Property, intangible

a blog about ownership of intellectual property rights and its licensing

A Patently Untenable Trademark Claim

Plaintiff Robert Welsh d/b/a Big Ten Development pitched the idea of a “Big Ten Network” to the Big Ten Conference. Big Ten Conference wasn’t interested at the time, but several years later introduced the “Big Ten Network” and filed trademark applications to register the mark in various classes.

Welsh brought suit under § 38 of the Lanham Act, which says:

any person who shall procure registration in the Patent and Trademark Office of a mark by a false or fraudulent declaration or representation, oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof.

This is usually a claim that one party was aware of another already using a mark but nevertheless filed an application. Welsh had a different twist, though – he didn’t claim that he had trademark rights in “Big Ten Network,” but that the Big Ten Conference’s applications were based on his trade secret, the idea for the network. Welsh claimed that the declaration in the applications, the one that says that the Big Ten Conference was, to the best of its knowledge, the only person who had the right to use the mark in commerce, was fraudulent because the idea was stolen from Welsh.

Relying on similar cases that distinguished ideas from products – Carmichael v. Prime, No. 02-379-C-T/K, 2003 WL 1903355 (S.D. Ind. Jan. 6, 2003) (the idea for STARDUST for a fragrance), Keane v. Fox Television Stations, Inc., 297 F. Supp. 2d 921 (S.D. Tex. 2004) (the idea for AMERICAN IDOL for a talent show); and American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008) (the idea for MY LIFE, MY CARD for credit card services) – the court held on a motion to dismiss under Fed. R. Civ. P. 12(b)(6) that this theory didn’t state a claim. He also hadn’t used the mark and thus did not own it through use, so the Lanham Act claim was dismissed.

The misappropriation of trade secret claim was dismissed because the court declined to exercise supplemental jurisdiction where there was no federal question jurisdiction and no diversity. One loss for the Big Ten Conference; it wasn’t successful in its claim for attorneys’ fees under § 35 of the Lanham Act, even though the court called the plaintiff’s theory “patently untenable.”

No mention of a counterclaim by the Big Ten Conference for Welsh doing business as “Big Ten Development.”

© 2008 Pamela Chestek

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