When the former employee of a European organic foods startup used the company’s trademarks, she was sued for violating trademark law. After moving to Oregon in order to establish the US branch of the startup, the manager decided to found her own business on the side and utilize her employer’s trademark. In her attempt to establish her own GMO-free farming business in Portland, the manager retained a law firm to aid her in transferring the trademark from her previous employer to her new venture, and did not ask the permission of the Slovakian startup. After a suit was filed against the manager, a trademark attorney was required to review the case and determine what duty the defendant law firms had to obtain the express approval of the owner of the trademark before conducting a transfer.
Question(s) For Expert Witness
- 1. Please briefly describe your experience working with trademarks.
- 2. Generally, is it necessary to identify and gain the approval of the owner of a trademark before engaging in a transfer?
Expert Witness Response E-075277
This doesn’t seem like too complex of an issue; you can’t transfer any type of property, including trademarks, without the owner’s permission. I’ve written book chapters on IP expert witnesses and have hired numerous experts in the past, so I’m very familiar with the process, and have spent more than half of my legal career working in trademark litigation. I am still actively practicing and litigating trademark suits, in addition to my professorship, publishing, and lecturing responsibilities.
Expert Witness Response E-075731
On the transaction side, I’ve helped my clients secure over fifty trademark registrations in the last nine years of my practice, and and also facilitated transfers in ownership of federally registered marks. On the litigation side, I’ve prosecuted and defended various intellectual property claims under the Lanham Act. I would be able to help explain the considerations typically taken by a trademark attorney when transferring a trademark or filing another application for an existing mark, whether registered or in a common law scenario.