• trademark

    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 →

    It’s All About the Facts

    by  • July 18, 2016 • trademark • 0 Comments

    Who the true trademark owner is, as between a member of an LLC (or shareholder of a close corporation) and the entity that the person owns, can be a vexing question. When there are only one or two owners of an entity the lines are very blurry—see here and here and here and here...

    Read more →

    All the Wrong Reasons

    by  • July 11, 2016 • trademark • 2 Comments

    In a recent Trademark Reporter Commentary, I went on a tirade about a two district court cases that, in my view, misinterpreted Section 10 of the Lanham Act. Section 10 generally prohibits assignment of intent-to-use applications “except for an assignment to a successor to the business of the applicant, or portion thereof, to which...

    Read more →

    Pick Your Story

    by  • May 16, 2016 • trademark • 1 Comment

    When you have one theory for one court, and a different theory for a later one, it probably isn’t going to turn out too well. In the latter suit before the Trademark Trial and Appeal Board, Weber-Stephen Products, LLC, famous maker of grills, petitioned to cancel the registration for a stylized “Q” trademark owned...

    Read more →

    That’s Not How It Works

    by  • May 10, 2016 • trademark • 0 Comments

    There is a common misperception that one can somehow grab rights by filing a trademark application. It just doesn’t work that way in the United States. Today’s schooling is from the Trademark Trial and Appeal Board. Entertainingly, one party, Alvin Reed, Sr., is both petitioner and respondent (for a registered trademark) and opposer and...

    Read more →

    So Many Ways to Lose

    by  • May 3, 2016 • trademark • 0 Comments

    The Trademark Blog tweeted CRYE v. DURO Would’ve liked to see discussion whether there can be protectable trade dress in a camoflage patternhttps://t.co/kF0jDU0gL8 — TrademarkBlog (@TrademarkBlog) April 30, 2016 Oh, but there are so many ways that the plaintiff was going to lose this lawsuit, and whether camouflage can have secondary meaning is so...

    Read more →

    Fifteen Years Later

    by  • April 20, 2016 • trademark • 0 Comments

    Almost 15 years ago I published an article about the then-common practice of creating a wholly-owned subsidiary to be an “IP holding company.” It was a tax strategy, where royalty payments, an expense to the parent, would be made to a subsidiary in a jurisdiction that didn’t tax the income on royalties. I don’t...

    Read more →