Welsh v. Big Ten Conference, Inc. (11/21/08)

The court granted in part and denied in part Big's motion to dismiss Welsh's amended complaint and request for attorney fees. Welsh's theory was that he owned the rights to certain trade secrets (namely the "Big Ten Network" and the business ideas it encompassed as described in Welsh's business plan) and that Big obtained its registration for the "Big Ten Network" mark by not telling the PTO that Welsh had rights in those trade secrets. Even assuming that Welsh established trade secrets to the name and associated concept, those rights did not automatically translate into trademark rights. Welsh could not assert a trademark right in his idea for the name or content of "Big Ten Network." Welsh's actions did not rise to the required level of "use" to trigger protection under the Lanham Act and did not give rise to a colorable claim of ownership of the mark that rendered Big's failure to disclose Welsh's prior use of the term a violation of the Lanham Act.