Tag Archives: Licensing

“Dear Licensor” — Part II

Originally posted 2011-08-19 10:37:54. Republished by Blog Post Promoter

Dear John Letter

Permission: Casey Berry

Last spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well.

Here’s a highlight:

Richard Bergovoy

Richard Bergovoy

If Licensee Seeks to Assume and the Licensor Objects

The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the goods and services provided by the licensee under the licensed mark. This rule is designed to fulfill the public policy objective of consumer protection, in that trademark laws help prevent the public from being misled as to the quality of branded products and services. A prohibited “assignment in gross of a mark” or other failure to maintain quality control standards could give rise to a so-called “naked license” claim. The consequences of such a claim can be quite severe. In particular, “a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” To prevent such damage from occurring, the licensor may object to a licensee’s assumption or assumption and assigument of a license agreement on the following four grounds …

The four grounds, and the rest of the article, can be found here.

Best of 2013: Arnold Palmer and the Perfect Brand

[stextbox id="alert"]First published November 11, 2013, this post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.[/stextbox]

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand.

Arnie is very much alive, but his competitive golfing days are well behind him.  Yet he has made far more after the peak of his glory days than he ever did on the green.

The Arnold Palmer brand is built on a fame and stature that few people under 60 can appreciate.  It came into being during Arnie’s playing days, and far outstripped mere sports, as this 1967 Sports Illustrated article recounts:

The country produces superb athletes regularly, of course, and the 1960s have seen many of them—Jim Brown, John Unitas, Willie Mays, Sandy Koufax, Mickey Mantle—but none can rival Palmer. Not only has he reached a celebrity status enjoyed by few individuals in any field, he is the first athlete to become a walking million-dollar corporation in his prime. . . .

Arnold Palmer in his fashion primeBy Tuesday afternoon the filming is done. Arnold hurries to La Guardia and flies in his jet to Shawnee, Pa. to participate in the grand opening of a food-processing plant built by his father-in-law, Martin Walzer. He spends the night in Shawnee. The next morning he flies back to New York City, where he picks up four top business executives as part of his association with the U.S. Banknote Corporation. He flies them to Latrobe for a VIP day of golf, meals and drinks at Laurel Valley Golf Club. On Thursday he poses for photographs again, this time for the Bolens Division of FMC, for whom he endorses lawn equipment and snowplows. Two days in Latrobe follow, but on Sunday he is off once more, this time to Winchester, Ky., where he is made a Kentucky Colonel and an Admiral of the Kentucky Waterways. He plays an exhibition there and is back in Latrobe by nightfall. Monday and Tuesday are Arnold Palmer Enterprises days in Latrobe, as 14 executives from his various corporations fly in to consult, dine and play golf with the boss.

Meanwhile Tuesday has brought an unexpected problem. The State Department called both Arnold and me on a matter of some importance.
Read More…

Pick your poison

Originally posted 2010-08-17 18:21:14. Republished by Blog Post Promoter

Licensing of Confusion

Licensing of Confusion

Is it infringement or a breach of contract?  Is it a license or an assignment?  Well, whatever it is, it’s a little complicated, and Pamela Chestek does a good job of following all that geometry on her Property, Intangible blog.

Not just a good job:  That blog post represents hard work — not just intellectually following the fact pattern, but painstakingly cutting and pasting “actualities” into the post.  Nice.  But it’s all worth it for a great blog post, isn’t it, Pamela?  Uh, right?

Either way, I liked this excerpt she pulled from the July 16, 2010 Southern District of New York opinion:

[This] is essentially a contract dispute between an exclusive licensee and licensor over the right to use the trademark[s] at issue. The dispute should be determined by the principles of contract law, as it is the contract that defines the parties’ relationship and provides mechanisms to redress alleged breaches thereto. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. This is not a case of either the licensee or licensor attempting to protect a trademark from unscrupulous use in the marketplace by third parties. Rather, this case involves the alleged breach of a license agreement.

