November 2018

Diana Muller

The world of trademarks is quite fascinating. Individuals and companies invest large amounts of money and resources in the creation of brands that are fanciful and arbitrary. At times and despite their efforts or, perhaps, due to their efforts, these […]

November 2018

Barry R. Lewin

Sometimes, patents are granted for inventions which may not seem innovative or novel.

Did you know that you might be in a hotel room that is protected by patent? U.S. Patent No. 9,194,143 is owned by Six Continents Hotels, Inc., […]

October 2018

Mitchell S. Feller

Halloween is a favorite and growing holiday. The National Retail Federation estimates that Halloween spending in the U.S. for the 2018 Halloween season will reach $9 billion. Helping to drive this market are the inventors, designers, and businesses who for […]

October 2018

Barry R. Lewin

Over the past few years, we have written on the evolving rulings relative to patentability of business methods, beginning with the Alice case at the U.S. Supreme Court. Since then, several court cases have led to improved understanding of what […]

October 2018

Jeffrey M. Kaden

Promoting environmentally-friendly innovation has become an important feature for national and international environmental policy in the 21st century. ‘Green’ innovation is envisioned by most governments as an essential way to address environmental issues and promote sustainable development and growth. […]

September 2018

Robert Feinland

I rounded the corner and saw my destination ahead. As I parked my car and walked towards my destination, the sounds of barking dogs and the shuffling of feet became louder. The garage door slowly opened. Dead leaves were scattered […]

September 2018

Jonathan M. Purow

As the cannabis industry grows state by state, so do the trademark concerns relating to it. Prior to the legalization of medicinal and recreational marijuana, strain names on the black market frequently “paid homage” to popular trademarks, such as the […]

September 2018

Barry R. Lewin

Design patents are used to protect the ornamental appearance of an innovation, such as an innovative shoe. Historically, in order to file for a design patent for a three dimensional object, figures ordinarily must be included showing the object from […]

August 2018

Jeffrey M. Kaden

Who doesn’t love the music of the Beatles? From 1962-1970, the Fab Four wrote and performed over 200 original songs, many of which were huge chart topping hits. From standards like Yesterday, In My Life, Hey Jude and […]

August 2018

Gloria Tsui-Yip

Trademark protection is territorial. Rights of a U.S. federally registered trademark extend only throughout the U.S. and not across the border to our neighbor to the north. There are a few good reasons why a brand owner would want or […]

August 2018

Maria A. Savio

We chocoholics in the U.S. surely recognize the three-dimensional shape of a chocolate-covered wafer bar confection having the form of two or four trapezoidal fingers as a “Kit Kat®” chocolate bar, even if it seems that the shape is not […]

July 2018

Marc P. Misthal

Whenever it is possible, we like to get out of the office and go see our clients at their place of business. Doing this helps us learn about their business, see what new products and ventures they are working on, […]

June 2018

Jeffrey M. Kaden

On May 18 of this year, the U.S. Patent and Trademark Office issued a federal trademark registration for Hasbro’s trademark application in connection with PLAY-DOH’s “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of […]

May 2018

Jeffrey M. Kaden

In 1984, Congress enacted the Drug Price Competition And Restoration Act of 1984 (known as the Hatch-Waxman Act) in order to eliminate two discrepancies regarding the term of a United States patent. These discrepancies were the result of the approval […]

May 2018

Jason R. Wachter

It is important that the actual inventor or joint inventors of claimed subject matter be named on a patent regardless of whether the patent lists an assignee as the applicant. Failure to correctly list the actual inventor(s) can result in […]

May 2018

As a tax lawyer, I often hear about how confusing people find the tax laws to be.  If you’re reading this, you’re likely to be deeply involved in some industry other than tax, and you wish you could have the […]

May 2018

Barry R. Lewin

Blockchain is a comparatively new Internet-based and cloud-based protocol and architecture, and it is receiving a lot of recent notoriety. Probably the best known use of Blockchain today is with cryptocurrencies (“virtual currencies”), such as bitcoin, which are digital assets using cryptography to secure and validate transactions. This article is focused on the major and significant impacts Blockchain technology has on the world of patents. It also addresses patent-related opportunities associated with Blockchain technology and cites recent patent examples.
April 2018

