Publications
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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, […]
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 […]
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 […]
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 […]
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 […]
“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. […]
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 […]
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 […]
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, […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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, […]
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 […]
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,” […]
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 […]
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 […]
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 […]
“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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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, […]
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 […]
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 […]
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 […]
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. […]
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 […]
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 […]
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 […]
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 […]
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) […]
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, […]
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 […]
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. […]
In the on-going evolution of patentability following Alice (see New Guidance for Examiners Relative to Whether a Claim is Limited to an Abstract Idea, Alice Update–Patentability of Software-Related Inventions–Enfish v. Microsoft), The Court of Appeals for the […]
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 […]
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 […]
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 […]
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. […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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. […]
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 […]
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, […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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, […]
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” […]
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 […]
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 […]
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. […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]