Is the Mother Court reading “unscrupulous” back into the Lanham Act?  That would be refreshing!

Now you can go Holmes again!

Watson and Holmes

Which one is Brozik? Is Coleman really that old?

“Knock, knock.”

 “Who’s there?”

  “Watson.”

   “Watson who?”

    “Not much. But there is this decision from the U.S. District Court for the Northern District of Illinois…”

It would be tempting, to be sure, to try to embellish a discussion of the recent Sherlock Holmes decision with Holmesian flourishes, but this blawger isn’t going to do that—even though the decision has recognized his—and yours, for that matter—freedom to use the “characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories”—or at least those published before 1923. That said, a simple recitation of the relevant facts is in order—a method Holmes himself might have employed—in a bulleted list (and Holmes would have been able to tell you whether I am left- or right-handed just by examining these bullets!):

  • Sir Arthur Conan Doyle wrote four novels and fifty-six short stories featuring the fictional characters Sherlock Holmes and his friend and chronicler Dr. John H. Watson.
  • The first story, “A Study in Scarlet,” was first published in 1887 (in the United States in 1890). Forty-five further stories and the four novels were published in the U.S. before January 1, 1923. All of these works are in the public domain.
  • The remaining ten stories, published after 1922, are still protected by copyright, owned by a company whose principals are relatives of Conan Doyle.
  • The plaintiff of Leslie S. Klinger v. Conan Doyle Estate, Ltd. is, among other things, an anthologist of new Sherlock Holmes stories. He co-edited an anthology of such works published by Random House, which had entered into a licensing agreement with Conan Doyle Estate, Ltd. to use the characters of Holmes and Watson, notwithstanding Klinger’s belief that no license was required by law. More recently, however, when Klinger sought to have a second anthology published by a different house—and Conan Doyle Estate, Ltd. again demanded that a licensing agreement be entered into (and threatened to pressure retailers not to sell the new book absent such a license)—the second publisher balked, prompting Klinger to sue Conan Doyle Estate, Ltd.
  • Klinger sued in the United States District Court for the Northern District of Illinois for a determination of the “copyright status of a list of specific characters, character traits, dialogue, settings, artifacts, and other story elements in the [Sherlock Holmes canon; the ‘Canon’].” After some procedural missteps—including a failure of Conan Doyle Estate, Ltd. to appear!—Klinger was permitted to move for summary judgment (which the Estate was permitted to oppose, despite its default). Read More…

Arnold Palmer and the Perfect Brand

[stextbox id="alert"]This post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.[/stextbox]

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand.

Arnie is very much alive, but his competitive golfing days are well behind him.  Yet he has made far more after the peak of his glory days than he ever did on the green.

The Arnold Palmer brand is built on a fame and stature that few people under 60 can appreciate.  It came into being during Arnie’s playing days, and far outstripped mere sports, as this 1967 Sports Illustrated article recounts:

The country produces superb athletes regularly, of course, and the 1960s have seen many of them—Jim Brown, John Unitas, Willie Mays, Sandy Koufax, Mickey Mantle—but none can rival Palmer. Not only has he reached a celebrity status enjoyed by few individuals in any field, he is the first athlete to become a walking million-dollar corporation in his prime. . . .

Arnold Palmer in his fashion primeBy Tuesday afternoon the filming is done. Arnold hurries to La Guardia and flies in his jet to Shawnee, Pa. to participate in the grand opening of a food-processing plant built by his father-in-law, Martin Walzer. He spends the night in Shawnee. The next morning he flies back to New York City, where he picks up four top business executives as part of his association with the U.S. Banknote Corporation. He flies them to Latrobe for a VIP day of golf, meals and drinks at Laurel Valley Golf Club. On Thursday he poses for photographs again, this time for the Bolens Division of FMC, for whom he endorses lawn equipment and snowplows. Two days in Latrobe follow, but on Sunday he is off once more, this time to Winchester, Ky., where he is made a Kentucky Colonel and an Admiral of the Kentucky Waterways. He plays an exhibition there and is back in Latrobe by nightfall. Monday and Tuesday are Arnold Palmer Enterprises days in Latrobe, as 14 executives from his various corporations fly in to consult, dine and play golf with the boss.

