How to Sell a Trademark and Avoiding Infringement [e119]

November 17, 2014

Nasir and Matt start the week by discussing Ohio State University suing a t-shirt company for trademark infringement and unfair competition after t-shirts were sold with school names, logos, and slogans. They then answer, “Many years ago we bought up a bunch of trademarks for potential names for new product lines. Someone approached us to buy one we didn’t use. Is it possible to sell the trademark?”

Full Podcast Transcript

NASIR: All right, welcome to our podcast where we cover business in the news and answer some of your business legal questions that you, the listener, can send in to ask@legallysoundsmartbusiness.com.
And my name is Nasir Pasha, and I am the host of Legally Sound Smart Business. And, joined with me as a co-host for the second time, I believe…

MATT: I guess that’s me – Matt Staub. I thought I was going to be a featured player this week, but that’s all right; co-host is fine.

NASIR: No, you are now a co-host. It’s the second episode that you’ve been a co-host.

MATT: Well, this is exciting.

NASIR: Not really, but second, yeah. So, it’s 117 episodes of you being a guest, and now you’re an official co-host.

MATT: Well, I don’t know who to thank. Glad to be here!

NASIR: Thank the people. Thank the people.

MATT: It would be interesting if you had a different co-host every single time.

NASIR: I know; I wish I did.

MATT: Ah, that kind of hurts.

NASIR: I didn’t mean any offense for you. I just, in general, think it would be a good idea to not have you on.

MATT: Fair enough. Well, speaking of not liking things, we’re going to talk about a place I don’t like to leave this off and that’s, as they like to call it, the Ohio State University.

NASIR: The Ohio State University.

MATT: Which you’re familiar with.

NASIR: Yeah, I almost went there for my undergrad.

MATT: Oh, you did?

NASIR: Okay, yeah.

MATT: I did not because I don’t like Ohio State but how close were you to Columbus?

NASIR: About an hour west.

MATT: Okay. So, yeah, I imagine everyone there is a huge Ohio State fan.

NASIR: Most definitely. But, for some reason, there are a lot of people from Michigan, too. So, it’s like, whenever you went to those big games at someone’s house, there’d be, like, a third of the people wearing yellow.

MATT: It’s actually “maize” is the color but it’s all right. We’ll let that slide.

NASIR: Maize?

MATT: Yeah, their color’s officially maize – some sort of navy blue and maize. But, yeah, that’s the color of their yellow. Anyways…

NASIR: That’s amazing. Hey!

MATT: All right, that’s good. So, we’re talking about Ohio State in a battle with an online t-shirt company. The title is pretty creative – “Ohio State tries to buck online t-shirt company.” They’re they Buckeyes.

NASIR: I got that.

MATT: I like a good Monday morning pun.
So, I’m sure this happens with a lot of universities but this one’s a little bit different. It’s online so it’s not like it’s somewhere that’s on the campus or in Columbus necessarily, I guess. So, the company is Teespring Inc. and basically Ohio State says they’re using unlicensed versions of Ohio State’s trademarks, logos, buckeye leaves, pictures of Urban Meyer who is their football coach, the chant they have, and I guess this business is doing well.
Another thing too is Ohio State’s definitely known for being one of the bigger following, huge stadium. They obviously make a ton of money so they probably make a significant amount of money on that as well so I can see why they’re a little bit upset.

NASIR: Yeah. It’s one of the biggest campuses, for sure. I mean, I’ve been there. It’s huge. It’s like its own city within Columbus.

MATT: Yeah.

NASIR: Well, you’ve heard of Teespring, right? I mean, there’s these other companies out there, too. But, basically, it’s a t-shirt printing company where you literally upload your art then you can sell it to other people and then Teespring gets a percentage of it. And so, it’s a good way to raise money for non-profits. You can do that or just do it as a profit and so forth. And then, of course, you know, when you upload your images, you’re also – just like going to Kinko’s which is now a FedEx business or whatever – you can’t make copies of copyright but FedEx isn’t necessarily responsible for that unless they’re taking part and contributory to the actual printing.
So, that’s the question here; that Ohio State has been sending letters to Teespring and requests for certain products to be taken down and this happened a couple of years ago. And then, Teespring was engaged in quite a bit of a process to make sure that any images that do contain Ohio State-related material or whatever that may be infringement that they take it down as soon as possible. But Ohio State is saying they’re not doing a good enough job of it. There’s a lot of these that are still going through.

