trademark
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You Need to Schedule Worthless Trademarks
Thanco Products and Imports, Inc. v. Kontos is a case that intrigues me. It’s an adversarial proceeding in a bankruptcy, not having to do with who owns the trademarks exactly, but what happens when one lies about it. In 2006 and 2007 Debtor George Kontos filed six trademark applications that ultimately registered, for GREEK AMERICAN… Continue reading
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If There’s No Evidence, How Do You Decide?
I often write about cases where there are two claimants to the same trademark. We’re still struggling with the fundamental doctrine that should apply in the situation, and because we’re struggling it means that the litigants may not capture or offer evidence that the fact finder needs in order to decide. Which is what happened… Continue reading
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“Abandoned” Means It’s Not Yours Anymore
What a mess. Add up ugly facts and a court that bought a frivolous and completely wrong argument (made without citation – because there aren’t any) and you end up with a fiasco. Here’s to appeals. Non-party Herb Burkhalter had a yellow pages directory business he sold to co-defendants Steven M. Brandeberry and American Telephone… Continue reading
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Who Can Enforce the Mark?
I previously wrote about an unusual case in Florida, where a state agency alleged infringement of registered trademarks. The lawsuit was dismissed for lack of standing, with the district court reaching the conclusion that the enabling statute for the agency didn’t grant it the right to enforce its trademarks. According to the statute, Florida VirtualSchool is… Continue reading
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An Indispensable Owner
We know from Florida Prepaid that a State has sovereign immunity in federal intellectual property cases, so that it can only be required to appear in federal court if it has waived the immunity. This principle has ended a trademark infringement case before it got started. It’s an odd fact pattern. Plaintiff Richard Diaz, of… Continue reading
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Which Distributor Owns the Mark?
Hold on, we’ve got a complicated one here. Save it for your “very long reading” queue. One trademark, three potential owners in the distribution chain with overlapping periods of time during which they claim ownership. The mark: “Smart Candle” (Smart Candles, SMARTCANDLE, SmartCandles, etc.) for electronic candles. The companies: Smartcandle.co.uk Limited (“SCK”) — non-party UK… Continue reading
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Yeah, What He Said
If you think that there is any way around the prohibition in Section 10 of the Lanham Act restricting the assignment of intent-to-use applications,* just give up on the idea. The registrant in Central Garden & Pet Co. v. Deskocil Manufacturing Co., having assigned intent-to-use applications from a wholly-owned grandchild subsidiary up to the parent,… Continue reading
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The Court of Appeals Confirms “Registrant” Means What It Says
I’ve already written a couple of times about Federal Treasury Enterprise Sojuzplodoimport v. SPI Spirits Ltd. The plaintiff in the case, FTE, manages the STOLICHNAYA trademark on behalf of the Russian government. The first time the case went to the Court of Appeals, the appeals court reversed the trial court and held that the incontestability… Continue reading
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When “Exclusive Licensee” Equals “Registrant”
Heraeus Germany makes dental products and distributes them in the United States through a sister company, plaintiff Heraeus Kulzer LLC (Heraeus America). Defendant Omni Dental Supply imports gray market products it claims are made by Heraeus Germany but intended for distribution in other countries, primarily China. In order to stop Omni, Heraeus Germany made Heraeus… Continue reading
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You Need to Ask Who Is Making the Product
Nahshin v. Product Source International, LLC is a fairly routine manufacturer-distributor dispute with a twist — a middleman. It could have mucked things up a bit, but the Trademark Trial and Appeal Board handled it neatly. Israeli businessman and petitioner Leonid Nahshin adopted the mark NIC-OUT at least as early as January 1, 2002 outside… Continue reading
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