Monday, June 22, 2009

Pam Chestek Ponders the Transfer of Common Law Trademarks under State Law

At her Property, intangible blog, Pam Chestek reports (here) on an "uh-oh moment" involving transfer of common law trademark rights. The TTAB case, she observes, involves a "fairly routine examination of a petitioner's first use date to determine who is senior user of the mark. The 'uh oh' is a theory that the mark, when transferred from the sole proprietor to a corporate entity he formed, wasn't properly transferred under state trademark law." Terra Sul Corporation A/K/A Churrascaria Boi Na Brasa v. Boi Na Braza, Inc., Cancellation No. 92047056 (June 12, 2009) [not precedential].

The Board granted the Section 2(d) petition for cancellation based on prior use and likely confusion, but it side-stepped the question of whether the New Jersey statute -- which states that assignments must be in writing and recorded -- applies to common law marks. Pam points out that the statutory language in question is based on the Model State Trademark Bill ("Assignment shall be by instruments in writing duly executed and may be recorded") and that similar language appears in the law of 37 states. [emphasis supplied].

Text Copyright John L. Welch 2009.


At 7:21 PM, Anonymous Pam Chestek said...

Thanks for the link. Just to clarify, too, the New Jersey statute (the one in the case) says "Assignment shall be by instruments in writing duly executed and shall be recorded with the Secretary of State upon the payment of the recording fee . . ." After looking at the model statute and the various state iterations, I decided the better reading of the phrase "shall be recorded" is that the governmental agency is obliged to record the assignment when paid, not that the assignment is only effective if recorded. Or let's hope so; if not we have "uh oh" squared.


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