• Is It Really “Irrevocable”?

    by  • October 18, 2010 • copyright, trademark

    Construe this contract, applying Puerto Rican law:

    2.  “Walter Mercado” Mark.

    * * *

    (b) Mercado hereby irrevocably assigns to Bart throughout the Territory during the Term, all right, title and interest in and to the Mark, together with that part of the goodwill of Mercado’s business connected with and symbolized by said Mark, for use in connection with the Pre-existing Materials and the New Materials, if any.

    (c) Without limited the breadth of the rights granted in this paragraph, Bart shall have all rights in the Mark which are afforded to owners of trademarks and service marks, including but not limited ot the right to seek and obtain trademark protection and/or registration of the Mark in its name, and the right to enforce or defend Bart’s rights against third parties.  Mercado shall cooperate fully with Bart in Bart’s exercise of any of the rights granted hereunder.

    * * *

    4. Territory.

    The territory shall be the universe (the “Territory”).

    5. Term.

    The term of this Agreement shall be in perpetuity (the “Term”), subject to the provisions of paragraph 12 hereinafter.

    * * *

    12.  Termination.

    [Requirements for termination.]

    (b) Effect of Termination.

    [No mention of trademark.]

    13.  Remedies.

    Subject to the terms of this agreement, all grants granted or assigned by this agreement shall be irrevocable under all or any circumstances, and shall not be subject to recission, termination or injunction.  In the case of breach of this agreement by Bart, Mercado’s sole remedy shall be limited to an action at law for damages. 

    The parties each allege the other breached the terms of the contract.  Assume Mercado terminates the agreement in accordance with the terms in paragraph 12.  Who owns the mark?

    Full agreement here.  Court’s decision later.

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