trademark
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STOLICHNAYA Case Still Alive, Just Barely
Oh, Federal Treasury Enterprise Sojuzplodoimport, without you I wouldn’t be so good at spelling “Stolichnaya.”* I’ve lost count of the opinions talking about who owns the STOLICHNAYA trademark and we’re now on the second lawsuit over it. It all stems from a disputed claim of ownership of the STOLICHNAYA mark in the United States. To… Continue reading
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Let’s Kill the “Naked License” Defense
Those of you who have been reading my blog for awhile know that I’m not a fan of the naked licensing defense. The Trademark Reporter was kind enough to print a Comment I wrote explaining why I dislike it so. Click on the image for a copy. Thanks to The Trademark Reporter for granting permission… Continue reading
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A Short Lesson on Trademark Coexistence Agreements
The restaurants in the Benihana chain have two different owners, divided by territory. Defendant Benihana, Inc. (“BI”) owns the BENIHANA trademark in the United States, Central America, South America, and the islands of the Caribbean, the “Territory.” Plaintiff Benihana of Tokyo, Inc. (alert! noisy autoplay link) (“BOT”) owns the rights to the BENIHANA trademark outside… Continue reading
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Schooling on Unincorporated Associations
The Ninth Circuit has given us a lesson on unincorporated associations and two different legal concerns when one is involved in a trademark infringement lawsuit: the association’s capacity to own trademarks and to bring a lawsuit for infringement. The plaintiff is the Southern California Darts Association (“SoCal”), which promotes darts competitions and coordinates leagues. It… Continue reading
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Yikes
Whether a license provision is categorized as a “condition” or a “covenant” will determine what remedies are available. Noncompliance with a covenant of the agreement is a merely a breach, so you get contract remedies. If the noncompliance means you failed to satisfy a condition, then you have no license and are subject to infringement… Continue reading
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A Primer on Michigan State Trademark Law
There aren’t a lot of cases about state trademark law, so a state appeals court decision—here, Michigan—is worth a mention, if for no other reason than it is about the most thorough explanation of the fundamentals of trademark law that I’ve read in a long time. If you have someone just beginning to study trademark… Continue reading
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Who Owns an Academic Journal?
For decades Duke University published an academic journal called Social Science History that was edited by The Social Science History Association. At the time of the dispute, the two were parties to an “Editing and Publishing Agreement,” which provided that: If you can’t read it, the agreement was for five years and auto-renewed every year… Continue reading
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A Sensible Decision
John Welch at the must-read site The TTABlog published a post about a recent ownership decision, Conolty v. Conolty O’Connor NYC LLC. The gist is that two women started a business without any formal business structure, one of the women, O’Connor, formed the defendant LLC as a single member limited liability company, and the LLC… Continue reading
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When is a Trademark License Not a License?
The legal significance of a “license” to the BUTTERNUT trademark has been in dispute for ten years now. I put “license” in quotes because while the document in question is called a license, it’s not your typical trademark license. In 1996, in settlement of an antitrust suit brought by the Justice Department, defendant Interstate Bakeries… Continue reading
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It’s So Hard to Value Trademarks
It always gets interesting when an owner has incentive to make inconsistent claims about the same intangible asset in different venues. Say, for example, where you claim that copyrights are part of your deceased spouse’s estate to keep them out of bankruptcy and then try to claim you are the owner for purposes of a… Continue reading
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