Trademark Transactions: in the United States: Towards De Facto Trading in Gross?

Document Type

Book Section

Publication Date

2-2016

ISBN

9781783472123

DOI

10.4337/9781783472130.00037

Abstract

In this chapter, I elaborate on the current laws regarding trademark transactions in the United States (U.S.). In particular, I address the rules and requirements that apply to trademark assignments and trademark licensing agreements. Based on the principle that trademarks are not protected as property rights, U.S. trademark law has historically forbidden trading trademarks ‘in gross’. As a result, trademarks must be assigned with the associated goodwill of the business to which the marks belong and, in licensing agreements, licensors must control the quality of the products that are produced by the licensees under the license agreement. Since their introduction, however, these rules have proven ambiguous, primarily due to the lack of clear definitions as to what constitutes ‘trademark goodwill’ and ‘quality control’. As a result, the courts have applied these rules inconsistently. Furthermore, because of the ambiguity surrounding these concepts, the courts have de facto moved away from a strict application of these rules and have instead assessed the validity of trademark transactions based primarily on whether the quality of the products at issue remains consistent and whether or not the public is confused as to this quality

First Page

439

Last Page

461

Num Pages

23

Series

Elgar Intellectual Property Law and Practice series

Publisher

Edward Elgar Publishing, Inc.

Editor

Irene Calboli and Jacques de Werra

Book Title

The Law and Practice of Trademark Transactions - A Global and Local Outlook

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