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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