• Posts Tagged ‘abandonment’

    Two Companies Making Pianos, One Mark

    by  • June 18, 2012 • trademark

    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...

    Read more →

    Just Another Skirmish or the War?

    by  • December 26, 2011 • trademark

    Registrant’s goods Cancellation action Paul Audio, Inc. v. Zhou is just one glimpse of what clearly is a much larger dispute. Baoning Zhou, an individual, is the owner of a registration for the mark C-MARK for audio equipment. Petitioner Paul Audio, Inc., owned by Li Gong, had also applied to register the C-MARK mark...

    Read more →

    Zombie Department Stores Rise (as ugly t-shirts)

    by  • December 17, 2011 • trademark

    There’s been a fair amount written about “heritage,” “dead” or “zombie” brands, including by me. These are brands that aren’t being used anymore by the original owner, but they still have resonance with consumers. A third party comes along specifically with the intent of exploiting the consumer recognition by creating a new offering around...

    Read more →

    Abandoned, No Surprise

    by  • June 10, 2011 • trademark

    Some cases make you wonder more about the lawyers. Did they come in to the situation too late and just have a mess to clean up? Have they counseled their clients about their odds? Original Rex, LLC v. Beautiful Brands International, LLC just looks like such a long shot, but some clients can’t be...

    Read more →

    When You Should Hire an Investigator

    by  • March 13, 2011 • trademark

    This case just stinks. I can’t say it’s wrongly decided, it just seems so unfair. The dispute is over ownership of the trademark ZORLAC for skateboards and apparel. Opposer Jeff Newton started a skateboard business in 1976 under the ZORLAC mark, incorporating in 1986. 1984 ad But shortly thereafter he was in financial trouble....

    Read more →

    Google Is the Senior User of ANDROID Mark

    by  • January 5, 2011 • trademark

    Google has successfully defeated an infringement claim over its use of the ANDROID trademark.  So I thought I’d take a look at the bases, which include rarer claims of tacking and abandonment, along with a first use date kicker. Plaintiff Specht had a trademark registration for ANDROID DATA but went out of business. He assigned the...

    Read more →

    Ninth Circuit Ignores the Law Again

    by  • November 30, 2010 • trademark

    One of the treats of writing a blog is that you can take issue with decisions – and so I take issue with a recent decision out of the Ninth Circuit in FreecycleSunnyvale v. Freecycle Network. The Ninth Circuit has now extended its questionable version of the naked licensing doctrine as last stated in...

    Read more →

    Who Will Win – Doctrine or Pragmatism?

    by  • June 30, 2010 • trademark

    Some cases make you wonder and UFA Holdings, Inc. v. Performance Acquisition Group Company is one of them.  It’s newly filed in Oregon, as reported by local news channel KTMR.com. The first “G.I. Joe’s” store opened in 1947 and ultimately grew to a chain of 27 stores.  As told in the plaintiff’s memorandum in...

    Read more →

    The City Owns “Tavern on the Green”

    by  • March 13, 2010 • trademark

    You just can’t trust your readership.  When the City of New York first claimed that it owned the name of the landmark New York City restaurant “Tavern on the Green,” I posted a poll asking readers’ opinion.  The result from the many, many voters (15) was resoundingly in favor of the restaurant. We were...

    Read more →