• Walter Mercado Gets a Toehold

    by  • September 7, 2012 • trademark

    The saga over the use of Walter Mercado’s name and likeness, trademark, and copyrighted content goes on and on and on … Suits in two different jurisdictions, Florida and Puerto Rico, and one appeal so far.

    What’s interesting to me about the case is that Walter Mercado unequivocally assigned the WALTER MERCADO trademark to opposing party Bart Enterprises, but both trial courts agreed that the trademark would revert to Walter Mercado upon the termination of the agreement. A trademark reversion is unusual, and this one wasn’t express. Nevertheless, Walter Mercado has thus far been unsuccessful in proving that the contract was properly terminated so that the trademark has reverted.

    But we now have a decision from the District of Puerto Rico, revising in part a previous decision on cross motions for summary judgment. First, Bart Enterprises asked that the court reconsider whether the mark reverts to Walter Mercado upon termination of the contract, but the court would have none of it – both Florida and Puerto Rico agreed there was a reversion, so the holding stands.

    It reversed, though, on its earlier decision that Mercado had not terminated the agreement so that ownership of the trademark currently remains with Bart Enterprises.  Mercado was able to successfully point to several unauthorized uses by Bart Enterprises that might be considered a breach, thus allowing Mercado an opportunity to terminate.  Therefore, the jury will ultimately decide who owns the mark, which means there will certainly be more to come on this story.

    Discussion by Rebecca Tushnet on the interrelationship between trademark rights and the right of publicity here.

    Mercado-Salinas v Bart Enter. Int’l, Ltd., No. 09-1509 (D.P.R. Aug. 27, 2012).

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