Monday, June 29, 2009

Nevada District Court Clarifies Nevada Limitations Period for Laches Presumption

A Nevada District Court has clarified that, for purposes of determining whether the presumption of laches applies in a trademark infringement lawsuit filed in Nevada, the applicable statute of limitations period is four years. See Aristocrat Technologies, Inc. et al v. High Impact Design & Entertainment, et al, Case No. 07-cv-01033 (D. Nev. June 23, 2009).

Aristocrat Technologies, Inc. (“ATI”) produces and sells gaming machines under the word and design trademarks ARISTOCRAT (here and here), which ATI has registered both in the U.S. and internationally. High Impact Design & Entertainment (“HIDE Nevada”) had an agreement with ATI to purchase ATI’s gaming machines – an agreement that clearly indicated that ATI retained all rights, title and interest in its trademarks, and HIDE Nevada had no such rights. In June 2003, HIDE Nevada (without ATI's knowledge) applied to register the ARISTOCRAT design mark in Venezuela. ATI discovered HIDE Nevada’s Venezuelan application in December 2003 and demanded that HIDE Nevada withdraw the application; however, HIDE Nevada convinced ATI to wait until the mark had registered and then assign it to ATI later in order to avoid spending more time and money in registering the mark. ATI took no action at the time, and waited until it registered to HIDE Nevada’s Venezuelan affiliate company. But when the mark registered, HIDE Nevada refused to assign the mark over to ATI.

ATI initially sued HIDE Venezuela in August 2007. In August 2008, ATI filed an amended complaint adding HIDE Nevada and some individual defendants to the action. The defendants’ initial motion to dismiss for lack of subject matter jurisdiction was dismissed. Shortly thereafter, three of the Defendants (the “Moving Defendants”) filed Motions to Dismiss Case not Commenced within Three Years

The Moving Defendants argued that ATI's Lanham Act trademark infringement claims were not timely commenced and therefore the doctrine of laches should apply to bar the complaint based on the nearly four year delay from the time ATI learned of HIDE Nevada’s application for trademark registration in Venezuela and the date that ATI filed suit.

The court described the significance of the statute of limitations with respect to the defense of laches as follows:

While laches and the statute of limitations are distinct defenses, if the plaintiff filed a Lanham Act claim within the analogous limitations period under state law, courts strongly presume that laches is inapplicable. Reno Air Racing Ass'n, Inc. v. McCord, 452 F.3d 1126, 1138-39 (9th Cir. 2006). If the plaintiff filed suit outside the analogous period, courts have often presumed that laches is applicable. Id. at 1139. Because the Lanham Act contains no explicit statute of limitation, courts "borrow" the analogous state time period. Id. In determining the presumption for laches, the limitations period runs from the time the plaintiff knew or should have known about his cause of action. Id.

In this case, the Moving Defendants’ position was that the analogous statute of limitations under Nevada law is three years, and because ATI waited more than four years to file suit, ATI's suit should be barred as untimely. The Moving Defendants relied upon the Reno Air case which cited to NRS §11.190(3), which provides for a three-year statute of limitations for actions involving fraud, as the applicable statute of limitations.

However, the court noted that the issue of the applicable statute of limitations was not really at issue in the Reno Air case:

The [Reno Air] Defendant asserted that the doctrine of laches should apply to bar the Plaintiff's claim, and the court specifically noted that the parties in that case had agreed that the three-year limitation period in NRS §11.190(3) should apply to determine the presumption for laches. Id. at 1139. Notably, as Plaintiffs in this case point out, the court in Reno Air did not specifically hold that the applicable statute of limitations for a Lanham Act claim is three years under NRS §11.190(3). Id. Rather, the Reno Air court accepted the parties' understanding without discussion, and undertook its analysis of the laches issue based on the fact that the parties agreed that the three-year period should apply. Id.

(bold italics emphasis added).

The court then went on to address which of Nevada’s statute of limitations should apply – agreeing with ATI’s arguments that it should be four years based on Nevada’s four year statute of limitations period for actions under Nevada’s deceptive trade practices laws:

By contrast, Plaintiffs in this case argue that the Court should look to the four-year statute of limitations in NRS §11.190(2) for actions involving deceptive trade practices in violation of NRS §598.0903 to 598.0999. (Pl.'s Opp'n (# 48) 4). They argue that both the Lanham Act and Nevada's deceptive trade practices statute are "designed to prevent consumer confusion and deception in the marketplace with respect to the source, sponsorship, approval, affiliation, connection, or association of goods and services" and therefore Nevada's four-year statute of limitations for deceptive trade practices is the most closely analogous. Id. at 5. This Court agrees. A review of the Lanham Act provisions regarding trademark infringement and Nevada's deceptive trade practices statute reveals that the two are indeed analogous and appear to address similar wrongs including the false or deceptive use of another's mark or product.

