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[ladylawyer]

Thanks to everyone for their enlightening answers to my other post.

A new question that arises from the old:

Company Owner A sells to Company B.  In press releases A says he is conveying all intellectual property to B.

Company B launches huge public relations blitz touting its acquisition of A.  Owner A is made a Director of B.

Owner A secretly renews the most vital trademart in his own name.

Company B has no idea and continues its merry way as the 'new company' and makes all sorts of promises regarding the trade names it thinks it has acquired from A.

Now, A's contract fraud is pretty apparent here.  So, that question aside, could A's silence as B continues to go on and on about its 'new line' be construed as an implicit license to B?  Or as having acquiesced [can never spell that] to B' use of the mark?

The question comes up in a question of 'naked licensing'.  Does A, as the registered, albeit secret, owner of the mark have a duty of quality control over B as a licensee?  This comes into play because B turned out to be a scam that acquired A only to issue stock and do a pump and dump consumer fraud.  A was a director of B and part of day-to-day operations.

Has A engaged in 'naked licensing' with respect to B?

[JSonnabend]

From my understanding of your facts, B is the actual trademark owner, not A, and A's registration is likely invalid.  In questioning the existence of a nake license, I think you mistake trademark ownership with registration ownership.

If these questions relate to a case you're handling, why not bring a tm attorney on board to consult?  I don't need to tell you the advantages of doing so and the potential pitfalls of seeking advice here.

- Jeff

[ladylawyer]

LOL!

Sorry to be so oblique, but this is the fact pattern from HELL

I'm doing my groundwork to take this all to federal court as both attorney and party in interest [can't afford the $5k retainer to get it started]  and I'm looking into different areas of the law to explore and examine.

I have a TM attorney as a consult and will mire through!

I have found some evidence of licensing - the SEC filings for B say they have 'obtained the rights to use the mark'.  

The exact terms of the conveyance of the 'rights' will become clearer during discovery.  Was the mark conveyed or licensed??  Only the contract will tell for sure.  

That leaves both the legal theory of fraudulent registration or naked licensing on the table.

Don't worry, I'm only looking for prompts and ideas and opinions, not answers!

LL

[Isaac]

Thanks to everyone for their enlightening answers to my other post.

A new question that arises from the old:

Company Owner A sells to Company B.  In press releases A says he is conveying all intellectual property to B.

I'm not sure what the quoted statement is supposed to mean.  Company A sells what exactly to Company B.  Further what weight should we give to what was said in a press conference?  Some intellectual property transfers require a signed writing to be enforceable.

Even if the transfers are ineffective Company B might have some equitable remedies against Company A, but those remedies might depend very strongly on what was promised, and what was reasonably implied from what A sold to B.

It also might depend on what the trademark covered and what businesses A might legitimately conduct after selling whatever was sold to B.