Assignment of a Name or Just a Trademark?
by Pamela Chestek • September 11, 2017 • trademark • 0 Comments
Section 2(c) of the Trademark Act requires a “written consent” for the registration of the name of a living individual. Is a trademark assignment a consent? Apparently so.
“Jordan Maxwell” was the pen name of Russell Joseph Pine. Jordan Maxwell is a self-proclaimed “preeminent researcher and independent scholar in the field of occult / religious philosophy.” In 2010 he assigned something to an individual named Josef Dolezal.1 After years of confusion and an abandonment of the application, applicant Momentum Development LLC finally managed to show that Dolezal subsequently assigned the rights to it and the application was therefore filed by the right party.2
Section 2(c) pertains to marks that are not only proper names, but also surnames, shortened names, nicknames, and pseudonyms. Consent is required where the individual is publicly connected with the business in which the mark is used, meaning that there would be a public association between the goods and the persona. That was the case here: there were 17 DVDs showing that Jordan Maxwell was an author or speaker within the field where the JORDAN MAXWELL mark is used. So, although a pseudonym, it would be understood as a reference to Mr. Pine.
The Board then had to decide whether the assignment was also a consent. Where there is a document but without explicit consent
there must be a relinquishment on the part of the individual granting consent, of the right to commercially exploit his or her name as a trademark or service mark, as well as an affirmance of property rights in favor of the party claiming to have received the consent.
That was the case here:
[T]he terms of the 2010 Assignment between Russell Pine and Josef Dolezal are beyond a mere “consent to use” situation. In paragraph “B],” Russell Pine assigns to Josef Dolezal “all Seller rights, titles and interests in and to any and all : Trademarks whether registered or not and the right to obtain registered trademarks in United States Patent and Trademark Office….” In paragraph “A],” Russell Pine agrees that this assignment is “all inclusive and without reservation by Seller of any right, title, Interest or use, whether now existing or subsequently arising.” By these terms, Russell Pine has expressly acknowledged that his marks, including the mark JORDAN MAXWELL, is [sic] the property of Josef Dolezal and that no rights have been reserved by Mr. Pine. Despite the fact that the mark JORDAN MAXWELL is not specifically identified in the agreement, we find that it is the intended property subject to the assignment. The only intellectual property mentioned in the agreement are the “jordanmaxwell” domain names, each of which is essentially the name JORDAN MAXWELL plus “www” and the top level domain name indicator. Moreover, the fact that Russell Pine asserts that he “has made a good faith effort to list in Attachment 1 the Intellectual property being transferred,” but no additional property has been listed, supports that JORDAN MAXWELL is one of, if not the only, trademark assigned under the agreement. Finally, Applicant contends that Josef Dolezal has been using the pseudonym JORDAN MAXWELL since March 30, 2010 on a series of DVDs bearing the name ….
To read the assignment as failing to evidence consent would essentially eviscerate the purpose of the 2010 Assignment, and have a deleterious impact on policy involving assignment of trademarks as intellectual property.
I wonder what will happen if Russell Pine opposes. The Board acknowledges “We note that on a different record developed in an inter partes proceeding, a different result could be reached.” The documents are naive, so it’s hard to tell what rights Russell Pine thought he was giving up.
In re Momentum Development LLC, Ser. No. 85826122 (TTAB Sept. 6, 2017).
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- Pine and Dolezal also have an ongoing dispute in state court involving this assignment, although it wasn’t a factor in the Board’s decision in this ex parte appeal. ↩
- And back to Dolezal. And then back to Momentum Development. I have no idea. ↩