Firm News

Jane F. Collen to appear on livestream AUTHOR’S HOUR

After her presentation on Intellectual Property with a focus on Copyrights to authors and publishers at the Association of Rhode Island Authors, Jane F. Collen was asked to appear on Wayne Barber’s Author’s Hour on WNRI.com Worldwide Livestream.

On Tuesday January 30th at 9 am Mrs. Collen will be discussing What Every Author Needs to Know about Copyright and Intellectual Property. She will also be answering questions sent by email to waynewnri@yahoo.com. As the author of the award winning children’s books The Enjella(R) Adventure Series, Mrs. Collen has experienced firsthand the struggle to protect an author’s content and Intellectual Property in today’s shifting world of publishing.

The Author’s Hour can also be heard on the radio at 1380 AM or 95.1 FM.

Facebook was born a lousy trademark

Would Facebook, by any other name, have been a success? If I had been their trademark lawyer when the company was launched, I would have told them to find a different name because FACEBOOK is not a good trademark for what they do. Why would this have been a bad trademark? A “facebook” is a name that had been used, either formally or informally, by students for a long time.

Facebook bad trademark

Credit: tongcom photographer / Shutterstock.com

As everyone who has seen “The Social Network” remembers, they originally called it “The Facebook.” When you decide what to call your company or product, your trademark lawyer is going to try to persuade you not to come up with a descriptive word. When you settle upon an ordinary descriptive term out of the everyday language, you are not going to be able to legally stop others from using the same name. There is a very good chance that some other entity calling itself “The College Facebook” could have used that name back in the day.

Contrast this with an arbitrary word like “APPLE” to sell computers. A name like APPLE, which has nothing to do with the product or its user, helps develop a very strong trademark that no one else can use in your market segment.

What Facebook has going for it now is the benefit of time. No place does time heal all wounds better than in trademark law. Over time, an owner can have acquired exclusive rights even in a descriptive term. When Facebook launched in 2004, the word Facebook was a bad name. Today, of course, the word Facebook means the colossal global social networking (and much more) site.

But winning with a descriptive trademark is a gamble. If you survive those early years, all is good. But, those early years are always the hardest to survive.

Today we can’t imagine Facebook not being Facebook. Does that mean it was a good name? I don’t think so. Facebook has even given up one of its earliest trademark registrations, which described its services as “providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community, and social networking.” (U.S. Trademark Registration No. 3,122,052.)

If you’re developing a product or a service that you expect within, say, the next decade or so, to yield you a billion consumers, then go for it. For most companies, big, small and medium, it’s a really good idea to take a name that won’t bog you down in challenges, litigation, and disputes. Descriptive names are the easy way out, and things don’t always end up quite as well as they have for Facebook.

Interested in reading more? Read the full piece by Collen IP Partner, Jess Collen, here.

Jess M. Collen
Collen IP Partner

Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for over 30 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association. He is also a featured Forbes.com contributor, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen has represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.

Kardashian Trademark Rip-Off Or Not? Seven Questions To Ask Yourself

And now we bring you…the Kardashian T-shirt Controversy.

The State of New York said last year that the Kardashian clothing line uses a logo which too closely resembles a state seal. This is interesting for a number of reasons.

Kardashian trademark rip-off

Credit: Everett Collection / Shutterstock.com

The New York seal is a “certification mark”. It is something the state agrees to allow all users to display if their goods meet certain criteria. New York registered this mark in 2005 for “…certain agricultural commodities which are produced or processed in the State of New York.” The mark may be “used by persons authorized by the certifier, certifies that the agricultural and food products are grown or processed within New York State in accordance with standards set forth in a [NY State] Department of Agriculture and Markets promotion program.”

It’s not at all uncommon for states to register agricultural trademarks.  California certifies everything from nuts to raisins to cantaloupes.  Texas, Florida, Alaska and Hawaii, have registered certification marks for agricultural goods.

1.Would someone seeing a Kardashian T-shirt with this logo believe it is sponsored or endorsed by the State of New York?

  1. Does anyone really think the Kardashian shirt is a parody of the New York mark?
  2. Are these shirts sold in the fruit and vegetable aisle?
  3. Would you be confused that the next time you buy New York State native tomatoes that they may actually be Kardashian tomatoes?
  4. Is New York State trademark is “famous?”
  5. Would someone buy the Kardashian shirt because of the great style implications which come from being endorsed by the New York Agriculture Department?
  6. Is it logical to think the State of New York has certified that this shirt meets New York State Agricultural standards?

But is this infringement? The one key question: does New York State have a right to expect it could expand its use of the logo on to T-shirts (see: “Got Milk?”).

There is a serious point here, which is: trademark owners do not have absolute control over their marks.  If the state could establish harm and/or confusion in the marketplace, they can win.

