Stating that it “will not presume the creation of jointly owned or non-exclusively licensed trademark rights,” the Sixth Circuit Court of Appeals recently held that an individual defendant and his company did not retain any ownership rights in an unregistered trademark his company had acquired in an asset sale and then transferred in another asset sale. [See Yellowbook Inc. v. Brandeberry, No. 11-4267 (6th Cir. Feb. 27, 2013).] The Sixth Circuit reversed the district court’s finding of no trademark infringement and remanded the case to the district court to enter appropriate injunctive relief and determine damages for trademark infringement.
The Sixth Circuit’s holding reinforces the importance of:
- Identifying all the trademark rights being purchased and by whom in a purchase agreement
- Purchasing the goodwill associated with the trademark rights being purchased
- Researching the chain of title of the trademarks being purchased and potential claims of ownership of those marks
It also illustrates why it is recommended that businesses register their trademarks with the U.S. Patent and Trademark Office and/or at the state level to secure a presumption of ownership of a mark.…