David D. Rodrigues

“We’ve updated our Privacy policy.” You’ve probably heard this phrase hundreds of times, whether it be from a service you subscribe to or whenever you first visit a website. Nowadays, you may be seeing updates to privacy policies more frequently. […]

April 2018

Marc P. Misthal

I read the e-mail twice. A longstanding client was asking whether they could show on their website a video they found on YouTube. They explained that they thought that could use the video since it was their understanding that things […]

March 2018

Marc P. Misthal

Clients facing problems with online counterfeiting often ask us what they can do to stop the sale of the low-cost counterfeits. One thing we frequently recommend is that trademark or copyright rights, as appropriate, be recorded with U.S. Customs and […]

March 2018

Barry R. Lewin

We have reported on developments regarding Alice v. CLS Bank and later cases in the past as these cases can be used toward business method patent applications. As background, in Alice, the Supreme Court held that mere abstract ideas, […]

February 2018

Mitchell S. Feller

This Article Was Originally Published on IPWatchdog on February 1, 2018.

While it might seem like an obscure topic, the issue of sovereign immunity comes up with some regularity in intellectual property disputes. When it applies, its effect may be […]

February 2018

Donna L. Mirman

Arguably the best actress of her generation, Meryl Streep has appeared in over 50 movies and shows over the past 45 years. Perhaps best known for her versatility and accent adaptation, Streep has for the first time at age 68 […]

February 2018

Jeffrey M. Kaden

For any business, small or large, be it a start-up or one that is established, it is important to make sure that you are not infringing on the patent rights of another when launching a new product. While there may […]

January 2018

Barry R. Lewin

In patent applications, it is critically important to use well-defined terminology. Patent applications are comprised of words and pictures which both describe the invention and state the proposed scope of protection. Both the words and the pictures should be crystal […]

January 2018

Diana Muller

A recent front page article in a prestigious newspaper commenting on the sale of the Weinstein Company at a low price was quite revealing of the problems that major figures in the entertainment world could face as a result of […]

December 2017

Jonathan M. Purow

Upcoming Legalization of Recreational Marijuana in New Jersey

On November 7, Democrat Phil Murphy overwhelmingly won the race to be the next governor of New Jersey. During his campaign and after his election, Murphy has made it clear that the […]

November 2017

Jeffrey M. Kaden

The Unites States Supreme Court is getting more and more involved in patent related matters. In this year’s decision of TC Heartland LLC v. Kraft Foods Group Brand LLC, No. 16-341, May 22, 2017 (U.S.) , the Supreme Court significantly […]

November 2017

Diana Muller

We live in a world dictated by pressure and anxiety. Relaxation, fitness and comfort have become the norm for consumers to deal with stress and improve their health.

Companies in apparel, fitness and wellness are competing to deliver the best […]

October 2017

Barry R. Lewin

Originally appeared in The Connector in September 2017

In part because renewable energy is a growing industry, it is ripe for inventiveness and patentability. New inventions seem to spawn daily in areas such as solar, wind, geothermal, bio-energy, and energy […]

September 2017

David D. Rodrigues

One of the fundamental aspects of the Internet today is the ability to share information with others quickly and easily. Today there are hundreds of applications and websites dedicated to the ability of sharing information, but even in the Internet’s […]

September 2017

Jonathan M. Purow

Artificial intelligence has begun to change the world, and we are only touching the tip of the iceberg in terms of its potential applications. Increasingly, AI programs are being used to generate creative works. Google’s Deep Dream Generator takes photos […]

August 2017

David D. Rodrigues

When considering intellectual property protection in foreign countries, U.S. registrants tend to choose a variety of countries that immediately come to mind, such as Canada, Mexico, the EU, and China. However, other countries which may be subject to global conflict, […]

July 2017

Barry R. Lewin

We have written in the past about the importance of a robust and comprehensive written description. That importance became evident in Rivera v. ITC and Solofill, a recent Federal Circuit case regarding a granted patent for a coffee brewing […]

July 2017

Marc P. Misthal

I was watching my son’s little league game when a client sat down next to me in the bleachers to ask about that most resilient of intellectual property canards: the “Ten Percent Rule.”

“If I am inspired by a work,” […]

July 2017

Barry R. Lewin

Originally published in The Connector magazine in July 2017.

