• trademark

    The Subsidiary Standing In

    by  • October 24, 2016 • trademark • 0 Comments

    Lately we’ve been seeing an increasing number of trademark cases that revolve around the relative rights of different members of the same enterprise: a family of companies asserting a family of marks theory in Wise F&I v. Allstate Ins. Co., different chapters of the Salvation Army allowed to register similar trademarks in In re...

    Read more →

    Update: All the Wrong Reasons

    by  • October 20, 2016 • trademark • 0 Comments

    Update: I previously reported on Sebastian Brown Prods. LLC v. Muzooka Inc., a fairly routine trademark priority dispute with a troubling holding. In it, the district court wrote out the last sentence of Section 10 of the Lanham Act, essentially holding that an intent-to-use application cannot be assigned until the trademark is in use....

    Read more →

    Cutting to the Chase

    by  • October 17, 2016 • trademark • 0 Comments

    Props to the bankruptcy court in the Eastern District of North Carolina for cutting through to the meat of a trademark ownership dispute. We have a company, B6USA, Inc., doing business as “BaySix,” in Chapter 11 bankruptcy. B6USA was formed in March 2005 and was solely owned by Katherine D. Hite, who was also...

    Read more →

    A Family of Marks with Different Owners

    by  • October 3, 2016 • trademark • 0 Comments

    The “family of marks” concept in trademark law is a difficult one to win. We all understand the concept, which is that consumers realize that when trademarks share a similar trait, like restaurant food products that start with “Mc,” the goods come from the same source. Proof of a family of marks is challenging,...

    Read more →

    Isn’t It the Corporate Secretary’s Job …

    by  • September 26, 2016 • trademark • 0 Comments

    Isn’t it the Corporate Secretary’s job (and in this case, the same person was also the General Counsel) to make sure that documents are signed by the right entity? In East West Bank Co. v. The Plubell Firm LLC, not once, but twice the Corporate Secretary, Douglas Krause, executed trademark maintenance documents for the...

    Read more →

    And You Wonder Why Litigation Is Expensive

    by  • August 22, 2016 • trademark • 0 Comments

    Golly, the things you have to explain sometimes. Plaintiff Ubu/Elements, Inc. claimed to have purchased all of the assets of Defendant Elements Personal Care, Inc. UBU/Elements accused the defendant of continuing to use the trademark AFTER THE GAME after the purchase. The Asset Purchase Agreement said this about the trademark in dispute: If you...

    Read more →

    A Blessing in Disguise

    by  • July 28, 2016 • trademark • 1 Comment

    Whole Foods lost a New York tax decision to the tune of $3.5 million, but in my opinion that’s a small price to pay to avoid a decision inconsistent with ownership of the WHOLE FOODS trademarks. Whole Foods Market Group, Inc. (WFMG), a Delaware corporation, is the operating company that distributes and sells natural...

    Read more →

    It Just Seems Wrong UPDATE

    by  • July 26, 2016 • trademark • 0 Comments

    Update: The 9th Circuit has affirmed, in an opinion that only further confuses matters. The analysis is this: Trademarks are assignable. Co-existence agreements are enforceable. Contracts are assignable unless doing so changes the terms or the document says otherwise, and neither is the case here. Therefore, the co-existence agreement was assignable. I have no...

    Read more →

    How to Steal a Trademark

    by  • July 25, 2016 • trademark • 1 Comment

    Progressive Emu, Inc. v. Nutrition & Fitness, Inc. is mostly a dispute about paying for emu oil, but there’s also a trademark claim involved. In 2000 Progressive Emu began developing an emu oil pain cream and added blue coloring to it, “thus birthed ‘Blue Emu.'” Nutrition & Fitness (NFI) was then “brought on board...

    Read more →