Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[ladylawyer]

Greetings All!  Newbie here!

I am an attorney with a background in engineering, but I've never sat for the PT Bar.

However, I do have a TM question I'd like to throw to the group.  I am consulting with an attorney, but would like a general 'take' on the situation.  It has 'Bar Exam' question written all over it.

1.  Company X is sold in the 1970s.  It made a large array of products and was a household name in its heyday.  Its products have become collectible.

2.  The successor of Company X [call them Company XY] takes assignment of some, but not all, of the trademarks of Company X.

3.  Company XY goes bankrupt in the 1980s.  

4.  Company XYZ buys some, but not all, of the physical assets from the XY Bankruptcy creditors.  No trademarks are assigned.

5.  Nothing happens for 15 years.

6.  In the 1990s, Company XYZ reissues some of the products as collectibles.  Cruddy quality, high price, the product line tanks.

7.  In 2002, owner of Company XYZ sells all assets to a shell corporation, Company EE [for Evil Empire].  

8.  In 2003, Company XYZ renews a single trademark belonging to the original company.  He does this in his own name although he is a director of Company EE.  All other trademarks are allowed to expire.

9.  Company EE is corrupt and starts to fall apart.  Stocks are delisted.  EE is sued by everyone and all assets are tied up in judgments and liens.

10.  In 2005 our company contracted to help liquidate existing merchandise and get EE back on-line under new management.  Doesn't work, Company EE too far gone, we let contract expire.  

11.  Our company also begins to make and market products that are similar, but not copies of the original Company X products and marketing them under our own brand as collectibles.  We have filed on some of the expired trademarks and are waiting PTO action.

12.  Receive Cease and Desist from the former owner of Company XYZ who claims that by virtue of owning a single trademark [name of original company] that he owns all the rights to all intellectual properties of the defunct company and wants us to stop using anything remotely associated with former company.  He even wants us to change our company name, despite the fact that we are still shown on the website as contract partners.  We have been using some of the disputed terms openly in business from 2 to 15 years.

Your thoughts?  Enquiring minds are curious? LadyLawyer

[steve ratcliffe]

Hire a lawyer, a good one !

[JimIvey]

I think I agree you're going to need some legal help from someone who knows trademarks much better than I do.  

First, trademarks are created through use (not registration) and are lost through non-use.  If the registration is in the name of a person or entity that never used the mark(s) in question, the registration is probably improper.  So, registration in this or that name isn't the end of the issue.

You might look into cancelation of the registration -- that's beyond what I do, so I can't give a roadmap for what to expect.  But you might look into it.  That may be the end of your troubles.

Second, there may be trouble with assigning trademarks.  Trademarks are direct links between products and services of a company/person and the associated good will.  So trademarks are more "personal" with respect to the owner than other things a company/person can buy/sell.  I understand that trademarks cannot be assumed in bankruptcy (as long as someone tells the bankruptcy judge that such is the case -- otherwise, the judge just does whatever seems reasonable, legal or otherwise).

There may be contractual issues as well.  The owner who registered trademarks in his own name may have violated his contract in that it probably (hopefully) specified that all IP is that of the employer, not him personally.  Whether that effects a constructive assignment is something I can't answer, but it would suggest that the rights he's trying to enforce are rights he was not entitled to.  Remember, something about having to come to court for equity with clean hands -- he's looking for injunctive relief.

This is a big nasty mess.  While those ideas might be good places to start, I'd recommend getting specific help in the relevant areas.

Regards.

[JSonnabend]

Jim is off by one small but important point, I believe.  Trademarks are absolutely alienable and licensable, provided that the "good will" associated with the mark is also transferred.  Thus, one or more of the transfers in the hypothetical may very well be valid (I didn't read it all that closely).

The other important issue is abandonment.  Trademarks, as Jim indicated, are aquired through use and lost through disuse coupled with an intent not to resume use.  Thus, the question of whether or not a mark has actually been abandoned can be quite sticky.

Finally, there is a concept of "residual goodwill" which may impact the abandonment analysis.  In a nutshell, the more famous a mark was, the longer a period of disuse may be required before a court would be willing to find it abandoned.

How all that impacts your situation I can't say.  Only a review of the specifics can give you any real guidance -- this is the fact driven world of TM's, after all.

- Jeff

[JimIvey]

Thanks, Jeff.  Those are all good points.

[Isaac]

I'd like to suggest one more tweak.   A transfer can pass through the hands of someone who never gets around to using the mark as long as the initial registration is supported by use in commerce.   If that someone has concrete plans to use the mark but never gets around to it, the registration is still valid and not subject to being cancelled due to non use.

Also marks can be invalid or valid independent of their registration status with the patent office.   Unregistration of a mark at the PTO can happen even when the mark is in use.

[JSonnabend]

A transfer can pass through the hands of someone who never gets around to using the mark as long as the initial registration is supported by use in commerce.   If that someone has concrete plans to use the mark but never gets around to it, the registration is still valid and not subject to being cancelled due to non use.

I'm not sure I follow that.  Do you have a cite for this proposition?  Perhaps the conclusion hinges on the intent to abandon aspect?

[Isaac]

I'm not sure I follow that.  Do you have a cite for this proposition?  Perhaps the conclusion hinges on the intent to abandon aspect?

Exactly.   Plans to market in the future can be evidence refuting the presumption of intent to abandon.  Assuming  the goodwill was transfered with the mark, the assignee should be in a similar position to refute an intent abandon as was the original holder.  

OTOH, if the registration did become abandoned, plans made to use the mark made after than point could not restore the registration, and the plans further would not be helpful in re-registering.

[JSonnabend]

OTOH, if the registration did become abandoned, plans made to use the mark made after than point could not restore the registration, and the plans further would not be helpful in re-registering.  

That is, if the mark became abandoned, not the registration.  Marks are abandoned, not registrations.