The trademark formerly known as Walter
Puerto Rico astrologist, and general hair entrepreneur, Walter Mercado just suffered another blow in his trademark battle with his former business partner, Bart Enterprises. In short, Mercado had assigned his trademark and likeness to Bart Enterprises in the mid-90′s. Said assignment was in perpetuity unless the contract was validly terminated (according to the courts, it was not). Following a Florida based litigation, Mercado was found in breach of his contract, and thus, Bart kept the rights to the trademark “Walter Mercado”. The 1st Circuit affirmed the District Court of Puerto Rico’s decision to issue a preliminary injunction against the real Walter Mercado for the use of his trademark in the course of his business.
The Opinion is below, but there are two passages worth quoting. The first one is the Court’s decision regarding whether or not the Ebay-Irreparable Harm presumption applies in trademark cases:
Although eBay dealt with the Patent Act and with permanent injunctive relief, we have stated that “the traditional equitable principles discussed by the Supreme Court in eBay apply” in trademark infringement cases where preliminary injunctive relief is sought. Voice of the Arab World, 645 F.3d at 31 (concluding that the principles of eBay applied to a request to preliminarily enjoin alleged trademark infringement, but declining to decide whether such principles precluded a presumption of irreparable harm). We need not decide here whether eBay precludes a presumption of irreparable harm because Bart has demonstrated enough irreparable harm that the district court did not abuse its discretion in granting the preliminary injunction. In any event, Mercado has not challenged the district court’s finding of irreparable harm, so this argument is waived.
The second point is how the Court summarizes the extent as to which Mercado can, and cannot use, his name:
Mercado argues that the preliminary injunction is in error because it potentially prevents him from using his personal name. However, “[t]here is no doubt that a personal name used as a trademark may be expressly assigned to another along with the goodwill symbolized by the mark.” 3 McCarthy on Trademarks and Unfair Competition § 18:32 (4th ed. 2011). “If a person has sold a business which is identified by his personal name, the name is an asset which he has sold, and he cannot keep commercial control of the name and keep the purchase price too. Of course, the seller can use his own name to identify himself, but he has sold the right to use the name as a commercial symbol — a trademark.” Id. (footnote omitted).
Below is the full opinion, what’s your take?
