Document Type

Article

Publication Date

3-2008

Journal Title

Michigan State Law Review

ISSN

1087-5468

Abstract

The conditions upon which trademarks should be "traded" --that is, assigned and licensed in the marketplace--have traditionally been at the center of the trademark debate. Historically, based upon the assumption that trademarks can be protected only as conveyers of commercial information and as symbols of business goodwill, trademark law has prohibited trading in trademarks "in gross" and has required that trademarks be assigned "with their goodwill" and licensed only as long as licensors control the quality of the products. Yet, these criteria have been proven controversial and difficult to enforce because they hinge on two concepts that are ambiguous and difficult to frame in a legislative context: "trademark goodwill" and "quality control." Not surprisingly, the result of such uncertainty has been inconsistent case law and much ambiguity as to what currently represents a valid assignment and a valid license. This Symposium Essay summarizes my previous scholarship arguing against these inconsistencies and advocating for a change in the current standards. Specifically, this Essay repeats, in a shorter format, the proposal of the adoption of new rules that would allow trading of trademarks "in gross"--that is, assignment "with or without goodwill" and licensing "with or without control." In support of these changes, this Essay reiterates that the current rules are negatively affecting market competition and promoting unnecessary legal actions. Building upon the recent judicial trend, this Essay concludes repeating my previous positions that the courts should assess the validity of assignments and licensing by focusing directly on the result of the agreements at issue-whether the use of the assigned or licensed marks will confuse or deceive the public.

First Page

345

Last Page

366

Volume Number

2008

Issue Number

1

Publisher

Michigan State University College of Law

Included in

Law Commons

Share

COinS
 
 

To view the content in your browser, please download Adobe Reader or, alternately,
you may Download the file to your hard drive.

NOTE: The latest versions of Adobe Reader do not support viewing PDF files within Firefox on Mac OS and if you are using a modern (Intel) Mac, there is no official plugin for viewing PDF files within the browser window.