• “Incontestability” and Cancellation

    by  • February 13, 2017 • 2 Comments

    I previously reported on a case that managed to find a non-statutory basis for cancelling an “incontestable” trademark registration, specifically that the application for the registration was void ab initio. The plaintiff and trademark owner was NetJets, with a registered trademark for a software program INTELLIJET. The defendant was a company named Intellijet Group....

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    What It Takes to Get Attorneys’ Fees

    by  • January 30, 2017 • 0 Comments

    This is a bit of a “duh” case from the Federal Circuit, a nonprecedential decision. The only surprising part of it is that the trial court, Judge Sparks in the Western District of Texas, didn’t impose even greater sanctions. It was quite a show of generosity. The patent-in-suit has a short chain of title;...

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    Be Careful What You Wish For

    by  • January 23, 2017 • 0 Comments

    To “plead yourself out of court” is to state facts in a complaint that mean you have already lost. Something like, in a personal injury case, saying “I rear-ended him because he stopped at a red light” would do it. In Reynolds v. Banks it’s not quite exactly that, but pretty darn close. Sandra...

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    The Family Name

    by  • January 16, 2017 • 0 Comments

    This case is not just a trademark suit with a domestic relations background; it is a domestic relations dispute over the ownership of marital property, which happens to be a trademark. It is a marital settlement that makes any trademark attorney’s heart sink. While they were married, exes Randy Zweifel and Linda Smith held...

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    Who Do You Associate “BorderFest” With?

    by  • January 9, 2017 • 0 Comments

    There’s an interesting trademark ownership fact pattern as described by a Texas state appeals court in Vera v. City of Hidalgo. I find it interesting in two ways. First, there is no mention of the statutory or common law basis for the claim. It’s characterized as ownership of a cultural festival name, but the...

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    There Is Just No Way Around the Absent Patent Owner

    by  • January 3, 2017 • 1 Comment

    I’m writing about an inventorship case mostly because I have to bone up before I speak at the AIPLA Mid-Winter Institute in a talk rivetingly titled “The Backlash from Mismanagement of Inventorship in Multi-Party Deals.” If you’re attending, consider Speedfit LLC v. Woodway USA, Inc. your homework assignment. The plaintiffs are an inventor, Aurel...

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    What’s a “Trolley Pub,” You Ask?

    by  • December 19, 2016 • 0 Comments

    I’m SO glad you did, because I can tell you all about the Trolley Pub® transport services – note the care with which I’ve used the term as a trademark, although I will dispense with any effort to use it in adjective-noun form from now on. The Trolley Pub is a pedal-powered street trolley...

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    I Think I Heard the Phone Ringing …

    by  • December 15, 2016 • 0 Comments

    John Welch put in the call, and I’ll pick up. If you didn’t read his post on Emerald Cities Collaborative, Inc v. Roese, go read it now. Section 10 of the Lanham Act limits the assignability of intent-to-use trademark applications. One can assign an ITU application only after the Amendment to Allege Use or...

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    Tolerated Infringement

    by  • December 12, 2016 • 0 Comments

    A trademark ownership dispute generally means taking a very mushy set of facts and deciding who has the superior claim. Generally, avoiding likelihood of confusion is the paramount interest, so the outcome will mean that one party will have to cease its use. But sometimes courts allow what I call “tolerated infringement,” concurrent uses...

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    More on What Nunc Pro Tunc Means

    by  • December 5, 2016 • 0 Comments

    One of my most read posts is “What Nunc Pro Tunc Means.” It means “now for then” in Latin, which is hardly much help. Extensive Google research tells me that it’s used to correct judicial orders, but that’s not what brings readers to my blog. In the IP field we typically use “nunc pro...

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    Two Band Members Heave a Sigh of Relief

    by  • November 18, 2016 • 0 Comments

    I have written several times before (caution recursive link) about the copyright infringement lawsuit over the highly-successful “Jersey Boys” musical, based on the band the Four Seasons. Briefly, the widow of an author of an unpublished biography of one of the band members, Tommy DeVito, claimed infringement of the book. It’s very convoluted with...

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