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The trouble with sharing trade marks

Can a trade mark have more than one owner? In rare circumstances, the answer has been yes — but it is even more exceptional for both parties to be happy with the arrangement

That was the view of one panelist at an AIPLA Annual Meeting session entitled “TTAB Rules Quiz.”

Keith Weltsch, a partner of Scully Scott Murphy & Presser, said co-ownership of a mark can be fraught with legal pitfalls. The situation can sometimes result in one party losing rights to the mark if the terms of the arrangement are not carefully defined.

The question was one of many addressed during yesterday’s session, in which competing teams took part in a game show-style quiz for the chance to win an iPad and heard presentations on trade mark-related subjects.

Trade marks can be either separately or jointly owned by multiple parties. Cases where the mark is owned separately sometimes occur when there is a clear geographic split between two businesses operating in good faith under the same mark.

For example, in Pinocchio’s Pizza v. Sandra, the court allowed a small business to use Pinocchio’s as a service mark for restaurants in Maryland and another company to simultaneously use it for restaurants elsewhere in the U.S.

Disputes sometimes occur in the music industry, for example, when a band splits and its members make competing claims to the trade mark rights in the name of the group. Weltsch pointed to the rock and roll act The Platters as a “cautionary tale.”

Members of the group, which was popular in the 1950s and the 1960s, were embroiled in a series of legal battles spanning decades over the rights to the name The Platters.

However, there have been other cases in which two parties have successfully shared ownership of a mark. In Illinois High School Association v. GTE Vantage, both the Illinois High School Association and the NCAA claimed rights to the mark March Madness. The Court of Appeals for the Seventh Circuit declared the phrase a “dual use trademark”, granting both parties the right to trade mark it.

Following the ruling, the parties jointly created the March Madness Athletic Association and both assigned their rights to this new entity. In return, each received a licence to use the term in relation to their basketball tournaments.

However, trade mark owners must clearly define terms when agreeing on joint ownership.

“It is never appropriate to let a third party use a mark without very strict controls on the nature of the usage,” said Weltsch. “It is imperative to set out a detailed agreement.”

Quiz: TTAB Rules

Test your knowledge of TTAB rules with this selection of questions from the TTAB Rules Quiz Show. Answers below.

If you ask that the TTAB participate in a discovery conference, who will you have on the call?

a) A TTAB paralegal

b) A TTAB interlocutory attorney

c) A TTAB judge

Which of the following should you always do when filing papers in the TTAB?

a) If filing by ESTTA, also file a courtesy copy by overnight mail

b) If filing by mail, be sure to bind large documents so they do not get separated

c) Use side tabs or bottom tabs when filing an affidavit with exhibits

d) All of the above

e) None of the above

True or false: If the TTAB issues an adverse decision, an applicant may file an appeal to a US district court, and new evidence not in the Board’s record may not be introduced into that civil proceeding.

Download the AIPLA Daily Report, published by Managing IP from Washington, DC from our conference newspapers page for the answers

Answers: B, E, False

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