• Posts Tagged ‘priority’

    Cutting to the Chase

    by  • October 17, 2016 • trademark • 0 Comments

    Props to the bankruptcy court in the Eastern District of North Carolina for cutting through to the meat of a trademark ownership dispute. We have a company, B6USA, Inc., doing business as “BaySix,” in Chapter 11 bankruptcy. B6USA was formed in March 2005 and was solely owned by Katherine D. Hite, who was also...

    Read more →

    It Just Seems Wrong UPDATE

    by  • July 26, 2016 • trademark • 0 Comments

    Update: The 9th Circuit has affirmed, in an opinion that only further confuses matters. The analysis is this: Trademarks are assignable. Co-existence agreements are enforceable. Contracts are assignable unless doing so changes the terms or the document says otherwise, and neither is the case here. Therefore, the co-existence agreement was assignable. I have no...

    Read more →

    How to Steal a Trademark

    by  • July 25, 2016 • trademark • 1 Comment

    Progressive Emu, Inc. v. Nutrition & Fitness, Inc. is mostly a dispute about paying for emu oil, but there’s also a trademark claim involved. In 2000 Progressive Emu began developing an emu oil pain cream and added blue coloring to it, “thus birthed ‘Blue Emu.'” Nutrition & Fitness (NFI) was then “brought on board...

    Read more →

    Be Careful What You Sign – UPDATE

    by  • September 16, 2015 • trademark • 0 Comments

    Update: The Court of Appeals for the First Circuit affirmed that the hospital was the owner of the trademarks. Greene conceded that the Massachusetts General Hospital IP Policy was broad enough to cover the trademarks he adopted and used for a program associated with MGH. The court rejected his contract defenses of equitable estoppel,...

    Read more →

    Who Owns a Community Trademark?

    by  • March 19, 2015 • trademark • 0 Comments

    I’ve written a lot about trademark ownership disputes under US law, where trademark rights arise through use. The question comes up when two or more formerly cooperating parties have a falling out and each claim to own the same trademark. But the issue can’t arise just in the US, certainly there are failed business...

    Read more →

    It Just Seems Wrong

    by  • May 19, 2014 • trademark • 0 Comments

    I don’t know whether this case is an unintended consequence or an ill-considered strategy. In any case, I think the outcome is wrong. We have four different parties using somewhat different trademarks for strip clubs.* Their relative order of priority, and the marks, is this: Owner Marks Priority date Spencer (defendant) CRAZY HORSE CLEVELAND...

    Read more →

    First Use Wins

    by  • May 8, 2013 • trademark • 0 Comments

    Here’s a a short and sweet one. Two guys, Mohammad Jarrah and Justin Truesdell, had some kind of business relationship—Jarrah claims Truesdell was an employee and Truesdell claimed he and Jarrah were partners. Whatever it was, the relationship ended. Jarrah then opened an establishment in Houston called “Rebels Honky Tonk” in August, 2009. Then...

    Read more →

    Be Careful What You Sign

    by  • December 21, 2012 • trademark • 1 Comment

    There is a pair of interesting decisions out of the District of Massachusetts about ownership of the marks “Collaborative Problem Solving,” “Collaborative Problem Solving Approach” (the “CPS Marks”), “Think:Kids” and “Think:Kids: Rethinking Challenging Kids” (the “Think:Kids” Marks). “Interesting” because it is a case where marks that preexisted a business relationship were lost by signing...

    Read more →

    Be Careful When You Threaten

    by  • August 26, 2012 • trademark

    Photo from Grand Rapid Press Here’s one to wrap your head around, courtesy of the IPKat. Cedar Springs, Michigan has heretofore been the “Red Flannel Town,” as evidenced by the sign to the left. The logo was used by the town on city vehicles, the cemetery, its letterhead, and in its town seal. The...

    Read more →

    WYHA (Would You Have Abandoned)?*

    by  • September 4, 2011 • trademark

    ZAO Gruppa Predpriyatij Ost v. Vosk International Co. is a very long decision with very little meat.  Sixty-eight pages, of which the first 34 are evidentiary rulings suitable for the final exam for any evidence course. Applicant Vosk International Co. had an agreement with opposer and manufacturer ZAO Ost Aqua to import ZAO Ost...

    Read more →