If you are a member of the fashion industry, protecting your intellectual property can be the difference between success and failure. It is vitally important to understand the different types of […]

June 2017

Barry R. Lewin

It is established law that ordinarily a patent holder’s patent rights to a product end, or exhaust, upon sale of the patented product to another party. For example, if a patent holder holds a patent for a jewelry item, once […]

June 2017

Mitchell S. Feller

Originally published in Law360.

The computer game industry is a significant and growing market. The 2016 global market exceeded $100 billion and projections show this amount growing significantly in the future.[1] Game companies in this market come in […]

April 2017

Mitchell S. Feller

This article was originally published in IPWatchdog blog.

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent validity conducted before a panel […]

April 2017

“Technology,” as the old saw goes, “moves faster than the law.” To but it briefly, when the universe of what is possible expands daily, the gatekeepers of what is permissible—derived from intricate legislation and the accretion of factually analogous case […]

April 2017

Mitchell S. Feller

There are many reasons why it is important for companies to get opinions from counsel addressing patents of particular concern to the companies’ products. Some reasons include helping identify design changes to avoid potential infringement issues, to provide comfort to […]

March 2017

Barry R. Lewin

As more patents are challenged in view of Alice v. CLS Bank, which was directed to the patentability of algorithm-based inventions (among others), the courts provide additional clarity as to what is and is not patent eligible subject matter […]

March 2017

Jonathan M. Purow

GR&R client “Third Generation Enterprises (“3rd Gen”)” is a family-owned business that bought the longstanding specialty soda brands TOP POP and CITY CLUB in 2009. A couple years after buying the brands, 3rd Gen’s trademark registration for CITY CLUB lapsed […]

March 2017

Mitchell S. Feller

On May 22, 2017, the U.S. Supreme court issued an anxiously awaited decision addressing where patent patents lawsuits can be filed. The unanimous decision, TC Heartland LLC v. Kraft Foods Group Brands LLC, significantly narrows the options available for […]

March 2017

Marc P. Misthal

When I tell people that I represent clients in the restaurant industry, they often give me puzzled looks and ask me why restaurants would need any kind of intellectual property protection. The truth is that restaurants face the same kinds […]

March 2017

Barry R. Lewin

This article was originally published in The Connector magazine.

With the proliferation of the internet and more media outlets, the opportunity for scams and misinformation grows. Certainly, as scams and misinformation proliferate, entrepreneurs are finding more and more ways to […]

March 2017

Mitchell S. Feller

Over the past several years, the U.S. Supreme court has been particularly active in addressing issues related to patent law. This year will be no different. Following on the heels of its Samsung v. Apple decision in late 2016 changing […]

February 2017

Jeffrey M. Kaden

A design patent protects the ornamental presentation of an article or product. This can include the product’s configuration, shape, and/or surface ornamentation. Design patents are limited to the appearance of the product and do not cover structural or functional features […]

February 2017

Donna L. Mirman

To register a trademark with the U.S. Patent and Trademark Office (“USPTO”), a trademark owner must use the mark in “interstate commerce.” As evidence that the mark is in use, the applicant must submit a sample of the mark–called a […]

January 2017

Barry R. Lewin

The claims of a patent define the scope of protection. But one issue that can be bothersome is how definite the claim language has to be.

First, the statutory language requires definiteness in claims. “The specification shall conclude with one […]

January 2017

Diana Muller

Since the American Tobacco Company put baseball players on promotional cards in 1920, third parties have been appropriating the names and likenesses of professional athletes for profit. Fortunately for these professional athletes, there are several avenues in the United States […]

January 2017

Barry R. Lewin

When an Examiner examines a patent application, the Examiner is supposed to apply a “broadest reasonable interpretation” standard. In D’agostino v. Mastercard Int’l Inc. (Fed Cir., December 22, 2016), the Federal Circuit placed limits on how broadly an Examiner may […]

December 2016

Jonathan M. Purow

If you are a member of the fashion industry, it is vitally important to understand the different types of intellectual property protection and what each can effectively protect.

