What is Likelihood of Confusion Between Trademarks?

Basic Legal Concept: Under Section 2(d) of the Lanham Act, the Patent and Trademark Office (PTO) may refuse to register a trademark that is so similar to a registered mark as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Whether a likelihood of confusion exists between an applied-for mark and a prior mark is determined on a case-by-case basis applying the thirteen non-exclusive factors set forth in DuPont. Not all of the DuPont factors are relevant to every case, and only factors of significance to the…

September 19, 2016 (updated November 18, 2020)

Who Owns a Patent?

Question: If an employee comes up with an invention while working for the employer, or while employee’s research giving rise to the invention was funded by employer, who owns the patent for the invention? Answer: The inventor of course! Furthermore, absent an agreement to assign rights to an invention, the invention belongs to the inventor not his/her employer. The employer is only entitled to a non-exclusive license to use the invention “shop license”. United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).

September 16, 2016 (updated November 18, 2020)

Got a non-compete agreement? It is often not enforceable

NY Courts enforce non-competes only if: There is a legitimate business purpose, such as to protect a trade secret, and not general restriction on competition.Must be narrowly construed in terms of geography and time. Meaning geographical boundaries of the non-compete must be narrow. For example, a single locale, town or borough. Including one or more states, or entire US will probably not fly.Legitimately protect employer’s interests. These interests need to be defined. Otherwise, it will just be a simple restriction on competition. General restriction on competition is against public policy and cannot…

May 20, 2015 (updated November 18, 2020)

Creditors and Self-Settled Trust in New Jersey

Question: Can a self-settled trust shield creator’s assets from claims by creditors? Answer: First what is a self-settled trust? It is a trust that is funded by the creator during creator’s lifetime and where the creator is also the income and/or principal beneficiary. Now for the answer, under NJSA 3B:11-1(a) any reserved right in the creator to either income or principal is reachable by the creditors of the creator. Note that the statute does not distinguish between revocable or irrevocable trusts, since a revocable trust is simply a reservation of property rights to the…

May 14, 2015 (updated November 18, 2020)

House Votes to Eliminate Estate Tax (the ubiquitous low hanging fruit)

House Votes to Eliminate Estate Tax (the ubiquitous low hanging fruit) It seems that every new administration or Congress has something to say regarding the federal estate taxation. The main motivator is publicity, since this type of taxation affects few households, a measure in this area would make a great news story, but would have limited actual impact. As many of you probably heard, the Republican controlled House has approved a measure that would eliminate the federal estate tax, which currently kicks in after the exclusion amount of 5.43 million for individuals…

April 17, 2015 (updated November 18, 2020)

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