• Surprise – Wittmann Can’t Call His Product “Wittmann”

    by  • June 9, 2011 • trademark

    This is kind of a no-brainer of an ownership case. I’m blogging it more for the sake of completeness than anything else.Defendant Dietmar Wittmann, an employee of the Medical College of Wisconsin, invented a surgical patch for abdominal surgery.  He assigned the rights to the patch (the case doesn’t say exactly what rights, but we’ll assume patent) to the College’s research foundation, which licensed it to Michael Deutsch. Deutsch went into business with Wittmann, forming plaintiff Starsurgical, Inc. (“Star”).  Deutsch was 51% owner and Wittmann 49% owner. They sold the patch as the “Wittman Patch” (warning – graphic image). In 2001 Deutsch registered the “Wittman Patch” mark with Wisconsin in his own name and assigned the rights to Star. A little while later, Wittman registered the same mark federally.

    In 2002, the two had a falling out and Deutsch removed Wittmann as an officer of Star. In 2009, Wittman formed two new companies and started selling a surgical kit, the “Wittmann Hypopack” that included what he called a Wittmann Patch. It wasn’t the same patch as that sold by Star. Star sued for trademark infringement and moved for a preliminary injunction.

    The court acknowledged that Wittmann had the presumption of ownership based on his federal registration, but that wasn’t enough to save the day for him. Wittmann claimed that Star was his licensee under Section 5 of the Lanham Act, 15 U.S.C. § 1055 (“If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant …”), but the court didn’t buy it:

    However, the evidence in the record indicates that Star will likely be able to establish ownership of the mark. Simply because Wittmann was a shareholder and officer of Star does not mean that he owns the mark. He must have actually controlled Star’s use of the mark with respect to the quality of the patches. Nothing in the record suggests that Wittmann had such power. Although as Star’s vice president Wittmann may have exercised some degree of control over product quality, Deutsch clearly had more power than Wittmann did. Deutsch owned a majority of Star’s stock, was president of the company, marketed the patch as he wished, removed Wittmann as Vice President and refused to engage an additional supplier as Wittmann requested. Star, not Wittmann, controlled the quality of the product. Thus, Star will likely be able to establish ownership of the mark.

    Likelihood of confusion naturally follows and Wittmann is enjoined from using the “Wittmann Patch,” wittmann-patch.com, wittmanpatch.com, Wittmann Hypopack, or variations of marks starting with “Wittmann.”

    Wittmann-patch.com now resolves to a page with “Star Patch” and “Star Hypopack” products.  Hmmmmm.

    Starsurgical, Inc. v. Aperta, LLC, No. 10CV1156 (E.D. Wis. May 24, 2011).

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