SW Legal studies in Business

Assignment of Trademark May Be Perpetual and Not Affected by Later Registration
Description Appeals court held that an assignment of a trademark, without compensation, decades before the trademark was registered, was a valid perpetual assignment that may not be revoked by the holder of the registered mark.
Topic Intellectual Property
Key Words Trademark; Ownership; Assignment
C A S E   S U M M A R Y
Facts Martha Graham was a famous dancer and choreographer. In 1948 she helped start the Martha Graham Center of Contemporary Dance. Its certificate of incorporation notes that Graham consented to the use of her name in the title of the corporation. Her name was also used on the Martha Graham School of Contemporary Dance. After she died in 1991, her heir, Protas, who ran the School, filed trademark applications for "Martha Graham" and the registration was approved by the Patent and Trademark Office. Later Protas sued the Center, claiming trademark infringement and demanded it cease use of the name "Martha Graham." The district court rejected his demand; he appealed.
Decision

Affirmed. Graham's consent to the Center to use her name in 1948 was an irrevocable assignment, so the Center could not be estopped from using her name. The fact that she was not paid for the use of her name does not matter; she gave her consent. "A valid assignment does not require incantation of any special language. Indeed, the word assignment need not be used and the assignment may be oral." Protas could not later register the trademark and revoke an earlier assignment.

Citation Martha Graham School and Dance Foundation v. Martha Graham Center of Contemporary Dance, 2002 WL 1467852 (2nd Cir., 2002)

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