Meanwhile Tuesday has brought an unexpected problem. The State Department called both Arnold and me on a matter of some importance.
Read More…

Stand by me?

Originally posted 2012-05-24 17:14:10. Republished by Blog Post Promoter

Does anyone write a better lead sentence in trademark blogging than Pamela Chestek?:

International Importers v. International Spirits & Wines, LLC is, at bottom, a manufacturer-distributor dispute. It’s also a lesson in how not to handle trademark ownership.

Seated figure outside New York State Supreme Court 2

No, that's not standing. That's sitting.

And is anyone better at guiding us through the most tortured factual corporate histories in the process of teaching that lesson?  I don’t think so.  So no sense in my trying; read the post.  It’s a picnic of complicated licensing and corporate-legal missteps that would warm the cockles of IP litigators’ “hearts” (if we had any)  – and speeds them up a bit.

Here’s why.  The mess comes about in a fight over standing, prudential and otherwise.  Pretty technical stuff.  Here’s a part I was able to alight upon that seemed like just foothold enough for LIKELIHOOD OF CONFUSION®:

With that as background (phew!), International Importers sued International Spirits & Wines, LLC and “D’Aquino Group of Companies,” a non-existent legal entity, for infringement of the mark WALLABY CREEK based on the defendants’ importation and sale of the wine. Most notably, Fernbrew is one of the “D’Aquino Group of Companies.” So at the end of the day we have what is a common situation – the former distributor of a product claiming ownership of the trademark and bringing a trademark infringement claim against the manufacturer and the new distributor. But because of the joint ownership of the mark, what happens next is far from typical.

Looks like I chose well!  So?  Next:

Rather than sorting out the ownership under the usual manufacturer-distributor framework (alert – recursive link), the defendants challenged International Importers’ standing under Fed. R. Civ. P. 12(b)(1), on the theory that all co-owners must be joined, and under Fed. R. Civ. P. 12(b)(7) for failure to join a necessary and indispensable party under Rule 19, namely, the other owners of the trademark.

So does one owner have standing without joining the other owners?

The answer to this question sounds like something Rule 12 mavens should know.  Read the whole thing!  Seriously.  In this fight over spirits, there’s some dispiriting in there — for transactional and litigating IP lawyers alike.  I’ll take a double!

When an issue of first impression makes a bad one

Have you ever read a decision and just marveled at the apparent restraint of the judges? “Why don’t they tell this party to shut up?” you wonder. “Why don’t they sanction him, throw him in jail, and seize all of his assets, just for advancing such a ludicrous argument?” The August 20, 2013, decision of the United States Court of Appeals for the Second Circuit in Unclaimed Property Recovery Service, Inc. v. Kaplan is such a decision for me. I read it and thought some very uncharitable things about the plaintiffs-appellants. You might as well!

The plaintiffs-appellants are a company and its principal: UPRS, a business that locates unclaimed financial property and returns the property to its owners; UPRS is Bernard Gelb’s company. In 2006, UPRS and Gelb were two of several plaintiffs who filed a class action in the United States District Court for the Eastern District of New York (whence this lawsuit also). The class was represented by lawyer Norman Kaplan (of the town where this writer lives, though I don’t believe we have ever met), although Gelb did much of the legwork in preparing the class action complaint. Indeed, Gelb (not a lawyer) allegedly wrote the Amended Class Action Complaint  (what the appellate decision defines as the “First Complaint,” for reasons unclear) and compiled the 305 pages of accompanying exhibits (yes, the “First Exhibits”). Kaplan, as class counsel, signed and filed the First Complaint and First Exhibits on behalf of the class in May 2006. The district court dismissed the class action as time-barred, and Kaplan (timely) appealed on behalf of all class members.

