• More INTA fun!

    by  • May 17, 2016 • 0 Comments

    And don’t forget also the e-Trademarks Listserv reception, another popular event where those of us who ordinarily commune via email can actually meet in person! See you at B.B. King’s Blues Club, (9101 International Dr. Suite 2230), Tuesday, May 24 from 5-8 pm. You can sign up here or through the QR code on...

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    Pick Your Story

    by  • May 16, 2016 • 1 Comment

    When you have one theory for one court, and a different theory for a later one, it probably isn’t going to turn out too well. In the latter suit before the Trademark Trial and Appeal Board, Weber-Stephen Products, LLC, famous maker of grills, petitioned to cancel the registration for a stylized “Q” trademark owned...

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    Must-Do INTA Event

    by  • May 14, 2016 • 0 Comments

    INTA is fast upon us – appointments made, packing list written, comfortable shoes worn in. And I know that you have a spot reserved on your calendar for the never-to-be-missed Meet the Bloggers! Except this year it is fabulously BEAT the Bloggers because There’s bowling! Yes, you too can see whether you still got...

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    That’s Not How It Works

    by  • May 10, 2016 • 0 Comments

    There is a common misperception that one can somehow grab rights by filing a trademark application. It just doesn’t work that way in the United States. Today’s schooling is from the Trademark Trial and Appeal Board. Entertainingly, one party, Alvin Reed, Sr., is both petitioner and respondent (for a registered trademark) and opposer and...

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    So Many Ways to Lose

    by  • May 3, 2016 • 0 Comments

    The Trademark Blog tweeted CRYE v. DURO Would’ve liked to see discussion whether there can be protectable trade dress in a camoflage patternhttps://t.co/kF0jDU0gL8 — TrademarkBlog (@TrademarkBlog) April 30, 2016 Oh, but there are so many ways that the plaintiff was going to lose this lawsuit, and whether camouflage can have secondary meaning is so...

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    Suing the Patent Owner

    by  • May 2, 2016 • 0 Comments

    As we all know, standing is difficult in patent cases. There are two types of “exclusive” licensees (in my view, making jurisprudence very confusing). First is the “virtual assignee” who has essentially all of the rights of the patent owner and can sue for infringement without having to join the patent owner. Second is...

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    Three Registrations, One Work: The Answer

    by  • April 29, 2016 • 2 Comments

    I previously posted about a copyright infringement suit with three registrations for the same work, brought by William L. Roberts aka Rick Ross, and Andrew Harr and Jermaine Jackson aka The Runners, alleging infringement of a musical work titled “Hustlin’.” I asked what happens on a motion for summary judgment on the questions “was...

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    Three Registrations, One Work: A Quiz

    by  • April 27, 2016 • 0 Comments

    (Explicit lyrics) We have a copyright infringement lawsuit filed by William L. Roberts, aka Rick Ross, and Andrew Harr and Jermaine Jackson, aka The Runners, alleging infringement of a musical work titled “Hustlin’.” In 2001, Roberts signed a recording agreement with Slip ‘N Slide Records (SNS), a name used interchangeably in agreements with First-N-Gold...

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    Oh, Never Mind

    by  • April 25, 2016 • 0 Comments

    When I started writing this post I was going to write about a case that had sussed out that there are different legal thresholds for determining ownership for purposes of prosecuting a patent versus what may be challenged by the PTO in an appeal of a rejection. But it turns out the conclusion was...

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    Fifteen Years Later

    by  • April 20, 2016 • 0 Comments

    Almost 15 years ago I published an article about the then-common practice of creating a wholly-owned subsidiary to be an “IP holding company.” It was a tax strategy, where royalty payments, an expense to the parent, would be made to a subsidiary in a jurisdiction that didn’t tax the income on royalties. I don’t...

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    What an Improvement

    by  • April 5, 2016 • 0 Comments

    In 2006 I published an article in the Trademark Reporter proposing a theory for deciding, as between disputing parties, who owns a trademark. In the article I noted that courts struggled with a systematic approach to resolving an ownership dispute and, based largely on the existing case law that was commonly applied to manufacturer-distributor...

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    I Called It (Sort of)

    by  • March 28, 2016 • 0 Comments

    I previously wrote about a case, Uptown Grill, L.L.C. v. Shwartz, with some boobery in the sale of a single-locale restaurant. There were two relevant documents, a Bill of Sale and a trademark license agreement, entered into 16 days apart. The Bill of Sale was between seller Shwartz and Uptown Grill LLC in exchange...

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