Swallow Ski Company, a Japanese manufacturer of ski and snowboarding equipment, recently filed a complaint in Oregon federal district court against Snowjam LLC, a Massachusetts company. In 1996, Swallow Ski entered into an oral licensing and distribution agreement with Snowjam. Snowjam sells and distributes Zuma snowboards, but is now under new ownership. On May 23, the original owner of Snowjam, after he had sold the company, memorialized the oral licensing agreement with a written agreement executed by him and Swallow Ski. The agreement expressly provides that the licensing of the trademark would not survive any change of ownership. The complaint alleges that because of the non-assignment provision of the licensing agreement, use of Swallow Ski’s Zuma trademark results in false designation of origin and breach of contract.

Swallow Ski v. Snowjam
Swallow Ski just filed a use-based trademark registration application on May 13, claiming use since 1996. Snowjam filed its own application about two months earlier on March 23, 2011, claiming use since 2008.