I have a crush on the trademark assignment agreement of the Tavern on the Green mark. It’s a tour de force of drafting. In a nutshell, for decades the City of New York leased the premises for the famous Tavern on the Green to a restauranteur. In 2009 the restauranteur lost its lease, but by then h
I am quite puzzled by this decision. It is designated by the court as “not for publication,” which may explain why the reasoning is so unclear. In March 1989, John Z. DeLorean, creator of the DeLorean car, entered into a license agreement with Universal Pictures, licensing the use of the car in
One of the interesting things about TTAB proceedings is that there is no live testimony before the people who will decide the case, the judges. That’s generally a good thing; it means the proceeding is less expensive and time-consuming. Trial testimony is done like a deposition, with just the part
This is a remarkable story. It’s a counter-intuitive result, not wrong, but so surprising. I present: THE VILLAGE PEOPLE!! (Go ahead, full screen. You know you want to.) VIDEO There is no dispute that the plaintiff in this case, Can’t Stop Productions, Inc., created the Village People. The front
I don’t think I have ever been so excited about an exhibit in a case before. It’s one that makes the heart of a person who writes about trademark ownership sing. Just look at it: Unique Casting v Duncan Pawn ticket Yes, it is a pawn ticket. I have looked at many documents claiming to be a tradem
I previously wrote about a puzzling case, Small Justice LLC v. Xcentric Ventures L.L.C., with the defendant better know as Ripoff Report. The First Circuit has now grappled with it, although based on a revised district court opinion amended with a highly consequential footnote. To distill it down as
Oneida Group, Inc. v. Steelite International U.S.A. Inc. is a demonstration of how our jurisprudence is essentially useless in deciding trademark ownership claims. The dispute is over ownership of the trade dress in the highly successful “Botticelli” and “Nexus” tableware patterns, part of O
It’s pretty official at this point, once a trademark registration is “mature,” that is, more than five years old, the registration cannot be challenged on the basis that the original application was not filed by the then-owner of the mark. The 6th Circuit, in an unpublished opinion, reached th
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
Lawn Managers, Inc. v. Progressive Lawn Managers, Inc. is about a trademark and a divorce, a case we’ve visited before. Where we last left it, the federal court was abstaining to allow the parties to figure things out in family court. As it turns out that order was vacated; on reconsideration the
GC2 Inc. v. Int’l Game Tech, PLC is a fairly unexciting copyright ownership case. The main argument involves construction of an ambiguous contract. (What other kinds are there?) GC2 provided “video graphics and artwork” for IGT’s gaming machines and conversion kits. The agreement had a licen
By now you should have read John Welch‘s excellent report on the Federal Circuit opinion in Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation; you can also find more background from me on the Board decision here. Despite my fondness for ownership cases, I wish this was
A poll. We have a trademark for a recurring sports event and two parties who each claim to own it. Here are the facts as we know them. They aren’t hypothetical; they are taken from a case and it’s all we have to go on. Work with what you’ve got. Plaintiff’s version Defendant’s version Reve
The patent, trademark and copyright statutes each provide that an assignment must be in writing. One time I asked a listserv whether that means you have to have the writing in hand. Silly me, it is an evidence question. Defendant Denis Bouboulis was an inventor of an allergy treatment device. He bec
I previously reported on a case that managed to find a non-statutory basis for cancelling an “incontestable” trademark registration, specifically that the application for the registration was void ab initio. The plaintiff and trademark owner was NetJets, with a registered trademark for a softwar
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 r
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
This is my sixth post (recursive link) about the STOLI case. The defendant, Spirits International B.V., claims to own the STOLI and STOLICHNAYA trademarks as a result of privatization during the collapse of the Soviet Union and is listed as the owner of the trademark registrations. The Russian gover
It seems like a simple concept, maybe so simple it isn’t litigated much. You can’t sue the co-owner of your trademark. It’s a band name case (what else?), over “Get the Led Out,” a cover band of Led Zepplin. In 2002 Plaintiff Paul Piccari conceived of the idea to form a band and thought up
Oh, adidas. adidas AG is a large multinational conglomerate headquartered in Germany. It reported that at the close of 2014 it had 154 subsidiaries, one of which is co-plaintiff adidas America, Inc. A few years ago adidas developed “miCoach,” an “interactive personal coaching and training syst
The Agreement At Work
A Covenant Not to Sue Is Not An Exclusive License
It’s All About the Evidence
Get the Agreement Signed
A Thing of Beauty
Not What Copyright Is For
Who Should Own the Trade Dress?
Five Years Later, It Doesn’t Matter Who Filed It
The World’s Most Ambiguous Trademark Assignment
Licenses, Consents or Assignments?
The EULA Working Against You
A Pretty Lousy Test
You Be the Judge
When You Can’t Find the Writing
“Incontestability” and Cancellation
The Subsidiary Standing In
Cutting to the Chase
STOLI Is Back
You Can’t Sue the Co-Owners of Your Trademark
Tax Structuring Strikes Again