MATT: If it’s something that’s still infringing then they probably aren’t doing a good enough job. It’s not even putting something that you’d have to license; it’s illegal and inappropriate things submitted on t-shirts which you obviously don’t want.

NASIR: Yeah. So, I’m not sure where this is going to go, but Ohio State is basically saying that somehow Teespring is contributing to the actual infringement. Of course, Teespring says, “How can we actually be contributing to that when we’re actually trying to take this stuff down?”

MATT: Yeah.

NASIR: Really, you can compare it to, I mentioned Kinko’s earlier, there’s actually a case that is pretty seminal to this particular issue in the sense that it was a case that protected Kinko’s from liability for students that were actually using the copy machines to copy whatever textbooks or whatever – because, you know, those things are so expensive – and actually protected Kinko’s from doing so. After that time though, however – and I can’t remember the exact holding to that, but I do know that – Kinko’s and other printing companies started making sure that anything that’s being copied, that the person who’s doing so signs that they are the rightful owner of the copyright or they have permission to actually copy or if it’s under some sort of fair use. I’m talking about when you actually bring in a book that needs to be copied and so forth. Sometimes, they just won’t do it out of precaution. In the same way, when this is something where you just upload, they seem to have some kind of filter and some kind of method of doing so. But, beyond that, to what extent are they supposed to prevent this from happening?

MATT: Yeah, and Ohio State’s asking for obviously a permanent injunction, stopping them from doing this and then they’re estimating lost profits of about $1 million per counterfeit item sold which seems high but…

NASIR: That doesn’t even make sense. Per counterfeit item? Like, that is so weird.

MATT: That seems high.

NASIR: That’s a weird calculation. Maybe, like, $1 million in general, but to make it per item? That seems strange.

MATT: Yeah, and I would guess that Teespring is not going to enter into any sort of licensing agreement with them.

NASIR: Yeah.

MATT: I would just think they would remove it and if someone that’s specifically looking for Ohio State licensed material and just deny it.

NASIR: But the problem with that then it’s almost created a precedent. Now, they have to hire somebody to look at every single image to see if it infringes on anyone, and the problem with that is that there’s unlimited number of trademarks and unlimited number of images and so forth that could be infringed upon. And so, unless the laws against this type of business model in the first place, you know, which I don’t think it is, then I think it’s too cumbersome to put that kind of liability on the actual printers when the person who’s uploading the images is in the best position to prevent it. And so, if Ohio State cares about it, they should be going after those individuals. I think they mentioned that. They have a “terms of service” that provides that very clearly that they can’t push infringed material on the website. The reality is that they know that wouldn’t be very popular and it’s not very effective to go to each individual that’s actually uploading these images so they’re just going through where it’s going to hurt the most. And there’s other companies; Teespring is not the only one that does this so I’m sure Ohio State has other companies in their target as well.

MATT: Well, they did have a big win last week so I was kind of upset about that.

NASIR: Against who?

MATT: Michigan State. It’s like the top two teams in the big ten. Ohio State had a terrible loss at the beginning of the year and now have been pretty lights out since. So, let’s see what happens. Might make that new 14 playoff that’s starting this year.

NASIR: I have no idea what you’re talking about.
[MUSIC]

MATT: Question of the day.
“Many years ago, we bought up a bunch of names for new product lines. Someone approached us to buy one we didn’t use. Is it possible to sell the trademark?”

NASIR: Yes, it is.

MATT: It comes from Ohio State.

NASIR: Does it? Really? No. I thought, oh, I know what you mean, yeah.
Yeah, it’s possible to sell or assign the trademark. The only thing with that is, to make it effective, the question is whether or not the trademark with its goodwill is being sold, and goodwill is kind of the – how do I explain goodwill, Matt?

MATT: It’s the store where you can donate stuff and then, like, people can go and sell it and get it for cheaper, eh?

NASIR: Yeah, goodwill is very similar to a thrift store.

MATT: It’s like an intangible asset, basically. I guess it’s like a business’ reputation.

