Property, intangible

a blog about ownership of intellectual property rights and its licensing

naked license

  • 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

  • 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

  • Ho Hum Naked Licensing Case

    I came away from reading Eva’s Bridal Ltd. v. Halanick Enterprises, Inc. pretty much nonplussed. It’s a naked licensing decision out of the 7th Circuit, and I generally can get fairly riled up about naked licensing cases. But this case is so lacking in any facts that I just can’t say it was wrong –… Continue reading

  • 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

  • It’s Only One Mark

    Sometimes the TTAB is an alternative reality. It’s happening right now as it struggles with trademark ownership disputes. In Arturo Santana Gallego v. Santana’s Grill, Inc., there was family falling out. The TTAB reached a conclusion that may be right, but in a way that is so doctrinally irrelevant that we can’t know. The cast… Continue reading

  • The Risk of the Silent License

    A previous post looked at a contract that was silent on trademark ownership and licensing, leaving the court to sort out who owned the trademark in dispute. A similar problem, a contract silent on the trademark, was decided in the Northern District of Indiana on the same day. This time, it was decided in the… Continue reading

  • Mowing Trademarks Down

    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 providing… Continue reading

  • The Dark Underbelly of Teddy Bear Puppies

    I’ve mentioned in the past that the naked licensing doctrine has taken on a life of its own disconnected from the statutory basis for it, abandonment. Fuller v. Heintz/Candee takes the naked licensing doctrine to an extreme, apparently holding that only one “naked license” is enough to invalidate the trademark. The case is tantalizing in… Continue reading

  • Patsy’s Restaurant Wars

    The never-ending saga of competing “Patsy’s” restaurants in New York simmers on. I count 13 decisions in the Westlaw database from at least three separate suits, plus there have been four petitions to cancel filed at the PTO. The latest decision, resolving all outstanding issues between the parties at the trial court level, starts this… Continue reading

  • No Trademark Law at All

    I think one of the reasons I like trademarks so much is their split personality. On one hand, they are the most ephemeral of intangible property, only a symbol representing a collective ethos. On the other hand, they can be the subject of the most ordinary transactions, buying and selling, securing a loan. A non-precedential… Continue reading