• Posts Tagged ‘abandonment’

    How Not to Manage a Brand

    by  • February 17, 2014 • trademark • 0 Comments

    I’m very interested in C.F.M. Distributing Co. v. Costantine, a case about a failed franchise and a son’s effort to revive it. The effort failed because there were so many former uncontrolled licensees that the Trademark Trial and Appeal Board held (as affirmed by the Federal Circuit) that the applicant was not the owner...

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    If There’s No Evidence, How Do You Decide?

    by  • November 18, 2013 • trademark • 1 Comment

    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...

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    “Abandoned” Means It’s Not Yours Anymore

    by  • November 6, 2013 • trademark

    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...

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    Which Distributor Owns the Mark?

    by  • September 16, 2013 • trademark • 0 Comments

    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...

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    Abandoned and Adopted

    by  • June 8, 2013 • trademark • 0 Comments

    Well, here’s a teaser of a case we might never know more about. The mark INTRAV has been registered since 1968 for travel agency services and is now owned by International Expeditions, Inc. A company called Christine E, LLC filed a petition to cancel the mark on the basis of abandonment: After diligent inquiry,...

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    Sixth Circuit Saves the Day

    by  • March 21, 2013 • trademark • 0 Comments

    A while back I started a post this way: 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. And the appeal is here.  Muuuchhh better! Defendant Steven...

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    Mind Your Licenses

    by  • December 27, 2012 • trademark • 0 Comments

    Mind your licenses – if you want the mark to remain valid, it behooves you to comply with the terms of the license. Non-party Ansell Incorporated, later called Ansell Healthcare Products (Ansell), owned the mark CONDOM SENSE for prophylactics, claiming first use in 1988. In 1992, it filed an intent-to-use application for the mark...

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    Another Band Name Ownership Decision

    by  • October 21, 2012 • trademark • 0 Comments

    Ok, I’m very confused by the decision in the TTAB case O.T.H. Enterprises, Inc. v. Vasquez. What’s confusing is that the Board discusses, in two separate parts of the decision, ownership of the mark and priority. I don’t really get that – if the case is about who owns the mark, what other mark...

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    Lack of Control as a Shield

    by  • September 23, 2012 • trademark • 0 Comments

    You are undoubtedly familiar with the concept that the lack of control over the quality of the goods and services with which a mark is used can mean that the trademark is abandoned (recursive link alert) by the trademark owner.  But in East West, LLC v. Rahman, the lack of control was instead used...

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    Why Trademark Lawyers Should Work M&A

    by  • July 8, 2012 • trademark

    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 &...

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