Text of MTM v Amazon


WTR: Managing the Trademark Asset Lifecycle

WTR Managing The Trademark Asset Lifecycle 2015


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.


Purchaser of a Volkswagen Sues Under 43(a)(1)(B)

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.

SDNY CM/ECF Version 5.1.1-SDNY CM/ECF Version 5.1.1.


Al Fross

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.


Engine Co. 3, Ladder Co. 12

engine 3 ladder 12

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.


Personal Jurisdiction: D. Kansas

Plaintiff terminates Asian distributor.  Asian distributor allegedly hires Texas defendant to manufacture counterfeits.  No general or specific jurisdiction over Texas manufacturer in Kansas.

BG PRODUCTS, INC. v. STINGER CHEMICAL, LLC, Dist. Court, D. Kansas 2015 – Google Scholar.


RCA v. VOXX – Failure to Plead Public Injury Under NY GBL 349 and 350

SDNY: Counterclaim under NY GBL sections 349 and 350 failed to plead necessary ‘public injury’ caused by plaintiff’s alleged sales of counterfeits.



I Will Be Speaking on IP Protection of 3D Shapes at AIPLA Oct. 22 in DC

Page 10 of the brochure: “What type of IP Do I Need? How to Figure Out How Best to Protect 3D Creations

AIPLA October brochure.


POKEMON copyright suit – collect them all!

Copyright: Unauthorized use of POKEMON characters on apparel.  WD Wash.  A little tarnishment there as well (Jiggly Puff on the pipe).



Ashland, Inc. (VALVOLINE) v. Randolph, SD West Virginia 2015

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.

Ashland, Inc. v. Randolph, Dist. Court, SD West Virginia 2015 – Google Scholar.