Scratches his head.

Scratches his head.

While the appeal pended, Kaplan and Gelb fell out; Kaplan informed Gelb that he would no longer represent Gelb and UPRS. Gelb and UPRS retained new counsel. Three members of the class revoked the powers of attorney that they had given Gelb, keeping Kaplan as their attorney of record in the class action. New counsel for Gelb and UPRS moved to withdraw the pending appeal in its entirety; the Second Circuit granted the motion as to Gelb and UPRS but denied it as to the other appellants/class members. And soon after that decision was issued, “Gelb and UPRS obtained Certificates of Registration from the United States Register of Copyrights for the First Complaint and First Exhibits.” This is where you might want to scratch your head, if you weren’t already doing that.

You know what’s coming, of course. Read More…

Aereo (Part One): Angry Like (a) Fox

So: Aereo, right? Kind of a big deal. You might want to read about it. Maybe we should write something about it. Let’s work backward, though:

On April 8, News Corporation announced that it would consider taking Fox—the broadcast television channel—off the air if the service known as Aereo is permitted to continue doing what it’s been doing for a year to date. “Aereo is stealing our signal,” said News Corp’s president Chase Carey. “We believe in our legal rights. We’re going to pursue those legal rights fully and completely, and we believe we’ll prevail. But we want to be clear. If we can’t have our rights properly protected through legal and political avenues, we will pursue business solutions. One such business solution would be to take the network and turn it into a subscription service.” Ah, but no less considerable a legal authority than the United States Court of Appeals for the Second Circuit has determined that, more likely than not, Aereo is not doing anything illegal.

Matthew David Brozik

Dapper like a fox.

Unless you’ve been living in a cave—or simply outside New York City—you’ve maybe heard of Aereo, a subscription service that, essentially, enables a subscriber to watch broadcast programming on an Internet device—a computer, tablet, “phablet,” or smart phone. A subscriber has the option of watching a program at the same time that it airs—with a minor delay, to allow for buffering—or to “record” the program and watch it later. (There are noteworthy limits to the recording feature, but those are not germane to the legal issue, as it happens.) Aereo charges a subscriber somewhere between eight and twelve dollars per month for the service (reports differ) and currently provides the service only in New York City and parts of Connecticut, although the company has plans to expand its availability, eventually, to no less than the entire planet.

In March of 2012, two lawsuits sought to stop Aereo, Inc. from doing what it was then going to start doing on March 14. The plaintiffs of the two suits (commenced separately but treated together) are an intimidating consortium, to be sure: all of the broadcast networks in New York City (ABC, CBS, NBC, Fox, THIRTEEN, WNET, WPIX, PBS, Telemundo, Univision… and Disney, among a few other entities). The complaints asserted, principally, that Aereo’s scheme was a blatant infringement of the plaintiffs’ exclusive public performance right provided by Section 106(4) of the Copyright Act. The plaintiffs argued that the mechanics of Aereo’s system is a sham.

What Aereo does—and I’m simplifying here, some—is this: At a facility in Brooklyn, there is an array of dime-sized antennae. When an Aereo subscriber requests that a program be streamed to him or her over the Internet, the facility dynamically assigns an available antenna to that subscriber’s account, and tunes the antenna to the local broadcast station showing the program requested. Other equipment at the facility converts the broadcast signal to a digital stream, which Aereo then sends to the subscriber’s account. What’s important—what was important to the courts, at least—is that at any given moment, any one Aereo antenna is working for at most one subscriber.