(bold italics emphasis added).

Accordingly, the court applied the four-year limitations period to determine whether laches is applicable in this case. In this case, accepting the Moving Defendants' assertion that Plaintiffs discovered the offending use in December 2003, the suit, filed on August 3, 2007, was within the four-year statute of limitations period, and therefore, the court presumed that laches was inapplicable.

The court added that, even though ATI’s suit was presumed to have been timely filed, laches could still apply if the Moving Defendants could show that they suffered prejudiced as a result of the ATI’s unreasonable delay in filing suit. The court noted that, given HIDE Nevada’s assurances that it would assign the Venezuelan trademark upon registration, it was not unreasonable for ATI to delay in filing its action upon initially discovering the application in December 2003. Moreover, the Moving Defendants apparently had not shown any evidence of prejudice as a result of the alleged delay. Thus, the court denied the Moving Defendants’ Motion to Dismiss.

Friday, June 26, 2009

Chicago’s SUPERDAWG Files Trademark Infringement Against NYC’s SUPERDOG

Chicago's Superdawg

The Chicago Tribune reported earlier this week on the lawsuit filed by the owner of Chicago’s famed SUPERDAWG restaurant (pictured above) against a New York man, Danny Omari, doing business under the SUPERDOG. See Superdawg Drive-In, Inc. v. Danny Omari d/b/a Superdog, Case No. 09-CV-03758 (N.D. Ill. June 22, 2009). A copy of the complaint is available here.

Superdawg Drive-In, owner of the registered SUPERDAWG mark, claims that Omari’s use of SUPERDOG infringes their nationwide reputation (because Superdawg does not currently have a NYC location) . Superdawg even cites an NY article about Omari’s new eatery – adding the disclaimer that Omari’s Superdog is “no relation to Chicago’s iconic Superdawg”

Omari has a trademark registration application pending with the PTO for the design mark HOT DOG CONCEPT SUPERDOG (pictured above). Surprisingly, the PTO did not find his mark to be conflicting with Superdawg’s registered mark.

Interestingly, Omari has already modified his home page slight in what appears to be an attempt to distinguish his mark from Superdawg – the design appears as below to read SUPER HOT DOG. [Comment: hmm...probably not enough to call off the dawgs].

Thursday, June 25, 2009

Eighth Circuit Overturns Lower Court’s Laches Decision in CRISTAL Trademark Infringement Lawsuit

The relatively new-on-the-block Minnesota Law, Technology & Intellectual Property Blog reports on the decision by the Eighth Circuit Court of Appeals overturning a lower court’s decision dismissing a trademark infringement lawsuit on the basis of laches. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., et al., No. 08-2907 (8th Cir. June 24, 2009).

Cristal Champagne

Champagne Louis Roederer, maker of CRISTAL CHAMPAGNE, sued J. Garcia Carrion, S.A., maker of a sparkling wine sold under the mark CRISTALINO, for trademark infringement. The lower court dismissed the lawsuit on the basis that Roederer had constructive notice of Carrion’s use of the CRISTALINO mark as early as 1995 and the action was therefore barred by the doctrine of laches.

Cristalino Cava

The Court of Appeals found that the district court had not done a meaningful analysis of the issue of progressive encroachment to determine if 1995 was really the date when Carrion’s use became actionable infringement for purposes of applying the doctrine of laches.

The Court further noted that Carrion was certainly on notice regarding Roederer’s objection to Carrion’s use of the CRISTALINO mark. Roederer had opposed several trademark registration applications filed by Carrion in Spain, the U.S. and Columbia in the early and late 1990s -- long before Carrion has made a significant investment in improving a particular production plant in 2003.

Finally, the Court found that the district court had erred in finding that Carrion would be prejudiced by this delay if Roederer’s lawsuit proceeded. Carrion’s investment in improving its production plant did not appear to be so related to the CRISTALINO brand (only 9% of the plant’s output) that Carrion would not have otherwise made it without the CRISTALINO brand. Thus, Carrion had failed to show that it suffered undue prejudice as a result of Roederer's delay in bringing suit. The Court found that this alone was sufficient to bar Carrion’s use of the laches defense.

