trademark
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Never Underestimate the Burden of Proof
Trademark examining attorneys occasionally make mistakes and often the error can’t be challenged once the trademark is registered.* In Vujovic v. Octop there was a clear procedural error and it was most likely outcome determinative. Two people worked together at a company called “Octop.” The opinion doesn’t have much information (because most of the evidence… Continue reading
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Working Around Incontestability
Once a trademark is incontestable, its validity cannot be challenged except on certain limited bases. Is “void ab initio” one of them? “Void ab initio” isn’t listed in the statute as a basis for challenge, but the defendant in NetJets Inc. v. IntelliJet Group, LLC found a workaround. The plaintiff registered its trademark, INTELLIJET, for computer… Continue reading
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But What’s the End Game?
The U.S. government has been in a multi-year, multi-indictment quest to acquire the trademarks of the Mongols motorcycle club. You can find the whole complicated background here, but the short version is that, because of improper assignments, the government indicted the wrong party the first time around. So the government is back, this time indicting… Continue reading
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Be Careful What You Sign – UPDATE
Update: The Court of Appeals for the First Circuit affirmed that the hospital was the owner of the trademarks. Greene conceded that the Massachusetts General Hospital IP Policy was broad enough to cover the trademarks he adopted and used for a program associated with MGH. The court rejected his contract defenses of equitable estoppel, failure… Continue reading
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Going to the Back-up Plan – UPDATE
Update: The Court of Appeals for the First Sixth Circuit affirmed the lower court decision that there was an implied assignment of the trademark. The defendant challenged the decision on two bases. First, without using the word “abandoned,” the defendant argued that the trademark rights were lost when Taylor ceased business. But the owner of… Continue reading
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Corporation versus Unincorporated Association
One of the issues I often write about is what entity, exactly, owns a trademark. As described by the Trademark Trial and Appeal Board, “feuding members of extended family businesses, aging pop bands, or religious organizations riven by theological schisms” are frequent litigants because trademarks can be adopted with great informality and no documentation. Sometimes… Continue reading
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How to Write a Well-Pleaded Complaint
The Lanham Act provides a federal cause of action for trademark registration and infringement, including for infringement of unregistered (so-called “common law”) trademarks. It is well-accepted, though, that the Lanham Act doesn’t preempt state law on the subject; all states* have laws providing for registration at the state level and an infringement cause of action.… Continue reading
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GUADEC 2015
To quote the World Trademark Review: It is foolish in the extreme to ever underestimate the power of a passionate online community; if you do, what may seem like a minor blip in your trademark strategy could turn into a formidable obstacle should you come up against a cleverly-orchestrated and very determined campaign. I’m very… Continue reading
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Yoiks
Yoiks. So you license someone your trademark and have this language in the license agreement: [L]icensee hereby acknowledges the validity of the licensed mark and the exclusive ownership of the licensed mark by licensor, whether or not registered or recorded. Licensee agrees that it will not, at any time during the term of the License… Continue reading
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§ 21 Affirmance of Nic-Out
I just went on a tirade against the manufacturer-distributor presumption, arguing that the doctrine is meant to apply where “distributor” means “reseller,” not the more complicated case where the so-called “distributor” has some say in how the goods are produced. And here is an example of the relationship the doctrine was meant for—properly applied by… Continue reading
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