assignment
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Litigation Strategy
Here’s a TTAB case that I think presents an interesting procedural question. The situation: Bello Fitness Ltda, petitioner, is a Brazilian clothing manufacturer. It owns the BODY UP mark in Brazil and had a relationship with non-party Body Up, LLC to distribute the BODY UP clothing in the U.S. Fernando Homem da Costa Filho was… Continue reading
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11th Circuit Affirms Email Exchange as Contract
You may recall a dispute between an individual named Rafael Vergara Hermosilla and Coca-Cola about the ownership of Spanish lyrics Vergara wrote that Coca-Cola used in its World Cup advertising. First, Vergara filed a motion for a preliminary injunction and Coca-Cola was ordered to provide credit to Vergara. The 11th Circuit affirmed. However, on summary… Continue reading
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An Assignment that Works Like a License
You’ll recall that there was a dispute over the ownership of the name of the famous Central Park restaurant “Tavern on the Green.” The restaurant owner owned two registrations for “Tavern on the Green” marks, one for restaurant services (the “Restaurant Mark” and “Restaurant Registration”) and one for oils and dressings (the “Oil and Dressing… Continue reading
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An Embarassment of Ownership Issues
Opposed mark TTAB decision Restifo v. Power Beverages, LLC has, count ’em, seven different trademark ownership theories discussed in it. My kind of case. In 2006 opposer Restifo and trademark applicant Kidd first discussed a business arrangement for making YING YANG VODKA. Kidd described his method of doing business this way: [a]s an alcohol beverage,… Continue reading
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Check the Chain of Title, Please
Folks, really. Check the assignment documents before you file the lawsuit, don’t assume the face of the patent is correct: At some point soon after PBS Inc. filed its motion to amend, it was discovered that PBS Ltd., not PBS Inc., is the assignee and owner of the ‘651 and ‘039 patents. PBS Inc. is… Continue reading
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The STOLICHNAYA Case Ends Again
In 2004 plaintiff Federal Treasury Enterprise Sojuzplodoimport (FTE) challenged defendant Spirit International B.V.’s (“SPI”) claim of ownership of the various STOLICHNAYA trademarks. In 2006 the district court dismissed almost all claims on a motion to dismiss, holding that the incontestable status of SPI’s registration meant that FTE couldn’t challenge ownership. In 2010 the Court of… Continue reading
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Trick Question
A debtor-in-possession had a contract it wanted to assign. The contract included a trademark license, but it was somewhat unusual in structure. For starters, it was a trademark sublicense, not a direct license, for the mark “Jag Jeans”: There is no registered trademark for “Jag Jeans,” although there are several for “Jag” owned by Jag… Continue reading
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What Does a Patent “Cover”?
What does “cover” mean in a patent assignment clause? Plaintiff Openwave Systems, Inc. developed software for network computing but decided to sell off the client-side part of the business, keeping the server-side. It sold the business to Purple Labs S.A., predecessor to defendant Myriad France S.A.S. Some patents were assigned in the transaction, but the… Continue reading
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