Wednesday, June 24, 2009


Xbiz reports (link here) on the trademark infringement lawsuit filed last week in the U.S. District Court for the Central District of California by the companies behind the GIRLS GONE WILD brand (Mantra Films, Inc. and GGW Marketing, LLC) against several wireless carriers (including AT&T and Verizon) and mobile phone content providers for using the mark GIRLS GONE MOBILE to promote “adult themed entertainment products” such as downloadable videos, photos, and wallpaper of “youthful women.” See Mantra Films, Inc. et al v. Oasys Mobile, Inc. et al, Case No. 09-cv-04420 (C.D. Cal. June 19, 2009). A copy of the complaint can be downloaded here.

One of the Defendants, Oasys Mobile, Inc., filed an intent-to-use application to register the mark GIRLS GONE MOBILE back in 2007. No opposition was filed when it was published for opposition in December 2008 and a notice of allowance has issued.

In addition to the usual trademark infringement, unfair competition, trademark dilution, cybersquatting, and intentional interference claims, there is also a breach of contract claim against one of the Defendants, Waat Media, Inc. According to the complaint, Waat had a Wireless Distribution Agreement with Mantra for exclusive rights to distribute Girls Gone Wild content over wireless networks. Mantra claims that Waat has breach this Agreement by not paying the quarterly royalties due since June 30, 2008.

Eric Gardner over at THR,Esq. gives his thoughts on the complaint.

Thursday, June 18, 2009

Bellagio Loses Bet on Specimen of Use for DUNES mark for Casino Services

The TTABlog® writes today (link here) on the Trademark Trial and Appeal Board’s decision affirming the PTO’s refusal to allow Bellagio, LLC, the MGM-Mirage subsidiary which owns the Bellagio Hotel & Casino, to register the mark DUNES for “casino services” based on a specimen of use showing the mark on a slot machine (pictured below). See In re Bellagio, LLC, Serial No. 77175007 (June 2, 2009) (not precedential).

Bellagio argued that its DUNES slot machines, which appear throughout the Bellagio casino floor (and are not themselves available for purchase by casino patrons), are used for gaming in Bellagio's casino, thus offering casino services to customers and thereby creating an association between the DUNES mark and the Bellagio.

However, the Board found that this specimen failed to provide the necessary “direct association” between the mark and the applied-for services such that the mark would be “readily perceived as identifying the source of the services.” The Board also noted that there was no evidence that “placing a mark on a slot machine is a typical manner for a casino to use its mark in connection with casino services” nor did Bellagio provide any evidence that the DUNES mark was used on other advertising to promote its casino services.

In the end, the Board found that the association that Bellagio argued customers encountering the DUNES slot machine would have in connecting such slot machines to Bellagio’s casino services offerred where the slot machine is located was not direct, but instead would require “at least one mental” step (including possibly an awareness of the fact that the Bellagio is located where the former Dunes Hotel & Casino used to stand).

The Dunes Hotel & Casino
(demolished in 1993 to make way for the Bellagio)

[Query: Do you think it would have made a difference if the services recited in Bellagio's application had been "
gambling services" instead of "casino services"?]

Monday, June 15, 2009

Toy Maker Seeks Declaratory Judgment That “Boogie Board” is Generic for … Guess What?

Wham-O's BOOGIE® body board

Hong Kong based toy company Manley Toys, Ltd., the maker of the BANZAI line of water toys including a water slide with a Banzai “boogie board” (pictured below), filed a declaratory judgment action against Wham-O, Inc., the owner of the registered trademark BOOGIE (for body boards), after receiving a cease and desist from Wham-O over the use of the term “boogie board”. See Manley Toys, Ltd. v. Wham-O, Inc., Case No. 09-cv-04198 (C.D. Cal. June 12, 2009). A copy of the complaint is available here.

Banzai's Water Slide with "Boogie Board"

Wednesday, June 10, 2009

Pardee Homes Sues Beazer Homes over SMART LIVING

On June 8, 2009, Nevada and SoCal home builder and real estate developer Pardee Homes filed a trademark infringement lawsuit against home building competitor Beazer Homes in the U.S. District Court for the District of Nevada. See Pardee Homes v. Beazer Homes USA Inc. et al, Case No. 09-cv-01038 (D. Nev. File June 8, 2009). A copy of the complaint can be downloaded here.

Pardee Homes, a subsidiary of Weyerhaeuser Real Estate Company, is the owner of the registered trademark LIVINGSMART (word mark and design mark pictured below) for “building construction and real estate development services” in Class 37). The mark has become incontestable as of October 1, 2008.