Trademarks are anything that can indicate to consumers that a certain product […]

December 2016

Donna L. Mirman

The Kardashian name is one of the most recognized household names. Fueled by the brand savvy iconic sisters Kim, Khloe and Kourtney, the Kardashian name has become a mega brand for marketing everything from reality television shows, advertising services to […]

December 2016

Donna L. Mirman

The Kardashian name is one of the most recognized household names. Fueled by the brand savvy iconic sisters Kim, Khloe and Kourtney, the Kardashian name has become a mega brand for marketing everything from reality television shows, advertising services to […]

December 2016

Mitchell S. Feller

On December 6, 2016, the U.S. Supreme Court issued a long awaited decision in Samsung Electronics v. Apple addressing the scope of damages available when a U.S. design patent is infringed. Reversing a damage award to Apple of $399 million, […]

November 2016

Donna L. Mirman

This fall, the U.S. Supreme Court agreed to consider whether a specific provision of the Trademark Act which bars the registration of disparaging trademarks violates the First Amendment right to free speech. In the case Lee vs. Tam, the […]

November 2016

Marc P. Misthal

Fans are very possessive of the objects of their enthusiasm, and the internet serves to simultaneously enhance their enjoyment of—and their claim over—their favorite worlds and characters. By way of example, many viewers “live tweet” television shows, and participate in […]

November 2016

Diana Muller

Is it possible to obtain trademark rights from promotional products? Is it possible to protect the category of promotional products bearing a trademark if the products are unrelated to the core business of the trademark owner, and are given away […]

September 2016

Originally published in Thomson Reuters’s Westlaw Journal on September 9, 2016.

Companies doing business abroad should reassess their data policies in light of the newly-enacted EU-U.S. Privacy Shield and the potential outcome of the UK’s decision to leave the EU. […]

September 2016

David D. Rodrigues

If you are considering releasing your proprietary software under an open source license or if you plan on incorporating source code which is governed by an open source license into your proprietary software, you need to fully understand the terms […]

September 2016

David D. Rodrigues

The U.S. Copyright Act of 1976, in general, protects original works of authorship fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or […]

September 2016

David D. Rodrigues

Jacob Feldstein, a student intern at GRR, contributed to this article.

Let’s say you have a great idea for a software-based computer program, like a computer game, an image editor tool, or any other program one could operate on a […]

September 2016

Jeffrey M. Kaden

In filing for patent protection for an invention, almost all countries require that the subject matter that is claimed in a patent application must not be known or otherwise be part of the prior art. The prior art includes different […]

September 2016

Barry R. Lewin

Companies are often created because the founders have a concept they think will take hold. Sometimes, the founders believe the concept is novel, can be protected, and can result in considerable value. For an emerging business, this Intellectual Property (IP) […]

August 2016

A version of this article was originally published in Trademarks + Brands Blog, August 11, 2016.

Few indulgences could be less complicated than enjoying the sweet crunch of a cookie. Unburdened by the fussy pretensions of designer cakes and faddish, […]

August 2016

Barry R. Lewin

Jacob Feldstein, a student intern at GR&R, contributed to this article.

The opening guitar riff to Led Zeppelin’s “Stairway to Heaven” (1971) is well known, but how did it get to be newsworthy recently? The band Spirit claimed that the […]

July 2016

Marc P. Misthal

Hashtags are everywhere. They can be seen on storefronts, in advertisements, on packaging and, of course, on social media. Given their prevalence, it is hardly surprising the hashtags, like domain names before them, have found their way to the U.S. […]

July 2016

Mitchell S. Feller

Originally appeared on Law360, July 8, 2016.

The internet of things (“IoT”), broadly speaking, is a collection of objects with embedded sensors and electronics. Using sensors, internet-enabled objects such as refrigerators, automotive transmissions, and clothing, collect data and automatically […]

June 2016

Jason R. Wachter

As new social media concepts and associated mobile apps continue to be developed at a rapid pace, inventors, investors and/or companies that own the rights to such social media technology should consider filing for patent protection.

For a product, the […]

June 2016

Barry R. Lewin

Utility patents are often used to protect the functionality of a product. Design patents are used to protect a product’s ornamental appearance and cannot be used to protect functional elements. But what happens when a functional element is part of […]

June 2016

Mitchell S. Feller

On June 13, 2016, the U.S. Supreme Court issued its decision in Halo Electronics, Inc. v. Pulse Electronics, Inc. This decision makes it easier for courts to award enhanced damages for patent infringement in cases where the infringement is egregious […]

May 2016

Marc P. Misthal

Originally published in Law360 .

