Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?

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 prope...

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Main Author: CALBOLI, Irene
Format: text
Language:English
Published: Institutional Knowledge at Singapore Management University 2016
Subjects:
Law
Online Access:https://ink.library.smu.edu.sg/sol_research/1602
https://search.library.smu.edu.sg/discovery/fulldisplay?docid=alma99135605402601&context=L&vid=65SMU_INST:SMU_NUI&lang=en&search_scope=Everything&adaptor=Local%20Search%20Engine&tab=Everything&query=any,contains,The%20Law%20and%20Practice%20of%20Trademark%20Transactions:%20A%20Global%20and%20Local%20Outlook&offset=0
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spelling sg-smu-ink.sol_research-35542016-05-13T02:06:06Z Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross? CALBOLI, Irene 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. 2016-01-01T08:00:00Z text https://ink.library.smu.edu.sg/sol_research/1602 info:doi/10.4337/9781783472130.00037 https://search.library.smu.edu.sg/discovery/fulldisplay?docid=alma99135605402601&context=L&vid=65SMU_INST:SMU_NUI&lang=en&search_scope=Everything&adaptor=Local%20Search%20Engine&tab=Everything&query=any,contains,The%20Law%20and%20Practice%20of%20Trademark%20Transactions:%20A%20Global%20and%20Local%20Outlook&offset=0 Research Collection Yong Pung How School Of Law eng Institutional Knowledge at Singapore Management University intellectual property law Law
institution Singapore Management University
building SMU Libraries
continent Asia
country Singapore
Singapore
content_provider SMU Libraries
collection InK@SMU
language English
topic intellectual property law
Law
spellingShingle intellectual property law
Law
CALBOLI, Irene
Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
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.
format text
author CALBOLI, Irene
author_facet CALBOLI, Irene
author_sort CALBOLI, Irene
title Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
title_short Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
title_full Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
title_fullStr Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
title_full_unstemmed Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
title_sort trademark transactions in the united states: towards a de facto acceptance of trading in gross?
publisher Institutional Knowledge at Singapore Management University
publishDate 2016
url https://ink.library.smu.edu.sg/sol_research/1602
https://search.library.smu.edu.sg/discovery/fulldisplay?docid=alma99135605402601&context=L&vid=65SMU_INST:SMU_NUI&lang=en&search_scope=Everything&adaptor=Local%20Search%20Engine&tab=Everything&query=any,contains,The%20Law%20and%20Practice%20of%20Trademark%20Transactions:%20A%20Global%20and%20Local%20Outlook&offset=0
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