Pardee also owns several other registrations and pending applications for other “SMART” marks (covering Class 37 and/or Class 36 services) including WHERE SMART SOLUTIONS LIVE; EARTHSMART; EARTHSMART and design; HEALTHSMART; HEALTH SMART and design; WATERSMART; SMART SOLUTIONS; and ECO-SMART LIVING.

In 2008, Beazer Homes received a registration for the mark SMARTDESIGN (for planning and laying out of residential communities; Construction of residential communities; housing services, namely, repair, improvement, and construction of residential real property in class 37). Also in 2008, Beazer Homes filed applications to register the marks ESMART HOMES and ESMART BY BEAZER HOMES (both for construction services, namely, planning, laying out and construction of residential homes in class 37).

On February 20, 2009, Pardee filed Oppositions with the Trademark Trial and Appeal Board (TTAB) opposing registration of both of these marks. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Opposition Nos. 91188948 and 91188950 (T.T.A.B. February 20, 2009). Then on February 24, 2009, Pardee initiated a cancellation of Beazer’s SMARTDESIGN mark. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Cancellation No. 92050587 (T.T.A.B. February 24, 2009).

According to the complaint, Pardee learned this month (June 2009) that Beazer, despite having notice of Pardee’s portfolio of SMART marks, recently adopted the marks SMART LIVING and BUY LOW . . . LIVE SMART, both of which Pardee alleges is confusingly similar to its LIVING SMART mark.

Pardee claims that Beazer is using the SMART LIVING mark in connection with the sale of homes on its website (apparently being used in connection with a Nashville, Tennessee community – although it appears to be used in more of a fair use, descriptive sense rather than as a mark).

Pardee also claims Beazer is using SMART LIVING as the title of a magazine to promote its homes. You can check out one recent issue for yourself here (2MB PDF).

Finally, Pardee cites a June 1, 2009, press release announcing its nationwide BUY LOW, LIVE SMART sales event, which was also promoted through an e-mail blast stating that “living smart means saving money and energy with our eco-friendly home features.”

Pardee’s causes of action are for registered trademark infringement under 15 U.S.C. § 1114; federal unfair competition under 15 U.S.C. § 1125(a); and common law unfair competition.

[Update: The Las Vegas Sun reported on Friday, June 12, 2009 (link here) that Beazer had apparently altered its ad campaign in response to the lawsuit, so that instead of "BUY LOW LIVE SMART" it now reads "BUY LOW . . .LIVE WELL." While its not clear if all of Pardee's claims have been addressed, the word around town is that the two sides have settled their dispute. I guess Pardee would say that Beazer made the "SMART" decision. ].

Monday, June 8, 2009

The owner of that popsicle is Monte…Del Monte.

Rebecca Tushnet managed to combine two of my favorite topics—naked licensing and James Bond—into a single post about Del Monte’s attempts to distance itself from one of it's popsicles rembling the naked torso of current JAMES BOND 007 actor Daniel Craig.

Scene from "Casino Royale"
(Most of the women I know would prefer to lick the real thing)

Friday, June 5, 2009

ICANN’s Proposed Uniform Rapid Suspension Program For Fighting Cybersquatters

ICANN's Implementation Recommendation Team (“IRT”) issued a report on May 29, 2009, which recommends the implementation of a new type of domain name proceeding that trademark owners could pursue in order to go after cybersquatters cheaper and faster. The proceeding is tentatively called the Uniform Rapid Suspension System (“URS”) and the IRT is recommending that it be mandatory for all new generic Top Level Domains (gTLDs).

The purpose of the URS is to provide a cost effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet. The URS is not meant to address questionable cases of alleged infringement (e.g., use of terms in their generic sense) or for anti-competitive purposes or denial of free speech, but rather for those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place.

For a fee of $200 (for up to 25 domain names), trademark owners submit a complaint (the form of which is attached as Appendix B to the report) and notice will be sent to the domain name registry so that it can freeze the domain name to prevent transfers or other changes to the registration (but the website remains up). After the freeze, notice is given to the registrant to file an answer to the complaint (the form of which is attached as Appendix D to the report) within 14 days. The complaint and answer are then reviewed by an examiner who looks at the same three basis issues examined under the UDRP (domain name identical or confusingly similar to a valid mark, registrant’s rights or legitimate interests in the domain name, and bad faith), but under a “clear and convincing” standard of proof rather than preponderance of the evidence of the UDRP

The URS would only allow a complaining party to “freeze” a domain name for the remainder of the registration term – resolving to a specific error page. The System would not result in the cancellation of the domain name or the transfer of the domain name to the complainant.