Instagram. Facebook. YouTube. Twitter. Right-of-publicity violations could occur on all of these services. In fact, given the rise of the internet and social media, right-of-publicity violations are more likely to happen today than at any […]

May 2016

Barry R. Lewin

Following up on the Enfish and TLI Communications cases (see Alice Update–Patentability of Software-Related Inventions– Enfish v. Microsoft), the USPTO issued revised guidelines for Examiners relative to 35 U.S.C. 101 and whether claims are directed to an abstract idea. […]

May 2016

Mitchell S. Feller

In 2012, the Supreme Court stated that 35 U.S.C. § 101 impliedly bars patents on “‘laws of nature, natural phenomena, and abstract ideas.’” Mayo Collaborative Servs. v. Prometheus Labs., Inc.  In 2014, building on its decision in Mayo, the […]

May 2016

Diana Muller

The media has been busy reporting the capture of Mexican drug lord Joaquin Archivaldo Guzman Loera, known as El Chapo, until recently one of the most wanted men in the world. After his daring prison escape through a tunnel using […]

April 2016

Barry R. Lewin

Golfers often spend considerable time trying to improve their game. Improvement often requires a golfer to make body adjustments by modifying alignment or position, such as keeping one’s hands in a particular position relative to his/her body and keeping his/her […]

April 2016

Jeffrey M. Kaden

Under current United States law, the term of a utility patent is 20 years from the filing date of the earliest U.S. or international (PCT) application from which priority is claimed. This presumes, of course, that applicable maintenance fees are […]

April 2016

Barry R. Lewin

Under certain situations, holders of patents found to be infringed upon are entitled to enhanced damages. One such situation is when the infringement is found to be willful. Under U.S. law, such enhancement can result in treble damages.

In order […]

March 2016

Jeffrey M. Kaden

So now that you have filed your patent application in the United States Patent Office in order to try to legally protect your invention in the United States, the question is raised as to how to gain protection in other […]

March 2016

Barry R. Lewin

A design patent protects merely the ornamental appearance of an article.

“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.“ 35 U.S.C. […]

March 2016

Jonathan M. Purow

Originally appeared in Law360.

Our world is going virtual. Major industry players such as Microsoft Corp., Sony Corp., Facebook Inc. and Samsung Electronics Co. Ltd. are investing heavily in the future of virtual reality, so it is no wonder […]

March 2016

Barry R. Lewin

Some sports equipment inventions can have a huge impact on safety. In one example, an inventor found a way to improve safety for a skateboard, and, with this new design, the inventor founded a growing and thriving business. Fortunately, he […]

March 2016

Since the European Commission’s Directive on Data Protection went into effect in October 1998, United States companies that conduct business in Europe have had to be considerate of the EU’s stringent data privacy laws. For a significant period of time, […]

January 2016

Diana Muller

The world has recently been fascinated by the capture of one of the most wanted men in the world, Mexican drug lord Joaquin Guzman Loera, known as “El Chapo.” When El Chapo was finally arrested by the Mexican Marines in […]

February 2016

Barry R. Lewin

For the past few years, the U.S. Patent and Trademark Office (USPTO) has been working with patent offices in China, Europe, Japan, and Korea to create a single portal to provide visibility into the status of patent applications filed in […]

December 2015

Jonathan M. Purow

Originally published on Law360 website in December 2015.

There is little question that there is a sea change occurring regarding the legalization of marijuana. A majority of Americans are now in favor of its decriminalization, and four states (and the […]

December 2015

Marc P. Misthal

There has been an awakening. Have you felt it? That would be the Disney licensing machine, which started a heavy marketing push for its new Star Wars merchandise at the beginning of September with “Force Friday.” That marketing effort will […]

December 2015

Jonathan M. Purow

In January 2011, a user known only as “Randall” uploaded a video to YouTube under the title “The Crazy Nastyass Honey Badger.”  The video used footage from a National Geographic documentary about the honey badger (an absurdly fierce creature immune […]