NASIR: Yeah, actually, I just looked it up and I should know this off the top of my head but, just to be able to describe it perfectly, it’s the established reputation of a business regarded as a quantifiable asset. In other words, if you’re just selling the name itself and not what it’s associated with, then it may not be an effective assignment and so, therefore, not effective. And so, they call those “assignment in gross” where, you know, it’s made without the company’s goodwill and those are completely invalid in the US courts and they’ve analyzed whether an assignment was made in gross in different ways by taking into consideration the trademark, whether it’s protecting customers from deception and confusion is the primary motivation behind the actual assignment. So, those are some things to consider but, as far as the legality of actually selling it, that’s one thing. But one thing I noticed that he/she has said, “I bought a bunch of trademarks for potential names for new product lines. Someone approached us to buy one we didn’t use.” So, there’s also a question of whether or not you actually have an enforceable trademark because there is something called “abandonment of a trademark” and, if you don’t use it, you lose it – I believe that’s the common term. So, if you stop using it, especially with no intention to use it again, then you are basically abandoning the trademark. And so, this is often how sometimes these trademark rights are unintentionally lost, right? So, often, when you file a trademark, you have to choose whether you’re going to be using it now or you intend to use it later and those are different types of filings. And so, if you file something that you’re actually using then you do have to actually use it in the marketplace. But, once you stop and you stop intending to use it, then someone can easily grab it and basically allege that you abandoned it. And so, assigning a trademark that you’ve possibly already abandoned, it may be effective, but not if the trademark’s not valid anymore. So, that’s more of a consideration from the buyer’s perspective, I suppose.

MATT: Yeah, I was just going to tell them to license it out and then you can keep it and make money.

NASIR: Yeah, that’s a good idea, too, for sure. But, see, again, you still have to make sure you actually have an enforceable trademark. I would just start using it again just to make sure and then sell it. All right.
Okay, thanks guys. Thanks for joining us.

MATT: Keep it sound and keep it smart.

Protecting Brand Law Page

By

The Podcast Where Nasir Pasha and Matt Staub cover business in the news with their legal twist and answer business legal questions that you the listener can send it to info@legallysoundsmartbusiness.com.

Get Business Legal Updates

Please provide your full name.
Please provide a valid email address.
We respect your privacy, and we will never share your information. Unsubscribe at any time.
Legally Sound Smart Business cover art

Legally Sound Smart Business

A business podcast with a legal twist

Legally Sound Smart Business is a podcast by Pasha Law PC covering different topics in business advice and news with a legal twist with attorneys Nasir Pasha and Matt Staub.
Apple Podcast badge
Google Podcast badge
Spotify Podcast badge

Latest Episodes

November 21, 2023

In this episode, Nasir Pasha and Matt Staub explore the legal implications of Artificial Intelligence in the business world. They delve into the most talked-about issue of 2023: AI and its impact on the legal landscape. Although AI isn’t necessarily a new topic, it has many unanswered questions in the legal world. Nasir and Matt…

July 12, 2023

In this episode, Attorney Nasir Pasha and Attorney Matt Staub delve deep into the complexities of mass layoffs and offer valuable insights, real-life examples, and practical advice to employers grappling with the aftermath of such challenging situations. Nasir and Matt emphasize the critical importance of effective communication when executing mass layoffs. They stress the need…

January 9, 2023

As the COVID-19 pandemic swept across the globe, businesses scrambled to adapt to the new reality it presented. In this blog post, we dive into the case of Goldman Sachs, a financial services giant, to examine their response to the crisis and the lessons other businesses can learn from their return-to-office strategy. From prioritizing employee…

October 28, 2022

Full Podcast Transcript NASIR: Finally, my two favorite worlds have collided – both the law and the chess – right here at Memorial Park in Houston, Texas. Windy day. We have some background noise – ambient noise. What are the two worlds that collided? Well, Hans Neimann has sued Magnus Carlsen for defamation in one…

September 26, 2022

Through a five-round championship bout, Matt travels to Texas from California to determine which state is better for business. Will it be a knockout with a clear winner or will it go to the scorecards?

