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Michael Hobbs, a partner in Troutman Pepper’s Intellectual Property Practice Group, is quoted in the Bloomberg Law article, “Luka Doncic Bid to Get Trademark Back From Mom a Legal Jump Ball.”
“It’s one of those statutory areas where they didn’t seem to contemplate whether consent could be revoked,” trademark attorney Michael D. Hobbs Jr. of Troutman Pepper Hamilton Sanders LLP said. “I couldn’t find a case where duration of consent has really been litigated.”
…
Fingerhut and Hobbs said it’s possible the Trademark Trial and Appeal Board finds that consent under 2(c) can be revoked—perhaps even by successors of a deceased person—as nothing clearly indicates otherwise. But Hobbs noted that the five-year renewal of a mark requiring 2(c) permission doesn’t require the referenced-individual to reaffirm consent, and Marino and LaFrance strongly doubted that consent could be revoked.
…
Hobbs said it’s “theoretically” possible Doncic could lose a 2(c) claim yet win a false association claim, but also had doubts.
“If you consent, how could it be a false association?” Hobbs said. “God, this is strange.”
The nature of the agreement between Doncic and his mother could play a significant role in the case, some attorneys said. It’s unclear whether there was any written contract beyond the “Consent to Register” that Doncic signed, broadly approving his mom’s registration and use. Hobbs said that as with bands that have a falling out, that lack of contractual language may leave details like the scope, term, and revocability of any rights intended by the parties uncertain.
Fingerhut and Hobbs both pointed out that a valid contract requires consideration—both parties getting something from the deal.
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