• You Can’t Sue the Co-Owners of Your Trademark

    by  • July 20, 2015 • trademark • 2 Comments

    It seems like a simple concept, maybe so simple it isn’t litigated much. You can’t sue the co-owner of your trademark.

    It’s a band name case (what else?), over “Get the Led Out,” a cover band of Led Zepplin. In 2002 Plaintiff Paul Piccari conceived of the idea to form a band and thought up the name. He formed the band with defendants Paul Hammond and Paul Fariello. Co-plaintiff Frank Kielb, through his company FKE, Inc., was the manager of the band. In 2010 or 2011, the defendants forced Piccari out of the band and fired Kielb. Piccari claimed he never received payments after that for his share of the band proceeds and sued on a number of state law theories and for trademark infringement.

    The ownership record for the trademark registration is a fiasco and the parties’ briefs didn’t help matters. Piccari registered the trademark for band services in his own name, then assigned 50% ownership to Kielb (yes, it is titled “Assignment of Copyright,” oy) on July 3, 2012 nunc pro tunc to January 1, 2010. The document was recorded after the lawsuit was filed, on July 1, 2014. Meanwhile, in September 2012, the defendants recorded a “Declaration of Correction of Ownership,” claiming that the actual owners of the registration were Hammond, Paul Fariello, and another non-party band member named Adam Ferraioli, but not mentioning Piccari or Kielb. However, the ownership as listed in the TESS record, and as relied on by Piccari in his briefing, lists four people as owners, including plaintiff Piccari and defendants Hammond and Fariello. I’m guessing that because the Declaration says that at the time the application was filed there were four band members, including Piccari, and because the declaration was not signed by Piccari, the USPTO just added the new names without removing Piccari’s name.

    So by virtue of a fairly ridiculous effort to change ownership of a trademark without the record owner’s consent, we have a plaintiff and defendants as co-owners, with the resulting bonus of a thorough and useful explanation of why you can’t sue your co-owner. The court found that the purpose of the Lanham Act was to protect the public and the trademark owners from imitators seeking to capitalize on the owner’s hard-earned goodwill. But, a co-owner is not an imitator, and so not the kind of use the Lanham Act was intended to prevent. Further, use by a co-owner does not create confusion as to source because the information is accurate – they’re all the source. The court therefore construed the trademark infringement claims as claims for an accounting under state law and dismissed the Lanham Act claims.

    Piccari v. GTLO Prods., LLC, No. 14-06701 (E.D. Pa. June 24, 2015)

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    2 Responses to You Can’t Sue the Co-Owners of Your Trademark

    1. Alex
      July 20, 2015 at 1:35 pm

      It seems like you coordinated this blogpost with the TTABlog’s post for today: http://thettablog.blogspot.com.

      Nicely done.

      • Pam
        July 20, 2015 at 2:24 pm

        Band names are always fertile ground.

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