We’ve all encountered clients who believe that when a mark is unregistered, or the registration lapses, the client can immediately start using the trademark and take advantage of its residual goodwill. Brand significance can live on for many years and a newcomer may see an opportunity to leverage the goodwill in an unused mark...
Read more →I’ve been driving past the former Polaroid building in Waltham, Massachusetts on my way to work. The building is empty, the windows taken out, and what caught my eye is that the POLAROID sign is down. The company moved its headquarters to Concord at the end of 2007. Polaroid had already sold its landmark...
Read more →The TTABlog reports on a successful trademark opposition because of an invalid assignment of an intent-to-use application. I mentioned yesterday that U.S. trademarks can be assigned without any tangible assets, but the U.S. trademark system has a carve-out for intent-to-use applications – they can’t be assigned without at least part of the ongoing business...
Read more →The Patent Prospector reports on an inventor who invented, changed companies, and the new employer filed the patent applications. Didn’t work out so well for the patent infringement claim, but that’s not even the end of the worries. Patent Prospector here.News story here.
Read more →In the United States, an assignment of a trademark is invalid if the “goodwill” is not also assigned with the mark, but there’s no requirement that any tangible assets be transferred. So what exactly does it mean when agreements recite something like “Assignor does hereby assign to Assignee all rights, title and interest in...
Read more →There are few disputes more difficult to solve than deciding who owns a trademark after co-owners have a falling out. Family businesses seem particularly susceptible, my guess would be because they are started more casually without formal documents that even contemplate trademark ownership. European trademark blog Class 46 reports one way to solve the...
Read more →It’s perhaps a bit off-topic for this blog to post about ownership of tangible property, rather than the ownership of the IP itself. But the disagreement over when an object that contains copyrighted work is sold or merely licensed is heating up. There are three recent district court cases in the 9th Circuit that...
Read more →Following up on a previous post, in an unsurprising outcome the AP is reporting that the jury found that the designer of the Bratz dolls conceived of the idea while employed at Mattel, hence the concept is owned by Mattel. It’s not quite clear from the AP article what exactly Mattel owns, since the...
Read more →The May-June 2008 Trademark Reporter has an article entitled “Combining Trademarks in a Jointly Owned IP Holding Company,” by Lanning Bryer and Matthew Asbell. It discusses the risks and advantages of using jointly-owned trademark holding companies for management of “combined” trademarks, i.e., where one trademark is used by unrelated entities (like Volvo) or the...
Read more →Iris Corp. Berhard v. U.S. is a fairly routine analysis of an exclusive licensee’s standing to sue for patent infringement. Of course, an exclusive licensee only has standing if the patentee has conveyed all substantial rights in the patent to the licensee. There’s a bit of a twist here, though; the patent owner had...
Read more →Attorney Advertising. Prior results do not guarantee a similar outcome.
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