• Posts Tagged ‘standing’

    It’s Best If the Registrant Files the Lawsuit

    by  • January 9, 2023 • trademark • 0 Comments

    This is something that I probably shouldn’t have to blog about, but here we are. Plaintiff Palm Beach Concours LLC filed a complaint against defendant SuperCar Week, Inc. for: Count I, trademark infringement in violation of 15 U.S.C. § 1114 (infringement of a registered trademark); Count II for unfair competition in violation of 15...

    Read more →

    Estopped By A Wrong Decision

    by  • December 5, 2022 • patent • 0 Comments

    The Federal Circuit issued two companion decisions involving the same patent license arrangement, one that affected at least three district court decisions. Uniloc USA, Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC, which I’ll just refer to as “Uniloc,” sued Apple, Motorola Mobility and Google for patent infringement. However, Uniloc had received funding from...

    Read more →

    The Standing of an Exclusive Trademark Licensee (or not)

    by  • July 6, 2020 • right of publicity, trademark • 1 Comment

    July 7, 2020: Updated to add footnote 2. Section 32 of the Lanham Act is for infringement of registered trademarks. The section says that the liability for infringement is to the “registrant.” That category undisputedly includes a successor-in-interest, such as an assignee. A minority of courts have also held that “registrant” encompasses an exclusive...

    Read more →

    You Can’t Just “Re-Form” a Plaintiff

    by  • April 27, 2020 • patent • 0 Comments

    Here are the facts: Ness Stewart Irvine was a patentee. Irvine assigned his patents-in-suit to InterAD Technologies, LLC. InterAD assigned them to Zeroclick, LLC (“Zeroclick I”), the plaintiff, a Texas entity. Zeroclick I sued Apple for patent infringement. Erich Spangenberg, listed as the “governing person,” terminated the Zeroclick I entity.1 Non-party Granicus IP, LLC...

    Read more →

    Waiving Ownership of the Registration

    by  • February 10, 2020 • trademark • 0 Comments

    Do you need to own a trademark to succeed in an infringement claim? Not necessarily. The plaintiff, I&I Hair Corporation, now owns the registration for the trademark EZBRAID. Except that it originally didn’t; the registration was owned by Eunja Son, a principal of the plaintiff. I&I Hair sued the defendant, Beauty Plus Trading Co.,...

    Read more →

    When Is It a License?

    by  • August 20, 2018 • trademark • 0 Comments

    When reviewing a settlement agreement, I often ponder the parts where it says something like “Party B agrees not to infringe the trademark in the future.” The agreement doesn’t need it; whether you say it or not Party B isn’t allowed to break the law. I suppose adding the language gives you a breach...

    Read more →

    The Devil Is In the Definitions

    by  • November 6, 2017 • patent • 0 Comments

    Plaintiff Janssen Biotech had a fundamental structural problem with an agreement. The document was called an “Employee Secrecy Agreement,” but in addition to imposing duties of confidentiality on its employees the agreement also served as an employee invention assignment agreement, as is commonly, if not universally, done. Janssen’s structural problem was in the definition...

    Read more →