July 7, 2022

Whether you are buying or selling a business, the transaction goes through the same steps. However, they are viewed from different perspectives. Sellers may not want to fully disclose all the blind spots while Buyers will want otherwise. Nasir and Matt battle it out in this Buyer vs. Seller to determine who has the advantage!…

May 12, 2022

When it comes to Restrictive Covenants, employers are fighting to keep their company safe while employees may use them to their advantage. Keep listening to find out if the Employer or the Employee wins this battle. Round 1: Trade Secrets A company’s trade secrets encompass a whole range of information and are one of the…

February 14, 2022

The Supreme Court rejected the nation’s vaccine mandate. Businesses with 100 or more employees are NOT required to have their employees vaccinated or go through weekly testings. However, this policy remains in effect for health care facilities. In this episode of Legally Sound | Smart Business, the team sat down to discuss their thoughts on this ruling.

December 1, 2021

In this episode of Legally Sound | Smart Business by Pasha Law PC, Nasir and Matt cover the Business of Healthcare. There is more to the healthcare industry than just doctors and nurses. Many Americans have health insurance to cover their yearly needs, but most Americans are not aware of what really goes on behind…

October 12, 2021

In our latest episode, Nasir and Matt are covering the legal issues on Social Media. The average person spends most of their day on social media, whether they are scrolling for hours or publishing their own content. However, just because you publish your own content on Instagram does not equate to you owning that image….

September 28, 2021

What is a Non-Disclosure Agreement, and when do I need one? In this episode, Nasir and Matt shares why you need to use Non-Disclosure Agreements, basic facts about NDA’s, and discuss about the infamous Jenner-Woods story. Having the right Non-Disclosure Agreement in place not only protects you and your business, but it also makes the…

June 16, 2021

Covered in this episode of Legally Sound Smart Business are some typical business mistakes blunders small businesses often make and how to avoid them. Blunder #1: Copying and pasting agreements It may sound like a good idea at the time, but this blunder comes with hidden pitfalls. Having an attorney draft terms that are specific…

February 4, 2021

How you terminate an employee can make the difference between a graceful transition to avoidable negative outcomes like a dramatic exit or even a lawsuit. We gathered a panel of experts and asked them – is there a “right way” to fire an employee? We would like to thank our guests for this episode: Amr…

December 2, 2020

The COVID-19 pandemic has turned nearly every aspect of life on its head, and that certainly holds true for the business world. In this episode, Matt and Nasir explain how the early days of the pandemic felt like the Wild West and how the shifting legal playing field left a lot open to interpretation and…

November 16, 2020

After plenty of ups and downs, our buyer has finally closed on the purchase of their business. While we’re marking this down in the ‘wins’ column, it never hurts to review the game tape. In this final episode, our hosts, Matt Staub and Nasir Pasha, return to the deal almost a year later to reflect…

September 15, 2020

The ink is drying on the signature line and things are looking great for our buyer. After so much hard work, the finish line is in sight and the cheering within ear shot.   Though the landlord is still serving friction, things seem safe to move forward and for now, our buyer will be keeping…

July 31, 2020

Though things are coming along well, the journey would not be interesting if it was purely smooth sailing. After our buyer opens escrow, they are forced to push the closing date back when suddenly a letter from an attorney was received claiming the business, we are buying has a trade mark on the name!  Now…

June 12, 2020

With frustration at an all-time high and professionalism at an all-time low, our friend the Buyer has “had it” with the Seller and quite frankly their lack of knowledge. At present our Buyer is rightfully concerned that the latest misstep from our loose-lipped Seller will threaten not only the entire operation of the businesses but…

May 11, 2020

As we go deeper into the buying process, we start to uncover more challenges from our seller and encounter some of the wrenches they are tossing our way. When we last left off in episode three our team was knee deep in due diligence for our buyer, had already penned and signed the Letter of…

April 4, 2020

One word–interloper! When a new mysterious broker enters the transaction and starts to kick up dust, Nasir and Matt take the reins. The seller signed off on the letter of intent (see episode 2), yet this “business broker” serves only friction and challenges by refusing to send financials, whilst demanding more of a firm commitment…

April 4, 2020

Just as most stories and deals start out, everyone is optimistic, idealistic and full of hope for clear skies. It’s a perfect outlook with a perfect setup for the ups and downs yet to come. Peek further behind the curtain and into the first steps of buying a business: the letter of intent. After the…

April 4, 2020

When a savvy buyer hears opportunity knocking to purchase a prime positioned business, she decides not to go it alone and taps in the professionals to help navigate what could potentially be a fruitful acquisition. “Behind the Buy” is a truly rare and exclusive peak into the actual process, dangers, pitfalls and achievements, that can…

August 7, 2019

GrubHub is subject to two “matters of controversy” that have likely become common knowledge to business owners: “fake” orders and unfriendly microsites.