Supposedly, if there is any genuine contestable issue as to whether a domain name registration and use is an abusive use of a trademark, the complaint will be denied terminating the URS process without prejudice to further action (i.e., a UDRP or actual lawsuit). “The URS is not intended for use in any questionable proceedings, but only clear cases of trademark abuse.” Moreover, any trademark owners found to repeatedly misuse the URS are supposed to be removed from the system and denied access to the URS for a set period of time.

Finally, both sides would have rights to appeal the decision. If the complaint is denied, the complainant may initiate a proceeding de novo under the UDRP or in a court of appropriate jurisdiction. If the complaint is granted, the Registrant may request reconsideration on the original record by a “URS ombudsman” on the grounds that the decision was “arbitrary and capricious or an abuse of discretion” or may initiate a de novo proceeding in a court of appropriate jurisdiction.

The Report gives the following illustration of how the URS in practice:

For example, if the trademark in question is BRANDXYZ for use in connection with computers and the domain name in question is brandxyzz.[gtld] and is used in connection with an abusive pay-per-click site, the site would be frozen. If the domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona fide retailer who legitimately sells BRANDXYZ computers, the URS complaint would be denied.

[Comment—does stating “used in connection with an abusive pay-per-click site” imply an acknowledgment that that there can be such things as “nonabusive” pay-per-click sites” or is it more likely that all pay-per-click sites are deemed abusive by the ICAAN's IRT?]

For those not interested in reading the IRT report, has a succinct yet detailed (and somewhat critical--but fairly so in my opinion) review of the proposed URS System.

Thursday, June 4, 2009

Incorp and Legalzoom Settle Trade Libel Lawsuit

I previous wrote (link here) about the lawsuit filed by Incorp Services, Inc., (“Incorp”), a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities. See Incorp Services, Inc., v., Inc., Case No. 09-cv-00273 (D. Nev.).

Incorp alleged that customers who formed business entities through Legalzoom and who wanted to use Incorp as their registered agent had been told by LegalZoom’s representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp maintained are false given its good standing status in all fifty states and the District of Columbia.

On May 27, 2009, the parties notified the court that the dispute had been resolved. A stipulation for dismissal with prejudice was filed with the court on June 2, 2009. No terms of the settlement were disclosed. Both sides will bear their own attorneys fees and costs.

Wednesday, June 3, 2009

My new favorite TTAB website - TTAB ACROSS THE BOARD

Over this past weekend, I stumbled across TTAB ACROSS THE BOARD. This may be old news for some, but I had never heard of it and I think the website is a must-know for TTAB practitioners – and will soon become their favorite TTAB related website (with the exception of The TTABlog® of course).

As most TTAB practitioners know, filings for TTAB opposition or cancellation proceedings are electronically available through the TTAB’s TTABVUE system. While there is a way to search final decision of the TTAB (link here), there is no current way to search all of the electronic filings filed in such opposition or cancellation proceedings . . . until now.

TTAB ACROSS THE BOARD, a personal project of its creator, attorney Chris Shiplett, is a searchable database of TTAB case status information and TTAB filings that is synchronized nightly with the TTAB’s records. Of course, the search function is only as good as the underlying documents – and searchability will depend on whether the PDF files filed in TTAB proceedings have readable text or are scanned in. Nonetheless, it does appear to fill in a hole where one existed (and which surprisingly the TTAB itself never bothered to implement itself – even though it would probably be in the best position to have done so).

The website also allows registered users to put cases on a “watch list” and even an RSS feed for true TTAB junkies that need to know about every single filing with the TTAB filing when it happens. The website is currently free (and hopefully can stay that way although I would imagine that the creator would appreciate some sponsorships to help defray the cost of what could soon become a popular database). Mr. Shiplett is currently seeking feedback on his website so give it a try and e-mail him with your thoughts and comments.

Tuesday, June 2, 2009

Psion Agrees to Surrender NETBOOK Registered Trademark

Back in February, Intel Corp. filed a declaratory judgment action against Psion Teklogix, Inc. seeking a declaration that Psion’s registered trademark NETBOOK is generic for laptop computers (previously blogged here). The action was filed after Intel (along with numerous other well-known names like Dell, HP, and Best Buy) received a cease and desist letter from Psion.