So when the plaintiffs moved for a preliminary injunction on their common cause of action based on Section 106(4), Judge Alison Nathan of the United States District Court for the Southern District of New York denied the motion, finding that what Aereo does is not in fact a public broadcast, being that the digitized signal is sent only to a person, and a person is not the public. (Again, I’m simplifying.) Judge Nathan decided that the plaintiffs were unlikely to prevail upon the merits of their claim, ultimately (and that, while the plaintiffs had demonstrated a likelihood of suffering irreparable harm absent an injunction, an injunction would also likely destroy Aereo’s business… which gave Aereo the advantage there). This was on July 11, 2012. The plaintiffs filed their notices of appeal the following day.

As if the plaintiff roster in the two cases weren’t impressive enough, the amici dramatis personae is a Who’s Who of important institutions: the NBA, NFL, NHL, and MLB; Paramount Pictures, Warner Bros., the Directors Guild of America, SAG-AFTRA, the Writers Guild of America, MGM, et al.; ASCAP, BMI, SESAC, et al.; Ralph Oman, former Register of Copyrights of the United States—all in support of the plaintiffs-appellants—and entities including the Computer & Communications Industry Association, the Internet Association, Intellectual Property and Copyright Law Professors, and the Electronic Frontier Foundation, among others, all for Aereo. Even if you knew nothing about the case, you’d know from looking at just the list of people with opinions about it that it’s something big.

The appellate decision, issued on April 1, 2013, is long and dense and needs to be read more than once to be fully understood, but the upshot of it is that the District Court denial of the plaintiffs’ motion for a preliminary injunction (decision here) was held to be proper. (Judge Denny Chin dissented, but he was outnumbered two to one.) Judges Droney and Gleeson made a point of acknowledging that Aereo’s set-up seems evidently designed specifically to be legal, insofar as the law was lain down by the 2008 decision of the Second Circuit in Cartoon Network v. CSC Holdings (a case referred to as “Cablevision”). In that case, the court had ruled that Cablevision’s Remote Storage Digital Video Recorder (RS-DVR) did not infringe copyright holders’ reproduction and public performance rights. And the same analysis and conclusion now apply to Aereo’s setup. Attempts by the plaintiffs to distinguish Cablevision were not well received, as it were.

“Though presented as efforts to distinguish Cablevision,” the decision reads, “many of Plaintiffs’ arguments really urge us to overrule Cablevision. One panel of the Court, however… cannot overrule a prior decision of another panel…. Plaintiffs have provided us with no adequate basis to distinguish Cablevision from the Aereo system. We therefore see no error in the district court’s conclusion that Plaintiffs are unlikely to prevail on the merits.”

To be continued in Part Two…

The Licensing Law Blog

Originally posted 2010-03-25 18:38:15. Republished by Blog Post Promoter

My friend Richard Bergovoy has finally come in from the cold and, since January, has been publishing The Licensing Law Blog.

Richard’s smart, he’s funny, and he knows his stuff.  My choice of the day:  The creepy hand of the NCAA as it grips the neck of its means of production–student athletes–and the attempt to pry that grip off by a fellow who seems bound, for better or worse, to be remembered as the Curt Flood of college sports:

One of the foundations of that industry is that college athletes are required to sign documents that relinquish in perpetuity their rights of publicity for college sports-related purposes, as a condition of participating in NCAA-sponsored college athletics. That means the NCAA can, without compensation to the athletes, license their names and images for apparel, video games, broadcasts, and highlight DVDs, long after they have graduated from college.

Ed O’Bannon, a former basketball star at UCLA during the 1990s, said he got angry seeing his highlight clips from 15 years ago being used to promote NCAA broadcasts, so last July he filed a class action lawsuit against the NCAA and CLC in federal District Court in San Francisco on behalf of himself and other former student-athletes. . . .

[I]f O’Bannon wins, the NCAA, CLC, and many college athletic departments could take a large financial hit. They all derive substantial revenue from that $4 billion in licensing fees, but the O’Bannon plaintiffs would claim a major (as yet unspecified) chunk as compensation to former student-athletes whose rights of publicity were utilized in licensing deals. In fact, antitrust law allows victorious plaintiffs to triple their damages. And of course the former college athletes would have the right to cut their own licensing deals going forward, independent of the NCAA and their alma maters.