May 28, 2019

In this podcast episode, Matt and Nasir breakdown the legal issues of the subscription industry’s business on the internet. Resources A good 50-state survey for data breach notifications as of July 2018. California Auto-Renewal Law (July 2018) Privacy Policies Law by State Why Users of Ashley Madison May Not Sue for Data Breach [e210] Ultimate…

March 12, 2019

In recording this episode’s topic on the business buying process, Matt’s metaphor, in comparing the process to getting married probably went too far, but they do resemble one another. Listen to the episode for legal advice on buying a business.

December 3, 2018

Nasir and Matt return to discuss the different options available to companies looking to raise funds through general solicitation and crowdfunding. They discuss the rules associated with the various offerings under SEC regulations and state laws, as well as more informal arrangements. The two also discuss the intriguing story about a couple who raised over…

July 24, 2018

Flight Sim Labs, a software add-on creator for flight simulators, stepped into a PR disaster and possibly some substantial legal issues when it allegedly included a Trojan horse of sorts as malware to combat pirating of its $100 Airbus A320 software. The hidden test.exe file triggered anti-virus software for good reason as it was actually…

April 17, 2018

Attorneys Matt Staub and Nasir Pasha examine Mark Zuckerberg’s congressional hearings about the state of Facebook. The two also discuss Cambridge Analytica and the series of events that led to the congressional hearings, the former and current versions of Facebook’s Terms of Service, and how businesses should be handling data privacy. Full Podcast Transcript NASIR:…

March 10, 2018

The Trump presidency has led to a major increase in ICE immigration enforcement. It’s critical for business owners to both comply with and know their rights when it comes to an ICE audit or raid. Nasir, Matt, and Pasha Law attorney Karen McConville discuss how businesses can prepare for potential ICE action and how to…

February 5, 2018

New years always bring new laws. Effective January 1, 2018, California has made general contractors jointly liable for the unpaid wages, fringe benefits, and other benefit payments of a subcontractor. Nasir and Matt discuss who the new law applies to and how this affects all tiers in the general contractor-subcontractor relationship. Click here to learn…

January 2, 2018

With a seemingly endless amount of new mattress options becoming available, it is unsurprising that the market has become increasingly aggressive. As companies invest in more innovative solutions to get in front of customers, review sites, blogs and YouTube videos have moved to the forefront of how customers are deciding on their mattresses and how…

December 7, 2017

In recent months explosive amounts of high profile allegations of sexual harassment, assault, and varying acts of inappropriate behavior have transcended every sector of our professional world. With a deluge from Hollywood and politics, and the private workforce, accusations have inundated our feeds and mass media. This harassment watershed has not only been felt within…

November 16, 2017

If you are not familiar with the EB-5 program started in 1990 to give green cards to certain qualified investors in the United States, then you may not have been alone a few years ago. Currently, the EB-5 program has since exploded since its inception and now hits its quotas consistently each year. The program…

October 10, 2017

Government requests come in multiple forms. They can come in as requests for client information or even in the form of investigating your company or your employees. Requests for Client Information General Rule to Follow Without understanding the nuances of criminal and constitutional law and having to cite Supreme Court cases, any government requests for…

August 24, 2017

Nasir and Matt suit up to talk about everything pertaining to employee dress codes. They discuss the Federal laws that govern many rules for employers, as well as state specific nuances in California and other states. The two also emphasize the difficulty in identifyingreligious expression in dress and appearance, how gender-related dress codes have evolved…

June 28, 2017

Nasir and Matt discuss the life cycle of a negative online review. They talk about how businesses should properly respond, how to determine if the review is defamatory, the options available to seek removal of the review, how to identify anonymous reviewers, whether businesses can require clients to agree not to write negative reviews, and…