November 2015

Mitchell S. Feller

U.S. Patent law provides that a patent owner can recover at least a reasonable royalty for infringement damages and can obtain damages for infringement occurring up to six years before an infringement lawsuit is filed (provided the patent was in […]

November 2015

Maria A. Savio

While makers of drugs and electronics are routinely assisted in their efforts to combat counterfeits by Customs and law enforcement because the health and safety of consumers are at risk, luxury goods manufactures usually pursue claims in civil courts. Armed […]

October 2015

Barry R. Lewin

Early stage companies and small businesses often have similar concerns to overcome. For example, an early stage company, such as a technology company, and a long-standing small business are each concurrently challenged to generate new revenue, differentiate themselves in the […]

October 2015

Jonathan M. Purow

From the moment that your startup comes up with a company name, you are creating intellectual property. While every single dollar counts when you are first launching your company, it is important to understand that if certain steps aren’t taken […]

October 2015

Barry R. Lewin

We have written in the past about patents in the entertainment field, such as one received by the entertainer Michael Jackson for a shoe for his moonwalking. Patents in the entertainment field can also be directed to devices related […]

October 2015

Marc P. Misthal

Everyone has heard of Pfizer’s Viagra. Most people know that it is a “little blue pill”, even if they have not used it themselves. Some might even know that the pill is shaped like a diamond. This public awareness is […]

September 2015

Descending into the atrium of the tower bearing his name, Donald Trump prepared to announce his candidacy for president. Blaring above the reporters’ din, Neil Young’s ferociously populist 1989 “Rockin’ in the Free World” ripped through the speakers.

The content […]

September 2015

George Gottlieb, Jonathan M. Purow

Paul Smith Limited, The Rug Company Limited and affiliated entities have successfully defended copyright infringement allegations asserted by California artist Judy Stabile.

Factual Background

In May 2014, California artist Judy Stabile brought suit against the British companies Paul Smith Limited, […]

September 2015

Warner/Chappell, an affiliate of Warner Music Group, has required producers and other individuals to pay royalty fees for any “public performance” of the song “Happy Birthday” for almost three decades. It has been reported that since purchasing the “Happy Birthday” […]

September 2015

Jeffrey M. Kaden

On July 30, 2015, the Court Of Appeals for the Federal Circuit affirmed the previous decision of the Federal District Court in New York that High Point Design – and its customers Walmart, Sears and Meijer – did not infringe […]

September 2015

Donna L. Mirman

This article was originally published in “The Connector” magazine in September 2015.

In an important victory for Mardi Gras parade goers, the Fifth Circuit returned the tradition of twisting parade beads into the shape of dogs back to […]

August 2015

Barry R. Lewin

Originally published on “Sports & Entertainment Beat Blog.”

Sports gear is constantly being improved. Athletes and others, such as trainers, spend a considerable amount of time with equipment and are often the sources of new ideas and gear. […]

August 2015

Diana Muller

Since the American Tobacco Company put baseball players on promotional cards in the 1920s, third parties have been appropriating the names and likenesses of professional athletes for a profit. Fortunately for these professional athletes, there are several avenues by which […]

August 2015

Maria A. Savio

People often wonder how Internet based companies generate revenue to support their activities and provide you with the services they seemingly make freely available to you. Take Facebook for instance. Facebook allows its users to keep in constant touch with […]

August 2015

Barry R. Lewin

This article was originally published in “The Connector” magazine in August 2015.

It seems that many people these days have ideas related to services for mobile devices.  Often, these ideas provide improvements to our ways of life.  At […]

July 2015

Jonathan M. Purow

This article was originally published on the “Sports and Entertainment Beat” blog in July 2015.

A New York Federal Judge recently ruled in Adjmi v. DLT Entertainment Ltd. that the off-Broadway play “3C” was a permissible parody of […]

July 2015

Marc P. Misthal

Businesses commonly use names of their founders as a trademark or brand name. This can lead to a variety of issues. One issue that arises is who has the right to use a particular name when someone else is already […]

July 2015

Since 2011, jewelry designer Solid 21, Inc. has alleged in multiple actions that several leading watchmakers have infringed its registered trademark RED GOLD. On June 12, 2015, Judge Gee of the U.S. District Court for the Central District of California […]