Property, intangible

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly. But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the… Continue reading

Yesterday I visited the Penland Gallery, an outstanding craft gallery associated with the Penland School of Crafts.  There were several large moving mechanical sculptures that the viewer was invited to activate.  Except this one: “PLEASE DO NOT HANDLE.  THE ARTIST IS THE ONLY ONE LICENSED TO OPERATE THE BUBBLE MAKER.” There was no commercial bubble… Continue reading

I recently posed the question “Who owns the ‘Walter Mercado’ mark, Mercado or Bart Enterprises?” Did you say “Mercado”?  That’s the right answer, according to two different courts, despite the several references to “irrevocable.” In the first suit, Bart Enterprises and others brought the usual complement of state law claims when parties have a falling… Continue reading

Construe this contract, applying Puerto Rican law: 2.  “Walter Mercado” Mark.* * * (b) Mercado hereby irrevocably assigns to Bart throughout the Territory during the Term, all right, title and interest in and to the Mark, together with that part of the goodwill of Mercado’s business connected with and symbolized by said Mark, for use… Continue reading

Once I did some legal research on unincorporated associations. How do you know when you have one? Is your regular Friday night poker game an unincorporated association?  (My aunt played poker with the same people for 50 years – surely that was an unincorporated association.) What about when members change, what happens then? When does… Continue reading

I’m not even going to try to outline the convoluted competing ownership claims to the STOLICHNAYA trademark for vodka – you can read the decision for that.  But the disagreement about who owned the mark led to a trademark infringement suit that plaintiff Federal Treasury Enterprises Sojuzplodoimport (FTE) brought against the record owner of the… Continue reading

Litigation is expensive and the last thing you need is unnecessary motion practice.  On June 16, 1998 an inventor employed by patent owner Tri-Star executed an assignment to “Tri-Star Electronics International, Inc., its successors, legal representatives and assigns,” an Ohio corporation. On September 9, 1999, he executed another assignment to Tri-Star as an Ohio corporation. … Continue reading

Test your knowledge of Section 10 of the Lanham Act!  Here’s the set-up:  Joint owners file an intent-to-use application.  One owner assigns the mark to the other before the mark is used.  Improper assignment of an intent-to-use application or not? TTABlog has the answer. The text of this work is licensed under a Creative Commons… Continue reading

Pacific Coast Trailers, LLC v. Cozad Trailer Sales, LLC is a tale of failed due diligence. Reliance Trailer Manufacturing Corp. (“Reliance Mfg.”) owned the trademarks RELIANCE, STURDYWELD, ALLOY and COMET. It assigned the latter three, but not RELIANCE, to a sibling company, Reliance Trailer Co., LLC (“Reliance LLC”). Reliance LLC defaulted on some loans and… Continue reading

Uwajimaya, Inc. claims that its business is known by the diminutive “Waji” and that it orally (uh-oh) licensed the Waji mark to Defendant Concourse Concessions LLC.  Concourse Concessions apparently begs to differ on ownership, having successfully registered “Waji” in its own name.  Which doesn’t explain its pending effort to register “Uwajimaya” too.  Currently its application… Continue reading