• Posts Tagged ‘naked license’

    Licenses, Consents or Assignments?

    by  • July 31, 2017 • trademark • 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 • 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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    The Promiscuous Licensor

    by  • September 29, 2014 • trademark • 1 Comment

    I recently took the federal courts to task for what I submit is a disconnect between the statutory definition of “abandonment” and the “naked license” defense. My argument is that trademark owners are simply being punished for behavior that is seen as too lax, without any regard for whether that laxness has actually effected...

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    Yikes

    by  • August 11, 2014 • trademark • 0 Comments

    Whether a license provision is categorized as a “condition” or a “covenant” will determine what remedies are available. Noncompliance with a covenant of the agreement is a merely a breach, so you get contract remedies. If the noncompliance means you failed to satisfy a condition, then you have no license and are subject to...

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    Google is, Irrelevantly, Confirmed as the Senior User of the ANDROID Mark

    by  • April 7, 2014 • trademark • 0 Comments

    Before Google acquired Android, Inc., and later released the Android operating system, Erich Specht had registered the mark ANDROID DATA. Specht claimed Google infringed his trademark; Google was successful in the trial court with a claim that Specht had abandoned the trademark, as I previously blogged. The Court of Appeals for the Seventh Circuit...

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    “Hustler is Larry Flynt, You Know”

    by  • November 6, 2011 • trademark

    The Flynt family, of HUSTLER fame, has been embroiled for years in several lawsuits over the ownership of the business and use of the HUSTLER mark. As you might expect for a business based on pornography, the corporate form was ever-changinga “morass” as described by the court—as the family tried to limit its liability,...

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    An Embarassment of Ownership Issues

    by  • October 10, 2011 • trademark

    Opposed mark TTAB decision Restifo v. Power Beverages, LLC has, count ’em, seven different trademark ownership theories discussed in it. My kind of case. In 2006 opposer Restifo and trademark applicant Kidd first discussed a business arrangement for making YING YANG VODKA.  Kidd described his method of doing  business this way: s an alcohol...

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    Trick Question

    by  • July 31, 2011 • trademark

    A debtor-in-possession had a contract it wanted to assign. The contract included a trademark license, but it was somewhat unusual in structure. For starters, it was a trademark sublicense, not a direct license, for the mark “Jag Jeans”: There is no registered trademark for “Jag Jeans,” although there are several for “Jag” owned by...

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    Abandoned, No Surprise

    by  • June 10, 2011 • trademark

    Some cases make you wonder more about the lawyers. Did they come in to the situation too late and just have a mess to clean up? Have they counseled their clients about their odds? Original Rex, LLC v. Beautiful Brands International, LLC just looks like such a long shot, but some clients can’t be...

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