On a side note, Governor Cuomo said that he thought “a copyright infringement letter” had been dispatched. This muddies the waters. Legally, there are important differences between trademark and copyright. While the state could have a copyright in this logo, the issue really is about a trademark.  A copyright protects and original work of “authorship” or creation.  An infringement is something substantially similar. A trademark, on the other hand, is a “designation of origin,” which means that consumers will confuse the source of the product. With a trademark, being even identical is not enough to prove infringement.

If you take someone else’s stuff, you may be called to answer. If it looks like someone else’s, you need to be prepared to defend yourself.  The defense that a T-shirt is not the same as an agricultural product certification will not save you from the need and expense of defending yourself.

Interested in reading more? Read the full piece by Collen IP Partner, Jess Collen, here.

Jess M. Collen
Collen IP Partner

Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for over 30 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association. He is also a featured Forbes.com contributor, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen has represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.

Is Taylor Swift Entitled To Say: ‘Photographers’ Rights: You Belong With Me’?

On a monthly basis, Taylor Swift has done things in the trademark and copyright worlds that have the mainstream and entertainment media talking about IP.

A lawsuit defending a favorite trademark Lucky 13? Routine. Filing a slew of trademark applications to protect possibly valuable names? Happens every day. Getting Apple to back down on royalty payments with the mere stroke of a pen? Rockstar. Use of her photographs from concerts and other appearances? A tough approval.

Taylor Swift Photography

Source: Featureflash Photo Agency / Shutterstock.com

Much was written about her success in getting Apple to abandon its 90-day trial period. That was really more about policy than intellectual property rights.

As to photographers? What Swift is doing is not forcing photographers to relinquish their copyrights.

Celebrities have rights to control use of their images for profit. So if a photographer takes a picture of a celebrity in public, the photographer can own the copyright, and is free to sell the picture to someone for a profit.

If the photographer owns the copyright, but does not have the right to sell the image, ownership of the copyright is effectively worthless.

In Taylor Swift’s concert photo policy, what you see is a clear power play. If you want to photograph our concert, then you are given credentials, provided you agree to the terms. The issue is not so much whether it is lawful. The only question is whether this is “fair?”

Regulating use of photos is hardly new. Demonstrations of the Wright Brothers’ first flights either excluded photographers or admitted photographers only under strict control. According to David McCullough, historian and biographer, Wilbur Wright once marched into the stands to demand face to face to a photographer who brought his photo apparatus in 1908 into a flying exhibition that cameras were strictly prohibited. The photographer gave up his photographic plates to Mr. Wright.

The Taylor Swift defenders, sound bites sound like they were written by lawyers, and we all know how that goes. In claiming that they do not deprive photographers of the opportunity to resell images, they disregard that the photographers’ “right” to resell must have her approval.

Where the photographer cannot reproduce the image without authorization, then the legal right to make and sell copies or reproduce the image – fundamental rights of copyright ownership – become meaningless. Any picture a photographer takes at a concert can be used forever and for any purpose by Taylor Swift, with no compensation to the photographers.

The Apple success was a coup for her and may benefit parties with far less bargaining power. The photographers’ rights issue benefits the photographers because it lets them cover a concert as news. Apart from that privilege – which clearly benefits the publication and the artist both shifts the traditional benefits of copyright so far away from the copyright owner that Taylor Swift and company should not be surprised by the reaction to the photography policy.

Interested in reading more? Read the full piece by Collen IP Partner, Jess Collen, here.

Jess M. Collen
Collen IP Partner

Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for over 30 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association. He is also a featured Forbes.com contributor, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen has represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.

Jane Collen Speaks at Association of Rhode Island Authors

Jane Collen is speaking to the Association of Rhode Island Authors on January 11, 2018 in Cranston, Rhode Island.  She will be presenting a guide to authors and publishers on Intellectual Property Law with a focus on Copyright. In addition to being a lawyer, Mrs. Collen is the author of six published works in a children’s book series The Enjella ® adventure series. A seventh book is due to be published in the spring.

Examining Trump’s History: The New President And Trademark Rights

What does Mr. Trump’s history of trademark litigation show?

Presidents have not traditionally been significant brand owners. Ford Motor Company did not come from Gerald. Vacuum cleaners were not made by Herbert. Taylor wines did not come from Zachary’s family. Obamacare is from Barack…but that’s different.

Credit: Lazyllama, Shutterstock

Mr. Trump has been a diligent trademark owner. Federal court records show that Donald J. Trump or some Trump company or organization has been involved in a half dozen federal trademark lawsuits over the past ten years. His Las Vegas companies filed a case against two labor unions which had circulated a flyer stating that Mr. Trump did not stay at one of his own resorts during an early campaign stop in Nevada, but rather stayed at a competitor’s property — a fact which he denies.

