• About Pamela Chestek

    A Thing of Beauty

    by  • November 13, 2017 • trademark • 0 Comments

    I don’t think I have ever been so excited about an exhibit in a case before. It’s one that makes the heart of a person who writes about trademark ownership sing. Just look at it: Yes, it is a pawn ticket. I have looked at many documents claiming to be a trademark assignment and...

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    The Devil Is In the Definitions

    by  • November 6, 2017 • patent • 0 Comments

    Plaintiff Janssen Biotech had a fundamental structural problem with an agreement. The document was called an “Employee Secrecy Agreement,” but in addition to imposing duties of confidentiality on its employees the agreement also served as an employee invention assignment agreement, as is commonly, if not universally, done. Janssen’s structural problem was in the definition...

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    Never Trust Your Client

    by  • October 30, 2017 • copyright • 0 Comments

    If you are registering for or filing something in your client’s name, never take their word on the details of the legal entity. First off, many times your client won’t know the state of incorporation, thinking it’s the state in which they are doing business rather than Delware, or vice versa. Or, as was...

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    The Patent Version of Righthaven

    by  • October 23, 2017 • patent • 0 Comments

    The news has been abuzz with Allergan, Inc,’s assignment of the patents in the highly lucrative “Restasis” dry-eye drug to the Saint Regis Mohawk Tribe and in turn receiving an exclusive license back. The transfer was so that the validity of the patents could not be challenged in an inter partes review because of...

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    Not What Copyright Is For

    by  • October 16, 2017 • copyright • 0 Comments

    I previously wrote about a puzzling case, Small Justice LLC v. Xcentric Ventures L.L.C., with the defendant better know as Ripoff Report. The First Circuit has now grappled with it, although based on a revised district court opinion amended with a highly consequential footnote. To distill it down as much as possible, a lawyer,...

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    Patent Infringement Is a Frivolous Claim (If You Don’t Own the Patent)

    by  • September 20, 2017 • patent • 0 Comments

    There is a chicken-and-egg problem with patent ownership and a patent infringement claim. I’d guess that most patents are assigned, that is, since under US law it is the natural person who is the inventor, patents will generally be assigned to a business for exploitation. That underlying assignment, a contract, is therefore a creature...

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    I Think This One Is Wrong

    by  • September 18, 2017 • trademark • 0 Comments

    Moreno v. Pro Boxing Supplies, Inc. is a precedential decision and, IMHO, clearly contrary to the Board’s controlling precedent. Opposer and petitioner Julie Moreno is the exclusive US licensee of the unregistered trademark CASANOVA for boxing equipment: Applicant and Registrant Pro Boxing Supplies is the owner of a registration for CASANOVA in standard character...

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    Assignment of a Name or Just a Trademark?

    by  • September 11, 2017 • trademark • 0 Comments

    Section 2(c) of the Trademark Act requires a “written consent” for the registration of the name of a living individual. Is a trademark assignment a consent? Apparently so. “Jordan Maxwell” was the pen name of Russell Joseph Pine. Jordan Maxwell is a self-proclaimed “preeminent researcher and independent scholar in the field of occult /...

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    It’s The Details

    by  • August 28, 2017 • trademark • 0 Comments

    What a confusing ownership case (which perhaps means that the wise reader stops right here). Errors on every level, at the end of the day unrecoverable. The parties are Paradise Biryani, Inc. (PBI), Paradise Biryani Express, Inc. (Express), and Biryani Point Paradise LLC (PBB) on one side, and Paradise Hospitality Group, LLC (PHG) on...

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    The World’s Most Ambiguous Trademark Assignment

    by  • August 14, 2017 • trademark • 0 Comments

    Gosh I love this case. Don’t get me wrong, I think it’s resoundingly wrong, but what a fascinating way to get there. Plaintiff Quantum, Inc. sells natural health products. It owned the registered trademark MigreLief for “nutritional supplement containing feverfew and other natural ingredients for relieving headaches.” The trademark was registered in 1996, a...

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