Furthermore, if O’Bannon wins, it is possible that current college athletes might utilize the rationale in any O’Bannon victory to attempt to weaken or throw out the current system of signing their rights of publicity over to the NCAA and CLC. For example, if the court were to rule the waivers were defective because the NCAA failed to advise students that they should seek legal counsel before signing away rights to future compensation for their intellectual property, then current athletes might argue they too should have the right to be represented by counsel in negotiating rights waivers during their college playing careers. Then star college athletes could get embroiled in contract negotiations, just like professional athletes.

Though somewhat drunker.  But, yeah.

Read Richard’s blog!

Jus good enough?

Originally posted 2010-06-04 13:13:32. Republished by Blog Post Promoter

Property, intangible:

“Jus tertii” – Wikipedia says Latin for “third party rights” – is a claim by a defendant that someone else has rights superior to the plaintiff’s that defeat the plaintiff’s claim.It’s generally a loser in a trademark case, because a trademark plaintiff need not have exclusive rights. . . .

There is an exception to the usual disfavor for a jus tertii defense, which is if the defendant can prove privity with the third party allowing it to claim some entitlement to the priority rights of the third party:

[I]f a third party permits a defendant to use a trademark as part of a contractual arrangement, the defendant can avoid liability for trademark infringement by invoking the superior trademark rights of the third party.

Pamela Chestek, now I can stand when you enter the room:  You’ve taught me something utterly, completely new I never knew before.

And you, readers, never knew there was such a thing I could admit that there was such a thing, did you?!

Gratuitous link to trademark case based on mark that sounds like a bad word

Originally posted 2007-10-03 15:52:38. Republished by Blog Post Promoter

What gets written on the Las Vegas Trademark Attorney blog just can’t resist not staying on the Las Vegas Trademark — well, you get it.

Here, I had to link to it. Because someone is going to ask people who read this blog if they’ve heard about this case. And I owe it to you….

… the reader ….

to keep you up to date on these things. Without actually writing out bad-sounding trademarks on my own site of course.

See you after the Jewish holiday. And, yes, we’ll be eating chicken. Generic (but delicious!) chicken.

UPDATE:  More on dirty trademarks from two of my favorite trademark opinionators here.  But I am dropping this “beat” from LIKELIHOOD OF CONFUSION effective immediately.  As the title of this post indicates, part of the purpose of these registrations is to utilize childish vulgarity or scatological language as a lever for brand development.  I’m sure it’s a great strategy, but LIKELIHOOD OF CONFUSION isn’t going to be a part of it any more.

“Dear Licensor”

Dear John Letter

used with permission of Casey Berry

Talk about “Dear John” letters!  In the June issue of Royaltie$ magazine, Oliver Herzfeld (of Beanstalk) and Richard Bergovoy (of the Licensing Law Blog) sure know how to grab your attention, if you license trademarks or just love someone who does:

An envelope arrives from bankruptcy court. You open it and realize with shock that one of your trademark licensees has filed a bankruptcy petition and listed you as a creditor. Over the past two years, this has become an increasingly common occurance.

Beanstalk's Oliver Herzfeld

Oliver Herzfeld (we only have one picture!)

It’s going to be all right, though!

But from a trademark licensor’s point of view, a licensee entering bankruptcy is not always the disaster it might appear to be.  This two-part article—the next article will be in the August issue—will provide an overview of the main issues faced and decisions to be made by a trademark licensor whose licensee has filed for bankruptcy.

Whew.

They tried to make me a bankruptcy lawyer once.  Don’t get me started!  But this is something I can glom.  Onto.

You can download the first part of Handling Trademark Licensees in Bankruptcy here (permission obtained, of course).  For the second part, you’ll have to wait until August like everyone else.