• trademark

    When Not to Assign Intent-to-Use Applications

    by  • July 25, 2008 • trademark

    The TTABlog reports on a successful trademark opposition because of an invalid assignment of an intent-to-use application. I mentioned yesterday that U.S. trademarks can be assigned without any tangible assets, but the U.S. trademark system has a carve-out for intent-to-use applications – they can’t be assigned without at least part of the ongoing business...

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    Assigning “Goodwill”

    by  • July 23, 2008 • trademark

    In the United States, an assignment of a trademark is invalid if the “goodwill” is not also assigned with the mark, but there’s no requirement that any tangible assets be transferred. So what exactly does it mean when agreements recite something like “Assignor does hereby assign to Assignee all rights, title and interest in...

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    Who Owns the Mark?

    by  • July 22, 2008 • trademark

    There are few disputes more difficult to solve than deciding who owns a trademark after co-owners have a falling out. Family businesses seem particularly susceptible, my guess would be because they are started more casually without formal documents that even contemplate trademark ownership. European trademark blog Class 46 reports one way to solve the...

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    Combining Trademarks in a Jointly Owned Holdco

    by  • July 15, 2008 • trademark

    The May-June 2008 Trademark Reporter has an article entitled “Combining Trademarks in a Jointly Owned IP Holding Company,” by Lanning Bryer and Matthew Asbell. It discusses the risks and advantages of using jointly-owned trademark holding companies for management of “combined” trademarks, i.e., where one trademark is used by unrelated entities (like Volvo) or the...

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    Hot N’ Ready For All

    by  • July 4, 2008 • trademark

    Pinnacle Pizza Co. v. Little Caesar Enterprises, Inc., does some contract interpretation on ownership of trademarks in a franchise relationship – not the trademarks originally licensed, but a trademark created by a franchisee. Pinnacle Pizza was a franchisee for Little Caesar Enterprises pizza (I’ll use “Little Caesar” to refer to the company; the trademark...

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    Devil in the Details

    by  • July 2, 2008 • trademark

    In Angel Flight of Georgia, Inc. v. Angel Flight America, Inc., the 11th Circuit decision left open more questions than it answered. Two entities with an admirable purpose, providing free transportation for donated organs and medical patients, were using the same trademark, ANGEL FLIGHT, in the same territory – plaintiff Angel Flight Georgia (AF-GA)...

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    No Peace in the Inner Peace Movement

    by  • June 29, 2008 • trademark

    Francisco Coll-Monge (deceased at the time of the suit) founded two non-profit companies in the 1960’s, Inner Peace Movement, Inc. (IPM) and Peace Community Church (PCC), to promote self-actualization programs. He registered various trademarks, including INNER PEACE MOVEMENT and PEACE COMMUNITY CHURCH, in his own name. The district court got it wrong but the...

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