In this week's post, we look at how recent holdings by courts in trademark cases have gone the opposite way of precedent previously set by other courts.  The language in a cease and desist letter may now be analyzed by courts to determine whether or not they create a justiciable controversy and subsequently allow for declaratory judgments.

Also, an overview of the Purchase Agreement, a definitive agreement governing all aspects of the transaction, once a Knowledge-Based Enterprise (“KBE”) seller and a prospective buyer have agreed on the key elements of a transaction. Part of a series covering the key elements involved in the sale of IP-based and professional services businesses.

Is Your Cease and Desist Merely a Bluff?

The use of cease and desist letters are common tools for intellectual property counsel to use to ward off potential infringers as well as to assert rights in particular trademarks.  Some court holdings, however, have put cease and desist letters and their authors on notice by analyzing whether the language in the letters create a true justiciable controversy that allows for declaratory judgments in trademark cases.

Declaratory judgments are often requested by parties that receive the cease and desist letters so that they may continue to use their mark without fear of infringement and not have to worry about rebranding or registering and protecting an entirely new mark.

Recent decisions in trademark cases have raised issues about declaratory judgments as the latest holdings contrast with previous precedent set by other courts and also bring new focus to the specific wording of cease and desist letters.  This is important, because companies and legal counsel must now be more careful about the exact content of the cease and desist letters in anticipation of the potential for declaratory judgement. 

Read more here.

Transferring Intangible Assets: Playbook for Selling the Knowledge-Based Enterprise - Purchase Agreement

Once a Knowledge-Based Enterprise (“KBE”) seller and a prospective buyer have agreed on the key elements of a transaction, and after (or more often, during) the due diligence process, legal counsel for the buyer and seller will begin drafting the Purchase Agreement, a definitive agreement governing all aspects of the transaction.  

The main focus of drafting definitive deal agreements for the transaction will be on the Purchase Agreement, but it could also include a number of additional documents related to the transaction. However, the type of ancillary agreements needed vary greatly from deal to deal, so this article concentrates on the primary focus agreement, except for a couple of the most common additional agreements involved in a KBE transaction.

Read the full article here, which is the 7th article in an 8-part series on transferring intangible assets. Authored by Jim Chester, Partner at Klemchuk LLP.

Click to read the previous Weekly IP Buzz on Thriving Attorney.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.