Property, intangible

a blog about ownership of intellectual property rights and its licensing

  • Why Trademark Lawyers Should Work M&A

    It’s common in many industries for a company to be named after its partners. The names both individually and as part of the firm name develop goodwill, which makes it a challenge when an individual departs – how do you divvy it up? Not how it was done in Basile Baumann Prost Cole & Assocs.,… Continue reading

  • 1.65% of 33% Ownership

    Marques Class 46 Blog reports on a decision out of Poland that I struggle with conceptually.  There were three joint owners of the trademark SILMENT.  One of the joint owners assigned 1.65% of his 33% ownership to his son. This is where I’m struggling.  What does an approximate 1/2% ownership interest in a trademark actually… Continue reading

  • Why You Need an Ownership Clause in Your Employee Agreements

    An old case popped out on Westlaw for some reason, but it is an interesting one, about ownership of trade secrets created by an employee. So I thought it was worth writing about. Plaintiff Premier Displays & Exhibits and defendant EWI Worldwide are both in the business of design and fabrication of displays and exhibits… Continue reading

  • Two Companies Making Pianos, One Mark

    Digging into an interesting decision about the duty to defend an insurance claim turns out to be a long tale about a zombie mark, with strategic moves in prosecution, before the TTAB, and in federal court.  It’s still going, but as far as I can tell all that should be left to decide is damages. … Continue reading

  • Another Dirty Co-Existence Agreement

    I just read a post by my friend Neil Wilkof entitled The Dirty Little (Or Not So Little) Secret Of Trade Mark Law.  In it, he talks about co-existence agreements and too often their tolerance of confusion rather than avoidance of it. And then I ran across a fairly uninteresting and poorly decided case that… Continue reading

  • You Really Need It Signed

    If you snoozed through biz org class in law school thinking that you weren’t going to be a transactional lawyer, perhaps you better go back and brush up on the law of agency. That’s what snagged Universal Music Group and its related company, UMG Recordings. That, and the pressure to get the deal done. Artists… Continue reading

  • Don’t Get Greedy

    Tahir Mahmood believed that he was a co-inventor of a RIM patent.  He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology. In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694. In… Continue reading

  • Way Too Many Co-owners

    International Importers v. International Spirits & Wines, LLC is, at bottom, a manufacturer-distributor dispute. It’s also a lesson in how not to handle trademark ownership. Fernbrew Pty. Ltd. Corp., an Australian company, is the owner of trademark registrations for WALLABY CREEK for wine in Australia, New Zealand, the EU, and Canada, but the U.S. trademark… Continue reading

  • Salba United

    I previously blogged about a case, Salba Corp. v. Ralston, where there were two different owners of SALBA-formative marks.  Salba Corp. owned the trademark SALBA (a varietal of chia seed) and the Ralstons then assigned their SALBASMART and SALBA BALANCE marks to Salba Corp. with a license back and a reversion if Salba Corp. breached… Continue reading

  • Trademark Troll Extraordinaire

    We occasionally hear about trademark trolling, but Premier Pool Management Corp. v. Lusk takes it to a whole new level. Plaintiff Premier Pool Management Corp. (“PPMC”) offers swimming pool and spa construction services through licensees doing business as Premier Pool & Spas.  It first used the PREMIER POOL & SPAS mark in 1989 and was using it in interstate… Continue reading