Gosh I love this case. Don’t get me wrong, I think it’s resoundingly wrong, but what a fascinating way to get there. Plaintiff Quantum, Inc. sells natural health products. It owned the registered trademark MigreLief for “nutritional supplement containing feverfew and other natural ingredients for relieving headaches.” The trademark was registered in 1996, a...
Read more →I have written extensively in the past about what I consider a misapplication of the anti-trafficking provision of Section 10 of the Lanham Act. Section 10 has a special provision that limits when one can assign an intent-to-use trademark application. After the 1989 amendment to the Lanham Act, companies could file trademark applications before...
Read more →John Welch put in the call, and I’ll pick up. If you didn’t read his post on Emerald Cities Collaborative, Inc v. Roese, go read it now. Section 10 of the Lanham Act limits the assignability of intent-to-use trademark applications. One can assign an ITU application only after the Amendment to Allege Use or...
Read more →Update: I previously reported on Sebastian Brown Prods. LLC v. Muzooka Inc., a fairly routine trademark priority dispute with a troubling holding. In it, the district court wrote out the last sentence of Section 10 of the Lanham Act, essentially holding that an intent-to-use application cannot be assigned until the trademark is in use....
Read more →Golly, the things you have to explain sometimes. Plaintiff Ubu/Elements, Inc. claimed to have purchased all of the assets of Defendant Elements Personal Care, Inc. UBU/Elements accused the defendant of continuing to use the trademark AFTER THE GAME after the purchase. The Asset Purchase Agreement said this about the trademark in dispute: If you...
Read more →In a recent Trademark Reporter Commentary, I went on a tirade about a two district court cases that, in my view, misinterpreted Section 10 of the Lanham Act. Section 10 generally prohibits assignment of intent-to-use applications “except for an assignment to a successor to the business of the applicant, or portion thereof, to which...
Read more →If you think that there is any way around the prohibition in Section 10 of the Lanham Act restricting the assignment of intent-to-use applications,* just give up on the idea. The registrant in Central Garden & Pet Co. v. Deskocil Manufacturing Co., having assigned intent-to-use applications from a wholly-owned grandchild subsidiary up to the...
Read more →Section 10 of the Lanham Act has what’s called an “anti-trafficking” provision, which prohibits the assignment of intent-to-use applications “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” The provision was added by the Trademark...
Read more →I recently wrote about a case which held that, while there was an assignment of an invention, a continuation-in-part application was not assigned because it had new matter. I’m not sure if the outcome was right; at least I suspect that many drafters of assignment language haven’t thought about it that way. The same...
Read more →Opposed mark TTAB decision Restifo v. Power Beverages, LLC has, count ’em, seven different trademark ownership theories discussed in it. My kind of case. In 2006 opposer Restifo and trademark applicant Kidd first discussed a business arrangement for making YING YANG VODKA. Kidd described his method of doing business this way: s an alcohol...
Read more →Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2013-2022 Pamela S. Chestek. All rights reserved.