• trademark

    Who Should Own the Trade Dress?

    by  • July 24, 2017 • trade dress, trademark • 0 Comments

    Oneida Group, Inc. v. Steelite International U.S.A. Inc. is a demonstration of how our jurisprudence is essentially useless in deciding trademark ownership claims. The dispute is over ownership of the trade dress in the highly successful “Botticelli” and “Nexus” tableware patterns, part of Oneida’s “Sant’ Andrea” line: The tableware is considered premier and sold...

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    You Be the Judge

    by  • June 19, 2017 • trademark • 1 Comment

    A poll. We have a trademark for a recurring sports event and two parties who each claim to own it. Here are the facts as we know them. They aren’t hypothetical; they are taken from a case and it’s all we have to go on. Work with what you’ve got. Plaintiff’s version Defendant’s version...

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    A Pretty Lousy Test

    by  • June 13, 2017 • trademark • 0 Comments

    By now you should have read John Welch‘s excellent report on the Federal Circuit opinion in Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation; you can also find more background from me on the Board decision here. Despite my fondness for ownership cases, I wish this wasn’t one, or at least...

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    The Naked Registration

    by  • May 30, 2017 • trademark • 1 Comment

    I’ve written before about the trademark dispute over the Camellia Grill restaurant in New Orleans. The restaurant closed after Hurricane Katrina, after which the original owner, Shwartz, disposed of the business in various transactions with Khodr.1 The ultimate ownership of the CAMILLIA GRILL trademark is what I’ve been writing about. To briefly summarize the...

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    What Is the Goal?

    by  • May 15, 2017 • trademark • 0 Comments

    Super Sabre Society v. Frazier is an opposition to the registration of a logo, filed in both black and white and color, for association services: Applicant Frazier had been a founder, the first CEO and a board member of the Super Sabre Society, an organization for those who flew the F-100 Super Sabre. No...

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    Third Circuit Adopts the Standard Test

    by  • April 24, 2017 • trademark • 0 Comments

    The Court of Appeals for the Third Circuit, took an opportunity to clarify the doctrine to be used when deciding, as between a manufacturer and distributor, who owns the trademark. The decision is a wee bit puzzling only because it makes much of what didn’t look like much at the trial court level. The...

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    Getting Back on the Rails

    by  • April 17, 2017 • trademark • 0 Comments

    I have written extensively in the past about what I consider a misapplication of the anti-trafficking provision of Section 10 of the Lanham Act. Section 10 has a special provision that limits when one can assign an intent-to-use trademark application. After the 1989 amendment to the Lanham Act, companies could file trademark applications before...

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    “Incontestability” and Cancellation

    by  • February 13, 2017 • trademark • 2 Comments

    I previously reported on a case that managed to find a non-statutory basis for cancelling an “incontestable” trademark registration, specifically that the application for the registration was void ab initio. The plaintiff and trademark owner was NetJets, with a registered trademark for a software program INTELLIJET. The defendant was a company named Intellijet Group....

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    Be Careful What You Wish For

    by  • January 23, 2017 • trademark • 0 Comments

    To “plead yourself out of court” is to state facts in a complaint that mean you have already lost. Something like, in a personal injury case, saying “I rear-ended him because he stopped at a red light” would do it. In Reynolds v. Banks it’s not quite exactly that, but pretty darn close. Sandra...

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    The Family Name

    by  • January 16, 2017 • trademark • 0 Comments

    This case is not just a trademark suit with a domestic relations background; it is a domestic relations dispute over the ownership of marital property, which happens to be a trademark. It is a marital settlement that makes any trademark attorney’s heart sink. While they were married, exes Randy Zweifel and Linda Smith held...

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