There’s something that doesn’t seem right about this case, but then it’s a band case. Those are in their own trademark world. This one is about The Rascals. The original members of The Rascals (originally known as The Young Rascals), formed in 1965, were Felix Cavaliere, Gene Cornish, Eddie Brigati and Dino Danelli: (Dig...
Read more →Oh, just ugh. This is in a software development agreement: 14. INTELLECTUAL PROPERTY The Parties agree that no new Intellectual Property will be created under this agreement. That’s sort of like agreeing in a contract that the sun won’t rise. The sun is going to rise, so what happens then? Plaintiff Decisionq hired defendant...
Read more →The government has been trying to seize the MONGOLS trademark for over ten years. You can read my previous posts about it here, here, here and here. The Mongol Nation, an unincorporated association, owned or owns several registrations for a trademark, service marks and collective membership marks for the word mark MONGOLS, the riding...
Read more →“The issue before the Court is whether an entity other than the trademark registrant and owner may properly be sued for trademark cancellation.” And my head explodes. One owns a property, a trademark registration. A claim that the property right doesn’t exist can only be brought against the entity that claims to own the...
Read more →I previously reported on a case that managed to find a non-statutory basis for cancelling an “incontestable” trademark registration, specifically that the application for the registration was void ab initio. The plaintiff and trademark owner was NetJets, with a registered trademark for a software program INTELLIJET. The defendant was a company named Intellijet Group....
Read more →We have a case at the intersection of band names and zombie marks, clearly one for which the melody lingers on. In 1997 there was a jam session at SXSW that included the band Los Lobos. In 1998 some of the SXSW performers created a Grammy award-winning album called Los Super Seven; petitioner Daniel...
Read more →Almost 15 years ago I published an article about the then-common practice of creating a wholly-owned subsidiary to be an “IP holding company.” It was a tax strategy, where royalty payments, an expense to the parent, would be made to a subsidiary in a jurisdiction that didn’t tax the income on royalties. I don’t...
Read more →UPDATE: The parties settled, divvying up the brands. I haven’t written about “zombie” or “heritage” marks in a long time. I last wrote in 2011, about a suit involving department store brands that Macy’s acquired and rebranded, abandoning the original names of Marshall Field’s, I. Magnin, Burdine’s, Kaufmann’s, Lazarus, Meir & Frank, Rich’s and...
Read more →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,...
Read more →I recently took the federal courts to task for what I submit is a disconnect between the statutory definition of “abandonment” and the “naked license” defense. My argument is that trademark owners are simply being punished for behavior that is seen as too lax, without any regard for whether that laxness has actually effected...
Read more →Attorney Advertising. Prior results do not guarantee a similar outcome.
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