• Not What Copyright Is For

    by  • October 16, 2017 • 0 Comments

    I previously wrote about a puzzling case, Small Justice LLC v. Xcentric Ventures L.L.C., with the defendant better know as Ripoff Report. The First Circuit has now grappled with it, although based on a revised district court opinion amended with a highly consequential footnote. To distill it down as much as possible, a lawyer,...

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    I Think This One Is Wrong

    by  • September 18, 2017 • 0 Comments

    Moreno v. Pro Boxing Supplies, Inc. is a precedential decision and, IMHO, clearly contrary to the Board’s controlling precedent. Opposer and petitioner Julie Moreno is the exclusive US licensee of the unregistered trademark CASANOVA for boxing equipment: Applicant and Registrant Pro Boxing Supplies is the owner of a registration for CASANOVA in standard character...

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    Assignment of a Name or Just a Trademark?

    by  • September 11, 2017 • 0 Comments

    Section 2(c) of the Trademark Act requires a “written consent” for the registration of the name of a living individual. Is a trademark assignment a consent? Apparently so. “Jordan Maxwell” was the pen name of Russell Joseph Pine. Jordan Maxwell is a self-proclaimed “preeminent researcher and independent scholar in the field of occult /...

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    It’s The Details

    by  • August 28, 2017 • 0 Comments

    What a confusing ownership case (which perhaps means that the wise reader stops right here). Errors on every level, at the end of the day unrecoverable. The parties are Paradise Biryani, Inc. (PBI), Paradise Biryani Express, Inc. (Express), and Biryani Point Paradise LLC (PBB) on one side, and Paradise Hospitality Group, LLC (PHG) on...

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    The World’s Most Ambiguous Trademark Assignment

    by  • August 14, 2017 • 0 Comments

    Gosh I love this case. Don’t get me wrong, I think it’s resoundingly wrong, but what a fascinating way to get there. Plaintiff Quantum, Inc. sells natural health products. It owned the registered trademark MigreLief for “nutritional supplement containing feverfew and other natural ingredients for relieving headaches.” The trademark was registered in 1996, a...

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    Five Years Later, It Doesn’t Matter Who Filed It

    by  • August 7, 2017 • 0 Comments

    It’s pretty official at this point, once a trademark registration is “mature,” that is, more than five years old, the registration cannot be challenged on the basis that the original application was not filed by the then-owner of the mark. The 6th Circuit, in an unpublished opinion, reached this conclusion and we now have...

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    Licenses, Consents or Assignments?

    by  • July 31, 2017 • 1 Comment

    Lawn Managers, Inc. v. Progressive Lawn Managers, Inc. is about a trademark and a divorce, a case we’ve visited before. Where we last left it, the federal court was abstaining to allow the parties to figure things out in family court. As it turns out that order was vacated; on reconsideration the court concluded...

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    Who Should Own the Trade Dress?

    by  • July 24, 2017 • 0 Comments

    Oneida Group, Inc. v. Steelite International U.S.A. Inc. is a demonstration of how our jurisprudence is essentially useless in deciding trademark ownership claims. The dispute is over ownership of the trade dress in the highly successful “Botticelli” and “Nexus” tableware patterns, part of Oneida’s “Sant’ Andrea” line: The tableware is considered premier and sold...

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    When You Can’t Find the Writing

    by  • June 22, 2017 • 0 Comments

    The patent, trademark and copyright statutes each provide that an assignment must be in writing. One time I asked a listserv whether that means you have to have the writing in hand. Silly me, it is an evidence question. Defendant Denis Bouboulis was an inventor of an allergy treatment device. He became a shareholder,...

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    You Be the Judge

    by  • June 19, 2017 • 1 Comment

    A poll. We have a trademark for a recurring sports event and two parties who each claim to own it. Here are the facts as we know them. They aren’t hypothetical; they are taken from a case and it’s all we have to go on. Work with what you’ve got. Plaintiff’s version Defendant’s version...

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    A Pretty Lousy Test

    by  • June 13, 2017 • 0 Comments

    By now you should have read John Welch‘s excellent report on the Federal Circuit opinion in Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation; you can also find more background from me on the Board decision here. Despite my fondness for ownership cases, I wish this wasn’t one, or at least...

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