No Reconsideration of Trademark Decision

An Alexandria U.S. District Court declines to reconsider its Nov. 8 decision entering judgment for defendant travel agency in this dispute over transfer of a trademark and a business that specializes in travel arrangements for Muslims in the U.S. who seek to go on pilgrimages to Mecca and Medina.

This case arose from the disputed conveyance of Light Star Travel Agency Inc. and its trademark, a “shadow star.” Plaintiff alleged trademark infringement, false designation of origin, passing off and false advertising. Defendant counterclaimed for trademark infringement, unfair competition, passing off, false advertising and cancellation of plaintiff’s registration of the Mark.

Plaintiff argues, among other points, that a trademark cannot be conveyed independent of stock or of the tangible assets of a corporation. This argument is well and good, but irrelevant here. For plaintiff’s argument that the trademark was transferred independent of company stock to illustrate an error of law, plaintiff would have had to prove an agreement to assign, in gross, the trademark from defendant to plaintiff. Plaintiff did not do so, nor did it attempt to do so. Plaintiff alleged one agreement that, according to plaintiff’s allegations, would transfer “the business,” i.e., defendant agency, along with the Mark and its other assets. Plaintiff did not allege two agreements, one for the business and one for the Mark, but one all-encompassing transaction, agreed to by Mr. Alashi on behalf of plaintiff, and F. Mushtaha, as representative of plaintiff. The court found insufficient evidence to find that plaintiff carried its burden of proving such an agreement. It declines to revisit the issue here; this argument asserts a novel theory not presented at trial.

Motion for reconsideration denied.

US Gates Int’l LLC v. Light Star Travel Agency Inc. (Cacheris, J.) No. 1:10cv32, Dec. 22, 2010; USDC at Alexandria, Va. VLW 011-3-004, 10 pp.