• Posts Tagged ‘assignment’

    A Very Short License

    by  • November 26, 2009 • trademark

    The Trademark Blog reports on a new case where two companies claim to own the same mark. In the complaint, the plaintiff and trademark registrant claims that it licensed the mark to the defendant but later terminated the license. The defendant’s website says that it acquired the business from the plaintiff. Here is the...

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    Making Your Bed

    by  • November 18, 2009 • trademark

    The 7th Circuit decision in Sunstar, Inc. v. Alberto-Culver Co. is interesting in two ways: it provides some insight into how one company is managing the Japanese market, and also provides a little education on Japanese trademark licensing law. Alberto-Culver, owner of the VO5 family of marks, wasn’t having any success in the Japanese...

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    The Coinco Strategy

    by  • November 13, 2009 • patent

    Mars, Inc. v. Coin Acceptors, Inc., first blogged here, demonstrated what can go wrong with ownership of patents within a corporate enterprise. As a refresher, in Mars the defendant, “Coinco,” successfully attacked the chain of title of the patents in suit. Mars had transferred ownership of the patents between family members during the lawsuit,...

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    Contract Interpretation Quiz

    by  • November 1, 2009 • copyright

    Interpret this contract, reproduced below in full: In consideration of the sum of One Dollar ($1.00) and other good, valuable, and adequate consideration, the receipt and sufficiency of which is acknowledged, the undersigned does hereby sell, assign, transfer, and set over to Bridgeport Music, Inc., its respective successors and assigns, fifty percent (50%) of...

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    Standing or Not? Answer

    by  • October 22, 2009 • patent

    Here is the answer to yesterday’s post: The court held that Balsam was the owner of the patent and therefore had standing to bring suit. Although San Marco was the owner of the patent in 2005, the court found that the 2006 agreement evidenced intent that Balsam immediately possess title to the patent and...

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    Standing or Not? Answer Tomorrow

    by  • October 21, 2009 • patent

    Here are the facts, you decide who owns the patent. Court’s decision this time tomorrow. The original owner of the patent was Balsam Coffee Solutions, Inc. On June 9, 2005, Balsam assigned the patent to San Marco Roasters, Inc. The two inventors on the patent were co-owners of both companies. More than a year...

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    The Price of a Re-org

    by  • September 30, 2009 • copyright

    Some decisions just make me nervous. The Sixth Circuit decision in Cincom Systems, Inc. v. Novelis Corp. is one of them. Cincom Systems licenses software. In 1989 it licensed software to Alcan Rolled Products Division (Alcan Ohio), a wholly-owned subsidiary of Alcan, Inc. The license was for use of the software on one computer...

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    Not So Fast

    by  • September 30, 2009 • patent

    A little while ago I blogged on Gerber Scientific International, Inc. v. Satisloh AG, a case that decided whether a later-filed continuation-in-part was included in the assignment of a grandparent application. The 271 Patent Blog is reporting that the issue was certified for interlocutory appeal to the Federal Circuit. © 2009 Pamela Chestek

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    What Every Transactional Counsel Should Know

    by  • September 20, 2009 • patent

    Intellectual property specialists may not be involved in the preparation of merger and acquisition documents, and a couple of recent cases show what can go wrong when the form is missing something important. In one case the patentee won, but in the other the patentee didn’t. In Carotek, Inc. v. Kobayashi Ventures, LLC, the...

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    Why You Always Bring a Claim Under § 43(a)

    by  • September 5, 2009 • trademark

    For starters, so you have standing. Particularly if your assignment record is a hot mess. There are two statutory bases for trademark infringement, § 32 (15 U.S.C. § 1114) for infringement of registered marks and § 43(a) (15 U.S.C. § 1125(a)), a broader provision that can also encompass trademark infringement. Section 32 provides a...

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