Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

How to Assign a Trademark

 Today, I will be answering a common question that I received which is how to effect a trademark assignment.  And before I get going on that, let’s talk about what a trademark assignment is.  Sometimes, people get confused between a trademark license and a trademark assignment, whereas a trademark owner retains ownership and merely licenses use to another in a trademark license arrangement, a trademark assignment essentially transfers ownership from the original trademark owner to a second subsequent owner. However, in order to do that, there are certain requirements that must be met under trademark law.

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With: Brian A. Hall

Sponsored by: Traverse Trademark Law

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How to Get a Trademark License

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration. 

This is attorney Brian Hall with Traverse Legal, PLC, a law firm representing licensors and licensees in trademark matters throughout the United States.  Today, I will be answering the question of how to get a trademark license.

Play: How to Get a Trademark License
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With: Brian A. Hall

Sponsored by: Traverse Trademark Law

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Trademark Licensing: Trademark Owners Must Maintain Control and Quality

The Seventh Circuit affirms abandonment of mark as a result of naked licensing:

In the matter of Eva’s Bridal Ltd. v. Halanick Enters., Inc., “Eva’s Bridal”, a bridal shop established in Chicago in 1966 by Eva Sweis, was sold to the defendant for $10, subject to a $75,000 licensing agreement for use of the name and mark “Eva’s Bridal.” After the license agreement expired in 2002, the defendant continued to use the name and mark without paying the $75,000 licensing fee under the expired agreement.  In 2007, the plaintiff, Eva’s Bridal Ltd, filed suit under the Lanham Act, but the case was dismissed because the court ruled that the plaintiff had abandoned the mark by engaging in naked licensing.  Put another way, the plaintiffs allowed the defendant to use the mark without maintaining control and quality of the goods, services or business on which the mark was being used.  On appeal, the Seventh Circuit affirmed the lower court’s decision stating that since the plaintiff did not exercise any control over the defendant’s operation of the shop, be it through licensing or consistent quality, that the plaintiff had lost the right to enforce the mark.

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.

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.