Intel was challenging Psion’s trademark registration on the grounds that while Psion may indeed have used the term NETBOOK in connection with small portable computers at one time, it abandoned the name in 2003 (making its 2006 Section 8 Declaration of Use fraudulent). Dell had also filed its own cancellation proceeding with the Trademark Trial and Appeal Board against Psion. That action was stayed pending the outcome of Intel’s declaratory judgment action.

News reports out yesterday (here and here) reported that Psion has agreed to settle the Intel lawsuit.

Psion stated in a press release that as part of its “amicable agreement” with Intel, it would surrender (i.e. voluntarily cancel) its NETBOOK trademark registration and will no longer pursue against trademark enforcement actions against any third parties using the term:

The litigation has been settled through an amicable agreement under which Psion will voluntarily withdraw all of its trademark registrations for ‘Netbook’. Neither party accepted any liability. In light of this amicable agreement, Psion has agreed to waive all its rights against third parties in respect of past, current or future use of the ‘Netbook’ term.

Monday, June 1, 2009

Ozzy Osbourne Files Lawsuit Against Anthony Iommi Over BLACK SABBATH Trademark

Multiple news sources (Reuters, E! Online, Entertainment Weekly) reported over the weekend on the lawsuit filed last week in the U.S. District Court for the Southern District of New York by Ozzy Osbourne against his Black Sabbath band partner Anthony Iommi over ownership of the BLACK SABBATH mark. See John Osbourne (p/k/a Ozzy Osbourne) v. Anthony Iommi , Case No. 09-cv-04947 (S.D.N.Y. Filed May 26, 2009). has a posting of the complaint here.

In December 2008, Iommi filed his own trademark infringement lawsuit against Signature Network (previously blogged here) over the sale of unlicensed “Black Sabbath” Merchandise. As part of that complaint, Iommi described how he came to be the sole owner of the “Black Sabbath” trademark. Particularly, with respect to Ozzy Osbourne, on June 30, 1980, Osbourne and his company, Monowise, Ltd. assigned and transferred

any and all rights of any kind or nature that they have or have had in the name 'BLACK SABBATH' .... OSBOURNE further agree[d] that he will not hereafter, directly or indirectly, use, permit, or authorize the use of the name 'BLACK SABBATH' or any part of it or any similar name in connection with any activities in and throughout the entertainment industry.

Interestingly, it was that dispute with Signature Network that may have started the dispute leading up to Ozzy’s present lawsuit. According to correspondence dated April 2008 from Ozzy’s attorney to Iommi’s attorney (attached as exhibits to Ozzy’s complaint), Ozzy became aware of Iommi’s cease and desist letter to Signature Network and Iommi’s claim to be the sole owner of the BLACK SABBATH mark. Apparently at that time the letter was sent out, Iommi and Ozzy had been negotiating some kind of agreement memorializing their joint ownership of the BLACK SABBATH mark as well as negotiating a renewal of the license agreement by Signature Network.
In a letter from Ozzy’s attorney sent on January 29, 2009 (after Iommi’s lawsuit against Signature Network had been filed), Ozzy’s response to the aforementioned assignment is that Ozzy and his wife, Sharon Osbourne, had been in charge of controlling the nature and quality of the services rendered under the BLACK SABBATH mark since 1997 (when the BLACK SABBATH reunion tour began).

This same sentiment is echoed in Ozzy’s official press release statement regarding the lawsuit which explains in the following manner why his prior assignment of the BLACK SABBATH name in the early 1980s may not be relevant to the goodwill inherent in the BLACK SABBATH name today:

Throughout the last 12 years, it was my management representatives who oversaw the marketing and quality control of the “Black Sabbath” brand through OZZFEST, touring, merchandising and album reissues. The name "Black Sabbath" now has a worldwide prestige and merchandising value that it would not have had by continuing on the road it was on prior to the 1997 reunion tour.

Ozzy also apparently was not even aware of the federal trademark registration that Iommi had obtained from the U.S. Patent and Trademark Office until recently.

Ozzy’s seeks a declaration that he is at least a joint owner of the BLACK SABBATH mark and that Iommi is not the sole owner of the mark. Ozzy also seeks cancellation of the BLACK SABBATH federal registration on the basis that Iommi, when he filed the application in March 1999, made a knowingly false statement to the PTO when he declared that no other person had any right to use the BLACK SABBATH mark in commerce. Two additional causes of action for monies owed and misappropriation of Ozzy’s right of publicity are also claimed.