I over-work the cliché: “that which goes without saying, often goes without doing.” When we give advice to our clients, it goes without saying that each recommendation should be preceded by: “if it makes economic sense to do so.” So often we forget to consider whether we should, for example, be paying $2 to protect $1.
Sometimes the outside lawyer doesn’t need to know the economics behind a deal in order to craft advice. However, how could knowing the underlying economics of a trademark ever be a bad thing? If for no other reason, understanding the value of the asset in question (hopefully) puts outside counsel on the same wavelength as the client.
World Trademark Review is presenting a conference on “Managing the Trademark Asset Lifecycle” in New York, on October 29, 2015.
The program covers brand creation, valuation, taxation, securitization and licensing. The full program is here.
The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.
WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.
Hope to see you there.
Benjamin Austin v Volkswagen Group, et. al., 15-cv-7806 (here in beautiful White Plains). Purchaser of a Volkswagen sues under 43(a)(1)(B) (false advertising) relating to the ‘diesel’ scandal. Thing is: even under Lexmark, there likely isn’t standing.
I wrote this on the day Al Fross died, September 11, 2012. I re-post it every year. Every year someone who had known Al sees the piece, and writes me to share a memory or two.
I thought I was going to write about 9/11 today but that has turned out not to be the case. This morning I received an email from a colleague with the subject “Al Fross.” Al has had cancer for four years now, so I knew my colleague was writing to tell me Al had died.
Simply put, Al Fross was the best trademark lawyer ever. Don’t take my word for it, ask the clients he counseled at Hanna-Barbera, CalTex, Tiffany, Seagrams, the Muppets and others. After Al had obtained for Tiffany a victory in the highest court in Singapore (and made new law doing so), Tiffany presented him with an engraved silver box reading “To the Tiffany of Trademark Lawyers.”
When I had been at what was then Weiss Dawid (now Fross Zelnick) for about two weeks, I was given a big assignment from Al, involving Inter-American trademark treaties, Central American trademark treaties, Pan American trademark treaties, and something called the Andean Pact, none of which I could keep straight. But I gave it a shot and handed him a memo. I sat on the other side of his oddly shaped desk while he read it.
“You’re wrong” he shouted. “But you’re wrong in a really interesting way, and that’s why I’m excited to be working with you.”
That is how you encourage someone to stick with something.
I went on to train with him for ten years. Every day produced something worth remembering forever, souvenirs from a career. Most importantly, Al was a role model – he always took the high road. His long successful career refutes any notion that ethical compromise is necessary to make it as a lawyer.
Al Fross taught me everything I know about trademark law. There wasn’t enough time for him to teach me everything he knew.
When we lived in Chelsea, our local firehouse was Engine Co. 3, Ladder Co. 12. They would send firemen to visit our kids’ preschool. When we took the kids by in the stroller, the firemen would let the kids climb on the firetrucks.
On 9/11, Engine Co. 3, Ladder Co. 12 lost five men.
Some people run from burning buildings and some people run towards them.
Plaintiff terminates Asian distributor. Asian distributor allegedly hires Texas defendant to manufacture counterfeits. No general or specific jurisdiction over Texas manufacturer in Kansas.
SDNY: Counterclaim under NY GBL sections 349 and 350 failed to plead necessary ‘public injury’ caused by plaintiff’s alleged sales of counterfeits.
Page 10 of the brochure: “What type of IP Do I Need? How to Figure Out How Best to Protect 3D Creations
Copyright: Unauthorized use of POKEMON characters on apparel. WD Wash. A little tarnishment there as well (Jiggly Puff on the pipe).
Unauthorized distributor of VALVOLINE products somewhat slow in complying with court-ordered injunctive relief. Bonus fact: testing labs can distinguish between VALVOLINE and non-VALVOLINE oil.
Juan Pollo Franchising v. B&K Pollo, CD Cal. After bench trial, the Court notes:
Plaintiff Juan Pollo Franchising has not shown that it owns the Juan Pollo Marks. Plaintiff Juan Pollo Franchising is the corporation that Okura established in 2011; but this corporation as an entity is entirely separate from Albert Okura the individual or Juan Pollo Inc., the corporation Okura formed in 1984. At trial, Okura testified that either he or Juan Pollo Inc. are the registered owners of the Juan Pollo Marks and that those marks have never been assigned to anyone else. (Transcript at 26-27, 34, 45-46.) Plaintiff Juan Pollo Franchising has not provided evidence that the Juan Pollo Marks were ever assigned to it. As such, the only evidence presented at trial as to the ownership of the Juan Pollo marks tended to demonstrate that either Okura or Juan Pollo Inc. owns the marks in question.
Now, I was ready to write some sort of ‘practice pointer’ to the effect that when you’re swapping ownership around related entities, you really do have to attend to the paperwork – draft the assignment and record the assignment.
But then I looked at the registrations, and I see that Reg 4006025 for JUAN POLLO THE BEST TASTING CHICKEN and 26666886 for JUAN POLLO were in fact assigned from Okura to Juan Pollo Franchising, Inc. in 2013.
There was post-trial briefing, so there may have been the opportunity to point out that Okura misspoke with regard to the existence of a recorded assignment.
So this is odd.