In Brief: An unrecorded trademark assignment is as good as no assignment at all.
Here’s What Happened:
Muertos Roasters LLC claimed to own several trademarks for coffee that incorporate pictures of firefighters and death. Muertos sued Fire Department Coffee, Inc. and its founders Luke Schneider and Lawrence Watson for trademark infringement. Luke and Lawrence are a retired firefighter/paramedic and a US Navy veteran which explains the choice of the name of their coffee roasting business.
The defendants brought a motion to dismiss on two grounds. The first ground had to do with ownership of the trademarks. The second ground had to do with the lack of personal jurisdiction over Luke and Lawrence.
Each of the Muertos’ trademarks were actually owned by a different company, Cup Half Full Holdings, Inc. The defendants attached the United States Patent and Trademark Office (USPTO) records showing the state of ownership of the marks. The court took judicial notice that the USPTO records showed Cup Half Full as the owner of the trademarks. Muertos argued that Cup Half Full is its parent company and that Cup Half Full had assigned the trademarks to Muertos. Muertos’ chairmen signed a declaration which attached a copy of the assignment. However, the assignment had not been recorded with the USPTO.
The court granted the motion to dismiss based on lack of ownership of the trademarks.
Because the court dismissed the case on this basis, it didn’t reach the personal jurisdiction issue. However, the court did take time to note that the only allegations in the complaint regarding the individual defendants were conclusory that they somehow were personally responsible for the infringement. And so the case might have been dismissed on that basis as well.
Why You Should Know This: Muertos’ pleading mistake was pretty basic. Make sure you own the trademark before you bring suit.
Since the decision, the assignments from Cup Half Full to Muertos now appear of record.
Case Information: Muertos Roasters, LLC v. Schneider, No. 2:22-cv-00051-KJM-KJN, 2022 U.S. Dist. LEXIS 156031 (E.D. Cal. Aug. 29, 2022).