Yellowbook, Inc. v. Brandeberry

If a trademark is owned in both a personal and corporate capacity, sale of the corporate interest in the mark does not mean it can be used in business by the seller.

Opinion (Boggs): Steven Brandeberry ("Brandeberry") sold his phonebook business ("AMTEL") in 2002. Yellowbook, a national publisher of yellow-page directories, bought the business in 2007. In 2009, Brandeberry started another phonebook, again using the name AMTEL. Yellowbook sued for trademark infringement. The district court ruled that since Brandenberry had bought the trademark in both a personal and corporate capacity, and sold only the corporate interest, both Yellowbook and Brandeberry retained partial rights to the name. Yellowbook appealed. The Court determined that Brandeberry did not retain a personal interest, because when Brandenberry purchased the business the license made no distinction between his personal and business interest in the trademark, and because he retained no goodwill from the use of the trademark after he sold it to Yellowbook. In addition, his non-use of the mark for six years exceeded the three year statute of limitations for an abandonment of a trademark. Finally, as a matter of policy, the Court disfavors joint ownership of trademarks. Accordingly, the Xourt REVERSED the grant of summary judgment for Brandeberry, and REMANDED for injunctive relief and damages against Brandeberry.