Trademark lawyer los angeles

Why is it important for a trademark assignment to be handled properly?

How to Reduce the Risk of Engaging in an Illegal Trademark Assignment

Owning a trademark is widely viewed as one of the most valuable and important assets for any business. Hence, it is so important not to be cavalier about engaging in a trademark assignment. When a business owner mishandles or violates the law while engaging in a trademark assignment, it could completely negate the enforceability of the trademark, thereby torpedoing its value.

When an illegal trademark assignment occurs, it is typically the product of carelessness and neglect, or it could very well be deemed an assignment-in-gross.

What is an Assignment-in-Gross?

An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets. When a business owner commits an assignment-in-gross, the ramifications are severe since a court could invalidate the assignment and would result in the trademark being deemed abandoned. As a result, both parties (i.e. the owner of the mark and party attempting to secure the mark) will lose any rights to the trademark.

To prevent such circumstances, an assignment must include (i) other related business assets and (ii) must be completed with genuine goodwill.

Assets that are deemed eligible to accompany a trademark assignment include:

• Company shares;
• Trade secrets; and/or
• Management or other financial assets

Analyzing whether a trademark assignment was completed with genuine goodwill can be extremely difficult to measure. Courts tackle this issue by using the “substantial similarity” test. This test assesses both the quality and description of the goods and/or services prior to, and after, the transfer of the trademark.

When a business owner attempts to simply assign their trademark without any accompanying business assets or without sufficient evidence of genuine goodwill, it is a violation of federal law since a trademark, in and of itself, does not possess actual value. When a trademark transfer occurs without meeting the two-part standard described above, it is an illegal trademark transfer under the Lanham Trademark Act, which is codified under 15 U.S.C. § 1060.

Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

Can a landlord be held liable for trademark infringement?

Landlord May be Held Liable for Trademark Infringement

If you are a landlord renting a property to a tenant who is found to be selling counterfeit goods, you may be held liable for trademark infringement. However, a landlord can only be held liable if there is evidence that the landlord had actual knowledge that the tenant was engaged in infringing acts, or they were willfully negligent to the infringing activities.

Court Decision in Eleventh Circuit Highlights Landlord Liability

An actual case of a landlord being held liable for a tenant’s trademark infringing activities can be found in Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019). In this case, a subsidiary corporation Oakley, Inc. and its parent company Luxottica Group filed a civil lawsuit against the owners of a shopping mall in Georgia. The basis for the lawsuit was alleging the shopping mall owners were liable based on contributory trademark infringement under a federal law known as the Lanham Act.

The infringing activities involved high-end luxury sunglasses. The lawsuit alleged that Luxottica and Oakley, Inc. sold luxury sunglasses using Ray-Ban and Oakley trademarks.  The owners of the shopping mall also managed the interior of the mall and were the landlords for businesses within the mall. The lawsuit revealed that the shopping mall owners were aware of three separate raids by law enforcement officials of businesses within the mall that were actively selling counterfeit sunglasses.

The shopping mall owners reportedly gained actual knowledge of the infringing activities since they received copies of search warrants from law enforcement and knew which businesses were the focus of the raids. In addition, there is evidence of correspondence sent from Luxottica to the shopping mall owners informing them that some of their subtenants were engaged in selling counterfeit sunglasses that infringed upon the trademarks owned by Ray-Ban and Oakley.

Another key factor is that the shopping mall owners apparently failed to take any action to remedy or halt the subtenants from engaging in the sale of counterfeit products within their property. For example, the shopping mall owners never even attempted to evict the subtenants or terminate their leases.

The lawsuit went to trial and a jury found the shopping mall owners liable for contributory trademark infringement. The jury awarded $1.9 million in damages to Luxottica as a result. The shopping mall owners appealed the jury verdict. Nevertheless, the Eleventh Circuit Court of Appeals affirmed the nearly-two-million-dollar jury verdict.

The Lanham Act

The Lanham Act is a federal law that establishes a defendant can be held liable for contributory infringement when the defendant induces or knowingly facilitates the trademark infringement.

In order to establish contributory trademark infringement under the Lanham Act, a plaintiff bears the burden of establishing the following during a lawsuit:

• There was direct trademark infringement by someone; and
• A defendant intentionally induces the infringer, or supplied a product to the infringer, with either actual knowledge or constructive knowledge of the infringing acts.

If you are wondering, “what is constructive knowledge? Well, a prime example is willful blindness, which occurs when a defendant suspects a wrongful act but deliberately fails to investigate the act.

Have Questions About How to Protect Your Trademark? Contact the Highly Reputable Trademark Lawyer in Los Angeles

If you have a trademark that you suspect is being infringed, or you want to ensure proper protection, the trademark lawyers at Omni Legal Group is here to help. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

Why is a trademark licensing agreement important for your business?

Helpful Tips for Drafting a Licensing Agreement

When you register a trademark for your business, there is a crucial next step you need to be prepared to address – licensing the rights to that trademark so other individuals and companies collaborating with you to manufacture or sell your product featuring that mark are legally compliant. It is important to understand the impact of a trademark license agreement. If this agreement is detailed and well-crafted, it can play a big role in determining how much you, the owner of the trademark, will benefit financially from the commercial success of the product. A trademark license agreement will also help in protecting both your registered trademark and the resources you invested into building goodwill and a positive affiliation with the consuming public.

To help ensure your trademark licensing agreement is valid and detailed, here are some helpful tips to consider when drafting a licensing agreement.

No. 1 – Clearly Establish the Licensee Requirements

In a trademark license agreement, you, the owner of the registered trademark, are known as the licensor. The party that pays you money in exchange for the right to market or manufacture products bearing your trademark is known as the licensee. In the trademark license agreement, you should be as specific as possible about what trademark rights you are licensing and what the licensee is and is not allowed to do with your trademark. If, for example, you own the trademark to a children’s character, and you want to preserve their child-friendly image, say so. Don’t want your trademark adorning beer bottles? Specify this in the agreement. Don’t want your character hawking weight loss supplements? Put it in writing.

No. 2 – Ensure All Key Pieces of Information are Included in the Agreement

Relying on a cookie-cutter printout of a license agreement you found online, or hastily drafting an agreement, is often a recipe for disaster and heightens the risk that vitally important pieces of information are not included in the final agreement. Do not make this mistake. You need to ensure the license agreement clearly addresses the following issues:

• Who owns any new intellectual property that the licensee creates incorporating your trademark;
• The geographic region where the licensee may sell the licensed products; and
• Which state will have jurisdiction to decide legal disputes that may arise from the trademark license agreement (this is often referred to as a “choice of law” provision).

No. 3 – Be Transparent About Duration of the Agreement and the Timetable for Payments

Mistakes and oversights regarding the duration and payment terms in a trademark licensing agreement can lead to costly disputes and glaring loopholes. Hence, it is imperative to not gloss over these sections of the agreement or merely state, in broad terms, how long the agreement lasts. You need to provide specific details about what happens at the end of the established license period. For example, you should address what happens if the parties take no further action. Does the licensing agreement automatically terminate, or does it automatically renew? Likewise, does the licensee pay a fixed amount or a share of their sales? Do they pay a lump sum at the beginning of the contract period, or do they pay you in monthly or quarterly installments? These are critically important questions and issues that need to be fully fleshed out in the licensing agreement.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

It is extremely important to draft a detailed, airtight trademark license agreement to help safeguard your financial and brand interests, as well as the interests of the licensee, or licensees. Hence, it is in your best interest to retain the services of a skilled and knowledgeable trademark lawyer in Los Angeles such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles, California. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.