## Facts

- AMTEL (also styled AM/TEL) was used for local telephone directories in Ohio and was never federally registered.
- Herb Burkhalter originated the AMTEL-branded directory business and sold it in 1994 to Steven M. Brandeberry, who operated through American Telephone Directories, Inc.
- In 2002, Brandeberry sold the AMTEL directory business to Barney White; the signed contract on record transferred the business in full.
- White later registered AMTEL as an Ohio trade name and in 2007 sold the business in its entirety to Yellowbook Inc.
- After White’s state trade-name registration expired, Brandeberry in 2009 started a competing directory business using AMTEL in the same counties where Yellowbook operated and obtained his own state registration.
- Yellowbook sued for Lanham Act infringement and related state-law claims and asserted tortious interference; Brandeberry counterclaimed for defamation.
- The district court treated the 1994 transaction as giving both Brandeberry (individually) and American Telephone rights in the mark, concluded the 2002 sale transferred only a nonexclusive interest, and largely rejected Yellowbook’s infringement theory as to Brandeberry personally; it also denied Yellowbook attorneys’ fees.

## Issues

1. Whether the 1994 acquisition documents and course of dealing created joint ownership of the AMTEL mark between Brandeberry individually and his corporation.
2. Whether the 2002 sale transferred exclusive ownership of the AMTEL mark and its goodwill to White (and thus to Yellowbook as successor).
3. Whether any retained trademark interest by Brandeberry was abandoned through nonuse and transfer of goodwill.
4. Whether Yellowbook was entitled to injunctive relief, damages, and attorneys’ fees under the Lanham Act.

## Decision

- The Sixth Circuit reversed.
- The court held the 1994 transaction could not be read to create joint ownership, and trademark law would not allow joint ownership on these facts.
- The 2002 agreement transferred exclusive ownership of the AMTEL mark with the business and its goodwill to White; White’s later sale conveyed those rights to Yellowbook.
- Even if Brandeberry retained any residual interest after 2002, he abandoned it through nonuse and the transfer of the associated goodwill.
- The case was remanded for entry of injunctive relief and for determination of damages.
- The denial of attorneys’ fees was reversed and remanded for at least a partial fee award.

## Legal Principles

- Ownership of an unregistered mark is determined by priority of use and transfers with the goodwill of the business to which the mark pertains.
- A trademark assignment must include the associated goodwill; a transfer of the business as a going concern supports assignment rather than a mere license.
- Trademark “joint ownership” is generally disfavored where it would prevent the mark from serving as a single-source identifier.
- Trademark rights may be abandoned by nonuse combined with intent not to resume use; later attempts to restart use do not revive abandoned rights against a successor that acquired the goodwill.
- State trade-name registration does not defeat earlier-acquired common-law trademark rights based on continued use and valid assignment.

## Conclusion

The Sixth Circuit concluded that Yellowbook, as successor to the AMTEL directory business and its goodwill, held exclusive rights to the AMTEL mark in the relevant Ohio markets; Brandeberry’s renewed use of AMTEL after selling the business was infringing and, in any event, any residual rights were abandoned, requiring an injunction, damages proceedings, and reconsideration of attorneys’ fees.


Yellowbook Inc. v. Brandeberry, 708 F.3d 837 (6th Cir. 2013)