abandonment
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Lack of Control as a Shield
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 to […] Continue reading
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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
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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
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Just Another Skirmish or the War?
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 for […] Continue reading
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Zombie Department Stores Rise (as ugly t-shirts)
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 the […] Continue reading
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Abandoned, No Surprise
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 deterred. […] Continue reading
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When You Should Hire an Investigator
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. He […] Continue reading
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Google Is the Senior User of ANDROID Mark
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 mark […] Continue reading
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Ninth Circuit Ignores the Law Again
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 Barcamerica […] Continue reading
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Don’t Expressly Abandoned a Trademark You Allege is Infringed
I don’t usually write about abandonment, but Commerce Bancorp LLC v. Hill is a good teaching moment – or maybe a not, since it looks like Commerce Bancorp dodged a bullet. But it only survived summary judgment in a court that sets a low bar for finding a genuine issue of material fact. The facts […] Continue reading
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