Property, intangible

a blog about ownership of intellectual property rights and its licensing

Today’s “Who Owns the Trademark” Quiz

The opening sentence: “This case proves once again that people will fight for a catchy name.” My kind of case.

Plaintiff Thomas Sköld coined the name “Restoraderm” for a proprietary skin care formulation. (When the court uses the word “coined,” you know it has grasped the difference between a word and a trademark.)  In 2001 Sköld and a company called CollaGenex signed a letter of intent and in 2002 they signed a contract titled “Co-Operation, Development and Licensing Agreement.” The LOI said “[a]ll trade marks associated with the drug delivery system; the proposed intellectual property; products deriving therefrom and products marketed or to be marketed by CollaGenex and/or any commercial partner of CollaGenex anywhere in the world shall be applied for and registered in the name of CollaGenex and be the exclusive property of CollaGenex.” The contract carried through with “[a]ll trade marks applied for or registered (including ‘Restoraderm’) shall be in the sole name of CollaGenex and be the exclusive property of CollaGenex during the Term and thereafter[.]” It also said, “[a]ny termination under this Agreement … shall not affect in any manner vested rights of either party arising out of this Agreement prior to termination.” CollaGenex registered the RESTORADERM trademark.

In 2004 the parties replaced the 2002 agreement with a new one. In the new agreement, Sköld transferred “Restoraderm Intellectual Property” and related goodwill to CollaGenex. “Restoraderm Intellectual Property” was defined to include patent rights and associated know-how but didn’t mention trademarks. There had been a provision addressing trademark rights in an earlier draft, but the provision was removed before the agreement was finalized. Sköld admitted at his deposition that the removal was “probably” because CollaGenex already owned the Restoraderm trademark.

In 2008, defendant Galderma Laboratories L.P. bought CollaGenex. It did some market studies which suggested using the RESTORADERM trademark, but to use it for a product with a different technology. Galderma did just that. In November 2009, Galderma terminated the 2004 agreement. Sköld sent Galderma a list of assets for the company to return to him, including the trademark. Galderma responded that it was the owner of the trademark and that Sköld could not use the name in his communication on the technology. Sköld sued Galderma for trademark infringement, etc.

Who owns the RESTORADERM mark?

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