Proper Trademark License Required for Maintenance of Trademark Rights

The naked license defense to trademark infringement has been resurrected by the Ninth Circuit Court of Appeals.  In the trademark infringement case of FreecycleSunnyvale v. Freecycle Network, the court held that by permitting a naked license to the user of a trademark resulted in the loss of trademark rights due to lack of any control over quality for use of the trademark.  The case involved a claim brought by FreecycleSunnyvale, which was a local chapter of a national group formed to promote free recycling by providing an unwanted item to a stranger so that it can continue to be used for its intended purpose and therefore be recycled.  The local chapter was provided permission to use Freecycle Network’s FREECYCLE  trademark in connection with a Yahoo! Groups discussion forum.  Subsequently, there was a dispute over the use of the mark and FreecycleSunnyvale saw the declaratory judgment that Freecycle Network had abandoned the mark by engaging in naked licensing in permitting the use of its mark without the right to control, or exercising any actual control, over FreecycleSunnyvale’s local activities.

Facebook Close to Completing Trademark Registration of the Generic Term “Face”

How to trademark the name "face":  In a story first reported by TechCrunch, the United States Patent and Trademark Office (USPTO) has sent Facebook a Notice of Allowance for registration of the word “Face”. Facebook filed registration for the mark within the category of "telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.”

Apparently, there are only a few remaining barriers Facebook has left to perform before its registration of the “Face” trademark is complete.
1) Facebook has to pay the issue fee (no foreseeable problems here),
2) Facebook must file a sworn Statement of Use that it intends to use the trademark in conjunction with products or services in commerce, and
3) Facebook must demonstrate its actual use of the mark in commerce.

Trademark Owner Loses “Freecycle” Trademark in a Naked License Defense to Trademark Infringement

Trademark owner's beware.  Trademark infringement claims are often defended based on the "naked license" issue:  In an opinion handed down on November 24, the Ninth Circuit ruled that The Freecycle Network was estopped from asserting rights to the “Freecycle” trademark because it had abandoned its rights in the mark by failing to maintain quality control over its licensee’s use of the licensed trademark.