The lawsuit said Mr. Trump was “…the archetypical businessman – a deal maker without peer. Mr. Trump is a world famous individual, and his name is synonymous with fame, fortune and luxury.”

There was a case in 2008 that involved a dispute over registration of the domain name for “Trump Plaza Of The Palm Beaches”.

Looking at litigation within the Trademark Office, the Trump organization has been a bit more active. But the records do not reflect any activity which appears to be outside the norm of trademark action for the owner of so many marks.

The Trump organization owns a lot of marks, probably in excess of one hundred current, existing federal registrations to Donald Trump and/or his companies. Sifting through the ownership records might be like what Mr. Trump warned us about those tax returns: it’s complicated. This figure excludes the several marks owned by Melania, and the stable of “Ivanka Trump” registrations. It also excludes several political slogans.

Among trademark registrations, there is again no indication that Mr. Trump’s company has any unique protection strategy. But upon examining the many trademark registrations, there is no pattern which suggests a special view on what or how to register marks.

But unlike almost any other president in history, Donald Trump has first-hand familiarity with the concept of marks and brands.

As for trade legislation and trademarks? Even if Mr. Trump goes after NAFTA as he has promised, NAFTA certainly has not created any NAFTA-wide trademark rights. Trademark owners still must file separate applications to register marks here, in Canada, and Mexico. Even an evisceration of the NAFTA deal would not change much.

We’ve long been a part of at least two other major treaties on Trademark law: the Paris Convention and the Madrid Protocol. Paris has been around for over a century.  Madrid has been part of our law since 2003. In practice, there is nothing in these treaties that should catch the administration’s attention.

Efforts by the courts, legislature or government agencies to lessen those protections will not find a receptive audience in the White House. The President may even argue that his success is built entirely on the fame of his marks. Will that matter?

Interested in reading more? Read the full piece by Collen IP Partner, Jess Collen, here.

Jess M. Collen
Collen IP Partner

Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for over 30 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association. He is also a featured Forbes.com contributor, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen has represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.

Collen Prevails at Summary Judgment

(June 16, 2017)  Collen successfully defended a motion for summary judgment at the Trademark Trial and Appeal Board on the question of relatedness of the parties’ beverage products.  The Board agreed with Collen IP’s arguments that there existed genuine material issues of fact as to the parties’ marks.

Kyle-Beth Hilfer Speaks at Restaurant Law University

On June 6, 2017, Kyle-Beth Hilfer chaired, moderated, and spoke at  Restaurant Law University. This event was co-sponsored by the Westchester County Bar association’s Hospitality Law Committee and Hudson Valley Economic Development Corp.’s  Food & Beverage Alliance.  Attendees networked with legal experts and industry members, as they learned about the legal issues associated with corporate set up, buying/selling a restaurant, franchising, branding and marketing, licensing, employment, leasing and more. Ms. Hilfer is the Chair of the WCBA Hospitality Law Committee, and she spoke  on intellectual property and branding law considerations for restaurants.

Webinar on Trademark Infringement: Structuring Opinions of Counsel

James Hastings was a featured CLE instructor on behalf of Strafford Publications on April 18, 2017.  The webinar, Trademark Infringement, Structuring Opinions of Counsel, discussed how to reduce the risks of liability and enhanced damages in trademark infringement cases.  James provided an analysis of the role of opinions in the defense of trademark infringement claims and the potential use of opinions of counsel. The panel also discussed the issue of waiver of the attorney-client privilege and provided best practices for risk mitigation through the effective use of opinions of counsel.

Jess Collen Speaks at Annual CITMA Conference in London

Jess M. Collen was a speaker at the annual conference of the Chartered Institute of Trademark Attorneys (CITMA) on March 15-17, 2017 in London. This year’s theme was “Navigating the Seas of Change,” in light of Brexit, with a focus on the role of intellectual property professionals and their clients to find ways to succeed at even the most challenging times. Jess’ presentation focused on “Post-Brexit Trademark Registration Ramifications, Evolving Safeguards for Trademark Rights.”

 

Collen adds attorney Michael Nesheiwat to litigation team

Associate Michael Nesheiwat has joined Collen’s litigation group.  Mike is a 2011 graduate of Cornell University College of Arts & Sciences (B.A. in Biological Sciences) and a 2014 graduate of Fordham University School of Law.  Mike is a registered Patent Attorney, and has advised clients and prosecuted patent applications encompassing a broad range of technologies. He works on trademark, copyright and patent litigation in the federal courts, and on opposition and cancellation proceedings before the Trademark Trial and Appeal Board.  In law school, Mike was a member of the Fordham Urban Law Journal and was a recipient of the Archibald R. Murray Public Service Award.

