Home | Databases | WorldLII | Search | Feedback Edited Legal Collections Data

Calboli, Irene --- "TRADEMARK TRANSACTIONS IN THE UNITED STATES: TOWARDS A DE FACTO ACCEPTANCE OF TRADING IN GROSS?" [2016] ELECD 371; in Calboli, Irene; de Werra, Jacques (eds), "The Law and Practice of Trademark Transactions" (Edward Elgar Publishing, 2016) 439

Book Title: The Law and Practice of Trademark Transactions

Editor(s): Calboli, Irene; de Werra, Jacques

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781783472123

Section: Chapter 18

Section Title: TRADEMARK TRANSACTIONS IN THE UNITED STATES: TOWARDS A DE FACTO ACCEPTANCE OF TRADING IN GROSS?

Author(s): Calboli, Irene

Number of pages: 23

Abstract/Description:

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. My analysis proceeds as follows. In Section B, I offer a brief primer of trademark theory. In Section C, I examine the rule on trademark assignment.