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Condominium Conversion – Transfer/Assignment of Trademark Rights

By: Derek Hawkins//August 29, 2019//

Condominium Conversion – Transfer/Assignment of Trademark Rights

By: Derek Hawkins//August 29, 2019//

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WI Court of Appeals – District III

Case Name: Ted Ritter, et al. v. Tony Farrow, et al.

Case No.: 2018AP1518

Officials: Stark, P.J., Hruz and Seidl, JJ.

Focus: Condominium Conversion – Transfer/Assignment of Trademark Rights

This case is before us a second time. In 1986, Ted and Carolyn Ritter d/b/a Bibs Resort, Inc. (the Ritters) purchased a lakefront resort property and named it “Bibs Resort.” Twelve years later, they converted their resort to a condominium, using the name Bibs Resort Condominium (the Condominium). The legal name of the statutorily required association of condominium owners was Bibs Resort Condominium Inc. (the Association). In 2006, the Ritters sold to Tony and Arlyce Farrow, d/b/a Farrow Enterprises (the Farrows), the Ritters’ property management business, called Bibs Resort, along with two of the thirteen units that comprised the Condominium (the 2006 transaction). A dispute ensued over the Ritters’ continuing use of the name “Bibs Resort” after the transfer, and in 2012 a jury found the Ritters liable for infringing on the Farrows’ trademark rights to that name.

On appeal, the Ritters argued that the circuit court erred by denying their motion to require joinder of the Association. We agreed, concluding the Association had a valid interest in claiming it had acquired independent rights to the name “Bibs Resort” prior to 2006 and that, consequently, the rights to the name could not have been transferred to the Farrows because the Association was not a party to the 2006 transaction. See Ritter v. Farrow, Nos. 2012AP781 and 2013AP927, unpublished slip op. ¶37 (WI App June 24, 2014) (Ritter I). We therefore remanded the matter for further proceedings on the Farrows’ trade name claim. Id., ¶55.

On remand, the circuit court granted summary judgment in favor of the Association and the Ritters. The court concluded, in relevant part, that: (1) the name “Bibs Resort” “became a part” of the Association at the time of the condominium conversion; and (2) the Association’s interest in the name “Bibs Resort” prevented the Farrows from acquiring exclusive ownership of the rights to the use of the name as part of the 2006 transaction. The Farrows now appeal, arguing the circuit court erred by concluding that the Association acquired any rights to the name “Bibs Resort” as part of the condominium conversion. In support, they argue that Wisconsin’s Condominium Ownership Act affects only real property. See WIS. STAT. ch. 703 (2017-18). Thus, the Farrows contend the condominium conversion could not have had any effect on the Ritters’ intangible personal property—i.e., their trademark rights.

We conclude the Ritters’ conduct in establishing the Association and converting Bib’s Resort to a condominium—taken together with both the Ritters’ and the Association’s subsequent actions which support Carolyn Ritter’s averment that the Association owned the name “Bibs Resort”—manifested an implied agreement to transfer the name “Bibs Resort” to the Association. Because the Ritters did not own the name “Bibs Resort” in 2006, they could not have sold the name to the Farrows as part of the 2006 transaction. Accordingly, we affirm the circuit court’s grant of summary judgment.

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Derek A Hawkins is trademark corporate counsel for Harley-Davidson. Hawkins oversees the prosecution and maintenance of the Harley-Davidson’s international trademark portfolio in emerging markets.

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