June 7, 2017

On this episode of the Ultimate Legal Breakdown, Nasir and Mattbreak down social media marketing withguests Tyler Sickmeyer and Kyle Weberof Fidelitas Development. They first discuss contests and promotionsand talk about where social media promotions can go wrong,when businesses are actually running an illegal lottery, and the importance of a soundterms and conditions. Next, they…

April 3, 2017

On this episode of the Ultimate Legal Breakdown, Nasir and Matt go in depth with the subscription box business. They discuss where subscription box companies have gone wrong(4:30), the importance of a specifically tailored terms and conditions(6:30), how to structure return policies (11:45), product liability concerns (14:45),the offensive and defensive side of intellectual property (19:00),…

February 1, 2017

Nasir and Matt discuss the suit against Apple that resultedfrom a car crashed caused by the use of FaceTime while driving. They also discuss howforeseeable use of apps can increase liability for companies. Full Podcast Transcript NASIR: Hi and welcome to Legally Sound Smart Business! I’m Nasir Pasha. MATT: And I’m Matt Staub. Two attorneys…

January 5, 2017

The guys kick in the new year by first discussing Cinnabon’s portrayal of Carrie Fisher as Princess Leia soon after her death, as well as other gaffes involving Prince and David Bowie. They alsotalk about right of publicity claims companies could be held liable for based on using someone’s name or likeness for commercial gain.

December 22, 2016

Nasir and Matt discuss the recent incidentat a Victoria’s Secret store where the store manager kicked out all black women after one black woman was caught shoplifting. They then each present dueling steps businesses should take when employees are accused of harassment.

December 8, 2016

Nasir and Matt return to talk about the different types of clients that may have outstanding invoices and how businesses can convert unpaid bills to getting paid.

November 10, 2016

After a long break, Nasir and Matt are back to discuss a Milwaukee frozen custard stand that is now revising it’s English only policy for employees. The guys also discuss how similar policies could be grounds for discrimination and what employers can do to revise their policies.

October 6, 2016

The guys discuss the new California law that allows actors to request the removal of their date of birth and birthdays on their IMDB page and why they think the law won’t last. They also discuss how age discrimination claims arise for business owner.

September 29, 2016

Nasir and Matt discuss the racial discrimination claims surroundingAirbnb and how it’s handled the situation. They also discuss some practical tips for businesses experiencing similar issues.

September 8, 2016

Nasir and Matt discuss whyAmazon seller accounts are getting suspended and banned without notice and how business owners can rectify this situation through a Corrective Action Plan.

August 25, 2016

Nasir and Matt talk about the accusations surroundingfashion giant Zararipping off the designs of independent artists like Tuesday Bassen and howsmaller companies can battle the industry giants.

August 18, 2016

Nasir and Matt discuss Brave Software’s ad replacing technology that has caught the eye of almost every national newspaper and has a potential copyright infringement claim looming. They also welcome digital marketing expert Matt Michaelree to speak on the specifics of what Brave is attempting to do and whether it has the answers moving forward.

July 28, 2016

Nasir and Matt discuss the sexual harassment lawsuit filed by Gretchen Carlson against Fox CEO Roger Ailes. They also talk aboutthe importance of sexual harassment training and properly handling such allegations in the office.

July 15, 2016

Nasir and Matt talk about the changes at Starbucks that have led to many disgruntled employees and customers.

We represent businesses.
That’s all we do.

Oh, and we love it.

We love our work. We love reviewing that lease for your new location. We thrive on closing that acquisition that nearly fell through. We’re fulfilled when we structure a business to grow, raise capital, and be legally protected.

We focus on developing close relationships with our clients by being like business partners. A partner who provides essential, personalized, proactive legal support.

We do all of this without utilizing the traditional billable hour model. You pay for the value we bring, not the time spent on calls, emails, and meetings.

Our team is made up of attorneys and staff that share these values and we are retained by clients who want the same.

Pasha Law PC operates in the states of California, Illinois, New York, and Texas.

Meet Our Team

Fractional General Counsel Services

Pasha Law Select offers the expertise of a high-end general counsel legal team for every aspect of your business at a fixed monthly rate. Pasha Law Select is deliberately designed to allow our legal team to be proactive, to anticipate, and to be comprehensive in serving our clients. To be great lawyers, we need to know our clients. We can’t know our clients unless we represent a select number of clients in the long-term. This is Pasha Law Select.

Learn More