• Posts Tagged ‘holding company’

    The Subsidiary Standing In

    by  • October 24, 2016 • trademark • 0 Comments

    Lately we’ve been seeing an increasing number of trademark cases that revolve around the relative rights of different members of the same enterprise: a family of companies asserting a family of marks theory in Wise F&I v. Allstate Ins. Co., different chapters of the Salvation Army allowed to register similar trademarks in In re...

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    A Blessing in Disguise

    by  • July 28, 2016 • trademark • 2 Comments

    Whole Foods lost a New York tax decision to the tune of $3.5 million, but in my opinion that’s a small price to pay to avoid a decision inconsistent with ownership of the WHOLE FOODS trademarks. Whole Foods Market Group, Inc. (WFMG), a Delaware corporation, is the operating company that distributes and sells natural...

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    Fifteen Years Later

    by  • April 20, 2016 • trademark • 0 Comments

    Almost 15 years ago I published an article about the then-common practice of creating a wholly-owned subsidiary to be an “IP holding company.” It was a tax strategy, where royalty payments, an expense to the parent, would be made to a subsidiary in a jurisdiction that didn’t tax the income on royalties. I don’t...

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    Only Registrants Get Statutory Damages for Counterfeiting

    by  • January 21, 2009 • trademark

    The modern corporate enterprise with specialized subsidiaries may have its benefits, but it can also cause some unintended consequences on the intellectual property front. I’ve previously reported on a Mars intra-company assignment of patents that created havoc in at least two suits. Now, oil company Shell has run into a wrinkle in a routine...

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    Mowing Trademarks Down

    by  • November 12, 2008 • trademark

    A recent New York case explores a trademark licensor’s tort liability for defective merchandise, but with a twist: the licensor is a wholly-owned trademark holding company. The biggest lesson from the case is “get the left hand talking to the right.” Here, a low-probability, ultimately unsuccessful defense in a tort case only succeeded in...

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    Combining Trademarks in a Jointly Owned Holdco

    by  • July 15, 2008 • trademark

    The May-June 2008 Trademark Reporter has an article entitled “Combining Trademarks in a Jointly Owned IP Holding Company,” by Lanning Bryer and Matthew Asbell. It discusses the risks and advantages of using jointly-owned trademark holding companies for management of “combined” trademarks, i.e., where one trademark is used by unrelated entities (like Volvo) or the...

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