• The World’s Most Ambiguous Trademark Assignment

    by  • August 14, 2017 • 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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    Five Years Later, It Doesn’t Matter Who Filed It

    by  • August 7, 2017 • 0 Comments

    It’s pretty official at this point, once a trademark registration is “mature,” that is, more than five years old, the registration cannot be challenged on the basis that the original application was not filed by the then-owner of the mark. The 6th Circuit, in an unpublished opinion, reached this conclusion and we now have...

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    Licenses, Consents or Assignments?

    by  • July 31, 2017 • 1 Comment

    Lawn Managers, Inc. v. Progressive Lawn Managers, Inc. is about a trademark and a divorce, a case we’ve visited before. Where we last left it, the federal court was abstaining to allow the parties to figure things out in family court. As it turns out that order was vacated; on reconsideration the court concluded...

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    Who Should Own the Trade Dress?

    by  • July 24, 2017 • 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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    When You Can’t Find the Writing

    by  • June 22, 2017 • 0 Comments

    The patent, trademark and copyright statutes each provide that an assignment must be in writing. One time I asked a listserv whether that means you have to have the writing in hand. Silly me, it is an evidence question. Defendant Denis Bouboulis was an inventor of an allergy treatment device. He became a shareholder,...

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    You Be the Judge

    by  • June 19, 2017 • 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 • 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 EULA Working Against You

    by  • June 12, 2017 • 2 Comments

    GC2 Inc. v. Int’l Game Tech, PLC is a fairly unexciting copyright ownership case. The main argument involves construction of an ambiguous contract. (What other kinds are there?) GC2 provided “video graphics and artwork” for IGT’s gaming machines and conversion kits. The agreement had a license grant and it defined certain devices and fields...

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    The Naked Registration

    by  • May 30, 2017 • 2 Comments

    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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    The Successful Gambit

    by  • May 22, 2017 • 0 Comments

    There’s nothing like a good procedural end run. Some people think it’s not sporting, but they are often very efficient. In re Hansen is a bankruptcy case with a history. Karl Hansen owned some US and foreign patents that he licensed to PixArt Imaging Inc. in 2008. Karl and Lisa Hansen filed for Chapter...

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    What Is the Goal?

    by  • May 15, 2017 • 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 • 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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