• A Blessing in Disguise

    by  • July 28, 2016 • 1 Comment

    Whole Foods lost a New York tax decision to the tune of $3.5 million, but in my opinion that’s a small price to pay to avoid a decision inconsistent with ownership of the WHOLE FOODS trademarks. Whole Foods Market Group, Inc. (WFMG), a Delaware corporation, is the operating company that distributes and sells natural...

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    It Just Seems Wrong UPDATE

    by  • July 26, 2016 • 0 Comments

    Update: The 9th Circuit has affirmed, in an opinion that only further confuses matters. The analysis is this: Trademarks are assignable. Co-existence agreements are enforceable. Contracts are assignable unless doing so changes the terms or the document says otherwise, and neither is the case here. Therefore, the co-existence agreement was assignable. I have no...

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    How to Steal a Trademark

    by  • July 25, 2016 • 1 Comment

    Progressive Emu, Inc. v. Nutrition & Fitness, Inc. is mostly a dispute about paying for emu oil, but there’s also a trademark claim involved. In 2000 Progressive Emu began developing an emu oil pain cream and added blue coloring to it, “thus birthed ‘Blue Emu.'” Nutrition & Fitness (NFI) was then “brought on board...

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    It’s All About the Facts

    by  • July 18, 2016 • 0 Comments

    Who the true trademark owner is, as between a member of an LLC (or shareholder of a close corporation) and the entity that the person owns, can be a vexing question. When there are only one or two owners of an entity the lines are very blurry—see here and here and here and here...

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    All the Wrong Reasons

    by  • July 11, 2016 • 0 Comments

    In a recent Trademark Reporter Commentary, I went on a tirade about a two district court cases that, in my view, misinterpreted Section 10 of the Lanham Act. Section 10 generally prohibits assignment of intent-to-use applications “except for an assignment to a successor to the business of the applicant, or portion thereof, to which...

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    Dodged a Bullet

    by  • June 27, 2016 • 0 Comments

    Awhile back I titled a blog “Pay Attention to This One.” People did. You can read in more detail about the facts in the appeals court opinion blogged here, but the crux is that an inventor had an oral agreement with his employer that he would be paid a bonus for his inventions in...

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    Why You Have That Employment Agreement Gobbledygook

    by  • June 20, 2016 • 0 Comments

    Plaintiff Advanced Video Technologies has been around the block a few times already. AVT claimed to be the successor to a patent for a video codec. It had successfully asserted the patent against other defendants but ran into some problems when trying to sue HTC Corp., Blackberry and Motorola Mobility. Its first attempt failed...

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    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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