the case to further investigation into Fitbit’s patents.

For more information call our Philadelphia business lawyers at Sidkoff, Pincus & Green at 215-574-0600 or contact us online.