Pamela Chestek
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Assigning the “Goodwill”
There are several meanings to the word “goodwill,” depending on the context. This ambiguity was the basis for Axiom Worldwide, Inc. v. HTRD Group Hong Kong Ltd. The plaintiff Axiom Worldwide, Inc. (Axiom Inc.) registered trademarks, obtained authorizations from the Food and Drug Administration, and “created its own intellectual property” (those are the court’s words,… Continue reading
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Copyright Transfer by “Operation of Law”
A copyright can be transferred by written document or by operation of law. The First Circuit recently discussed the latter form of transfer, albeit with a neat sidestep of the question. The plaintiff Society of the Holy Transfiguration Monastery (the Monastery) is a religious order in Massachusetts founded in the 1960’s. The Monastery created translations… Continue reading
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“Co-owned” Means Owned by the Same Entity
Short and sweet: The parties agree with binding Federal Circuit precedent that holds that if the ownership of a disclaimed patent is separated from the prior patent, the disclaimed patent is not enforceable. Further, the parties do not dispute that, according to the condition set forth in the Terminal Disclaimer, the ‘176 Patent is enforceable… Continue reading
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Assignment of a Part of a Continuation-in-Part?
Plaintiff AB Coaster Holdings Inc. claimed to be the owner of patents that were subject to terminal disclaimers. Some of the patents were expressly assigned and some were not. Here are the pairings: ‘633 (assigned) and ‘079 (not expressly assigned)‘445 (not expressly assigned) and ‘263 (assigned)‘079 (not expressly assigned) and ‘263 (assigned) The defendant argued… Continue reading
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The Piano Mark Was Apparently Not Abandoned
I previously told the story of what I characterized as a zombie piano trademark for SOHMER. The long version is here and the short version is that an owner of the mark, Burgett, Inc., had a period of non-use during which time it allowed the registrations to lapse; upon discovering the lapse another piano manufacturer,… Continue reading
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Lack of Control as a Shield
You are undoubtedly familiar with the concept that the lack of control over the quality of the goods and services with which a mark is used can mean that the trademark is abandoned (recursive link alert) by the trademark owner. But in East West, LLC v. Rahman, the lack of control was instead used to… Continue reading
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Know When to Fold ‘Em
I’ve previously reported on a case brought by Wayne Gray challenging the ownership of the UNIX trademark. Gray was trying to register the mark “iNUX” but his application was refused as likely to be confused with UNIX. He went on the attack in court, claiming that an assignment from Novell to defendant X/Open wasn’t effective. He lost… Continue reading
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A Derivative Work Made for Hire
Photo by davesandford, CC BY-NC 2.0 In U.S. Auto Parts Network, Inc. v. Parts Geek, LLC out of the Ninth Circuit, the court says that its decision is about a “previously unexplored intersection of the Copyright Act’s work for hire and derivative work provisions.” Perhaps so, although the analysis is fairly routine. Defendant Lucas Thomason… Continue reading
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Eighth Circuit Screws Bread Company
I previously reported on a bankruptcy involving the BUTTERNUT trademark for breads. In 1996, in order to avoid antitrust concerns created by its acquisition of another bread company, Interstate Bakeries Corporation (IBC) sold assets and granted a trademark license for its BUTTERNUT and SUNBEAM marks to Lewis Brothers Bakeries (LBB). The trademark license was only… Continue reading
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