Property, intangible

a blog about ownership of intellectual property rights and its licensing

Answer to “Today’s ‘Who Owns the Trademark’ Quiz”

I asked who owns the RESTORADERM trademark? When I read the facts in the Third Circuit opinion I thought it was a no-brainer. But apparently I was wrong, because the district court came out one way and the appeals court the other.

Sköld won in the trial court. Galderma moved for summary judgment on ownership and the district court held that there was a question of fact. As described by the appeals court:

The District Court disagreed and concluded that, despite the language in the 2002 Agreement with respect to trademark ownership, the 2004 Agreement voided any ownership rights that Galderma had in the mark. The Court also considered a provision in the 2004 Agreement stating, “Sk[ö]ld shall sell, transfer and deliver to CollaGenex … all goodwill, if any, relating to the [Restoraderm Intellectual Property].” Whether that provision encompassed, and thus again transferred, the Restoraderm mark to CollaGenex was something the District Court decided should await further fact-finding.

A jury then found that Sköld owned the trademark, as well as deciding the other claims. Both parties appealed.

The appeals court held:

Ownership of the Restoraderm mark is the dispositive issue in this case, and, on this record, it is a matter of contract interpretation subject to plenary review. At the end of the day, we conclude that Galderma is the rightful owner. The 2002 Agreement unambiguously provided for transfer of the mark to Galderma’s predecessor in interest, CollaGenex. Upon registration of the mark, that ownership became vested and was confirmed for all the world to see. Even assuming that the 2004 Agreement completely superseded the 2002 Agreement, it did nothing to disturb those vested rights. The ownership issue should not have gone to the jury.

The intent of the parties that CollaGenex would own the trademark was clear from the letter of intent, and the 2002 contract was not ambiguous. “[W]hen the 2002 Agreement said the Restoraderm mark would ‘be the exclusive property of CollaGenex during the Term [of the agreement] and thereafter[,]; it demonstrated clearly the parties’ intent that the mark was to remain CollaGenex’s property, regardless of any termination of the agreement.” (Emphasis in original.) Further, “the 2002 Agreement unambiguously stipulated that, in the event of any termination, vested rights would survive. … The survival provision reinforces that the transfer provision is not susceptible to another reasonable interpretation.”

As to the 2004 agreement, it just didn’t cover trademarks: “it cannot fairly be interpreted as recovering ownership of the Restoraderm trademark for Sköld. Not a word is said about such a significant step…. [R]ather than voiding CollaGenex’s ownership of the mark by implication, the parties intended to and did confirm that CollaGenex owned the Restoraderm mark. Galderma later succeeded to those vested rights.”

Sköld v. Galderma Labs. L.P., No. 17-3148, 17-3231 (3rd Cir. Feb. 26, 2019).

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2 responses to “Answer to “Today’s ‘Who Owns the Trademark’ Quiz””

  1. Very interesting. I thought this was a slam dunk case for Galderma too. Curious as to why the jury found otherwise, but glad the appellate court came out (IMHO) the right way on this one. It’s a good reminder that no matter how ironclad we think our drafting is, there’s always a crack somewhere for a motivated plaintiff to wedge in a claim.

    1. It seemed to me that GOOD drafting — an agreement that didn’t mention the trademark because that was off the table long ago — was what caused the problem. How frustrating, because I try hard not to be redundant in my drafting. I guess I’ll have to rethink that approach!

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