Friday, December 16, 2016

Falsely claiming TM ownership isn't false advertising, court rules

Dille Family Trust v. Nowlan Family Trust, No. 15-6231, 2016 WL 7202073 (E.D. Pa. Apr. 21, 2016)

There’s a pattern in the ED Pa where they put all the legal analysis in a big footnote in the order granting a motion to dismiss.  I don’t know why.

Anyhow, Dille alleged Lanham Act violations including false designation of origin and false advertising, relating to claims over who owned the “Buck Rogers” trademark.  Intangible property rights, such as trademark rights, are not “goods or services” for Lanham Act purposes, and this is consistent with Dastar

Nowlan made allegedly false statements about the ownership of the Buck Rogers mark, but never produced any products or granted any licenses.  Thus, there was no false designation of origin claim or false advertising claim.  Note: the latter conclusion ignores the quite relevant phrase “commercial activities” in §43(a)(1)(B), as well as Dastar’s explicit reservation of false advertising claims, though there’s nothing new about the latter.  Anyway, the court found that Nowlan’s letters contained “nothing more than statements asserting Defendant’s legal rights,” and thus couldn’t be commercial advertising or promotion.

Also, the claim for trademark cancellation for lack of bona fide intent to use wasn’t sufficiently fleshed out, and appeared contradicted by the allegations of the complaint that Nowlan was offering to license other parties.  [Would that be a naked license?]

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