assignment
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Standing or Not? Answer
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 hold… Continue reading
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Standing or Not? Answer Tomorrow
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 later,… Continue reading
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The Price of a Re-org
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 in… Continue reading
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Not So Fast
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 Continue reading
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What Every Transactional Counsel Should Know
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 missing… Continue reading
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Why You Always Bring a Claim Under § 43(a)
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 cause… Continue reading
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News Flash: Patents Can Be Transferred by Operation of Law
The patent blogs are reporting on a new decision by the Federal Circuit, affirming that transfer of ownership of a patent can occur not only by assignment and through intestacy, but also by the operation of law when a holder of a security interest exercises its right to sell the collateral. Good thing, as the… Continue reading
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Stitch in Time
Changes of ownership of intellectual property rights are sometimes done in a series of transactions all executed at generally the same time. For example, when acquiring assets, they might first be assigned to an acquisition company, the acquisition company merged into the purchaser, the seller dissolved, and the purchasing company’s name changed to the name… Continue reading
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Get a License
Ryan Gile, the Las Vegas Trademark Attorney, reports on an interesting and complicated new lawsuit revolving around the ownership of the mark TROPICANA – for casinos and hotels, not orange juice. “The Tropicana’s famous roadside sign, a Las Vegas landmark dominating the Strip and welcoming arriving guests for a half-century.” (from the complaint). The complaint… Continue reading
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Is a Name Necessarily a Mark?
(Joseph Abboud, 2005) In 2000, Joseph Abboud sold at least the trademarks for “Joseph Abboud” to his former company, JA Apparel Corp. Others have blogged on the Second Circuit’s reversal of the district court decision that had stopped menswear designer Joseph Abboud from using his own name to promote a new line of clothing he… Continue reading
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