[E-trademarks] Unity of control--celebrity allowing use of name on products

Tue Dec 3 03:15:10 UTC 2024

What reason would T Swift's counsel have for allowing the licensee to
register SWIFT marks?  I would want Swift to own all SWIFT marks AND
registrations, and to control litigation over any/all SWIFT marks.

Enlighten me, please, if you disagree.

Thanks!

Lara Pearson (she/her/hers) [Why pronouns
<https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>
?] (Hear how I say my name <https://namedrop.io/larapearson>)

Law Office of Lara Pearson Ltd, PBC

Leader, Brand Geek

Lara at BrandGeek.net | Ph: 775.833.1600 | My bio <http://brandgeek.net/about/>

This e-mail may contain information that is *privileged* or *confidential*.
If you received this communication in error, please immediately notify the
sender and delete/destroy all copies of this correspondence. Thank you.

*Brand Geek practices flex-time and a 4-day work week Mon-Thurs.** If you
see us working weekends, that's our choice. We do not expect anyone
(including you!) to work/respond on the weekend. Please respond at a time
that works for you. *

*Protecting the Brands that are Changing the World**®*

*Protecting the Businesses that are Changing the World*
*®Protecting the Brands of Soulfulpreneurs**®*

*Leading the way, we belong to **1% for the Planet (since January 2006),
SVN (since Spring 2007), **Certified B Corporation (since February 2008).*

*Save the planet! Please don't print.*

*I humbly acknowledge that this email is being sent from the unceded
traditional lands of the first people of Lake Tahoe, the Washoe or Wašišiw
("people from here," sometimes translated as Wa She Shu) of the Great
Basin, past, present, and future. I honor with gratitude this sacred land
itself and the Washoe Tribe <https://washoetribe.us/>.*

On Mon, Dec 2, 2024 at 2:33 PM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> The two different beverage companies, with permission given by T-Swift to
> each for the use of her name in the marks.
>
>
>
> *Kevin Grierson*********
>
> |
>
> Partner
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law*
>
>
>
> *From:* Nancy Prager <nancyprager at yahoo.com>
> *Sent:* Monday, December 2, 2024 5:31 PM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Kevin Grierson <kgrierson at cm.law>
> *Subject:* Re: [E-trademarks] Unity of control--celebrity allowing use of
> name on products
>
>
>
> EXTERNAL EMAIL
>
> Great question.  Is the celebrity the applicant or are two different
> beverage companies?
>
>
>
> On Monday, December 2, 2024 at 05:11:13 PM EST, Kevin Grierson via
> E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
>
>
>
>
>
> Got a refusal with an interesting twist.  Here’s the scenario: celebrity
> (let’s say Taylor Swift) gives permission to an entity to use her name for,
> say wine, that entity registers WINE BY TAYLOR SWIFT.  Then she gives
> permission to a different entity to use her name in connection with beer.
> USPTO issues a refusal for BEER BY TAYLOR SWIFT based on prior wine
> registration.  Ownership issues aside, can you argue “unity of control” if
> Taylor is, in fact exercising quality control over both products even
> though they are manufactured by different entities?  The TMEP sections on
> unity of control don’t seem to address this issue.
>
>
>
> *Kevin Grierson <https://www.culhanemeadows.com/attorney/kevin-grierson/>*
>
> Partner
>
> [image: Mobile:]
>
>  757-726-7799
>
> [image: Fax:]
>
>  866-521-5663
>
> [image: Email:]
>
>  kgrierson at cm.law
>
>
>
> *Please note: Culhane Meadows is now CM Law*
>
> *Atlanta | Austin | Boston | Chicago | Dallas | Delaware | Denver | Houston | Minneapolis | New Jersey | New York | Philadelphia | Washington, D
> <https://www.culhane.law/offices/>C *
>
> This message is for the personal and confidential use of the intended
> recipient(s) and may be subject to attorney-client privilege. If you have
> received this communication in error, please notify the sender immediately.
> Please note that general marketing updates/legal news alerts provided by
> the firm or its attorneys are for informational purposes only and should
> not be relied on as legal advice for any specific situation. Laws can
> change rapidly and, therefore, you should always consult with your CM Law
> attorney to ensure you have the most accurate and current counsel
> pertaining to your situation. 
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 5049 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 285 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 452 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 27976 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241202/0e1ca69b/attachment-0004.png>