“Trademark Considerations for Franchises” CLE program

Counsel Kyle-Beth Hilfer chaired “Trademark Considerations for Franchises,” a CLE program on franchise law sponsored by the Westchester County Bar Association. Senior Associate Thomas P. Gulick spoke on trademark issues relevant to franchises, and Ms. Hilfer presented material on social media management issues for franchises. (April 2016)

Collen Partners named as New York Metro Area 2016 “Super Lawyers”

The most recent listing by the publication Super Lawyers has identified partners Joshua Paul and Jess M. Collen in its list of 2016 Super Lawyers in the New York City metropolitan area. Mr. Paul was recognized in the area of litigation; Mr. Collen was recognized in the area of intellectual property law. (April 2016)

“Food and Agricultural Entrepreneurship” panel

Partner Jess M. Collen joined a distinguished panel of speakers at this year’s Food and Agricultural Entrepreneurship at the Slow Living Summit 2016 in Brattleboro, Vermont. The Summit is a food advocacy program connecting people with healthy local food from local farmers and local food producers, and by adding to their understanding of the value of local food systems. (April 2016).

SCORE-sponsored event on IP rights

Partner Jess M. Collen spoke in Boston on intellectual property rights and protection to a group sponsored by SCORE, a nonprofit association dedicated to entrepreneur education and the formation, growth and success of small business nationwide. (April 2016)

Article “Crazy for Fair Use” published in The Intellectual Property Strategist

Counsel Kyle–Beth Hilfer published an article on copyright fair use in the American Law Group publication The Intellectual Property Strategist. Her article examined developments in the important Lenz copyright case that offers protection for many home videographers when posting content online that contains third party copyrighted material. (November 2015)

Article on IP protection in the United States published in newsletter of international law firm network Consulegis

Associate Kristen A. Mogavero published her article “Intellectual Property Protection in the United States” in the August 2015 Newsletter of the IP, Entertainment Law, and IT Group of the international law firm network Consulegis. The article discussed the primary ways to protect intellectual property in the United States – copyright, trademark, patent and trade secret – and the rights afforded by each of these forms of protection. (August 2015)

Webcast covering emerging issues in trademark law

Counsel James Hastings gave a live webcast entitled “Emerging Issues in Trademark Law: Understanding and Implementing the Likelihood of Confusion Standard – An Update.” The webinar offered information about the latest significant issues on the “likelihood of confusion” standard in practice before the United States Trademark Trial and Appeal Board. (July 2015)

Presentation at U.S. Department of Commerce “ExportTech” program

Partner Jess M. Collen was a panelist in Manhattan on April 1, 2015, discussing intellectual property law issues for the ExportTech Program.  The program was sponsored by the U.S. Department of Commerce and was held at the Industrial Technology Assistance Corporation in New York City. A wide range of business and legal issues were addressed, including industrial, manufacturing and retail applications of export of U.S. goods and services, in addition to intellectual property law matters. (April 2015)

Collen co-hosts webinar on structuring trademark consent agreements

Partner Jess M. Collen co-hosted a webinar sponsored by Strafford on structuring trademark consent agreements. The 90-minute session presented information about the use of these agreements to resolve conflicts and overcome Trademark Office objections to registrations. (October 2014)

Article analyzing issues at stake before the U.S. Supreme Court in POM Wonderful v. Coca-Cola Co.

Counsel Kyle-Beth Hilfer analyzed the battle between POM Wonderful and Coca-Cola pending before the U.S. Supreme Court on the issue of whether a private party may bring a false advertising claim under the Lanham Act challenging a product label that has been approved by the FDA. The article, “POM v. Coke Could Create a Juicy Precedent on Food Labels,” was published in the Intellectual Property Strategist. (March 2014)

Collen publishes White Paper on the intellectual property aspects of the “sharing economy”

The “collaborative economy” or “sharing economy” describes an economic system where consumers prefer to share, rather than purchase, goods and services. Collen has published a White Paper exploring the tension between traditional precepts of intellectual property law and the collaborative philosophy. The paper suggests how brand owner can maintain and protect their valuable intellectual property assets and remain relevant players in the collaborative marketplace without violating the law. Read the Branding in the Sharing Economy White Paper (February 2014)

Collen attorney chairs program at the Association of the Bar of the City of New York

Counsel Kyle-Beth Hilfer is the Program Chair of a program entitled “Social Media: Advising Clients on the Do’s & Don’ts” at the Association of the Bar of the City of New York. The workshop teaches attorneys and clients about the many legal considerations involved in using social media. The course develops skills with case studies and business responses to the latest regulatory actions. (October 2013)

Collen attorneys speak at Pace University School of Law

Partner Joshua Paul and Associate Lisa A. McAndrews presented a CLE program at Pace University Law School entitled “Trademark and Branding Litigation: Claims, Defenses, Strategies and Tactics in the Real World.” (June 2013)