by Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. A trademark owner may grant a license to another to use the owner’s trademark. For example, following the San Francisco Giants’ World Series victory, the amount and type of products that featured the Giants trademark was mindboggling. Each of these products, if legally produced, would have obtained a license from the Giants to produce these goods. The consumer purchasing these goods and seeing the Giants’ trademark would have an idea as to the quality of the merchandise based on the trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee. This failure may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect. The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” Continue Reading Naked Licensing: Trademark Owners Beware
Affiliated Companies and Likelihood of Confusion
by Matt Massari
It may make business sense to put ownership of related trademarks in different subsidiaries. Under In re Wella A.G., 787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986), one can generally register similar marks owned by affiliated companies, as long as it’s done properly under the requirements of the Trademark Act. Continue Reading Affiliated Companies and Likelihood of Confusion
Naked Licensing and the Freecycle Case
By On November 24, 2010, the Ninth Circuit announced its decision in FreecycleSunnvale v. The Freecycle Network, a case involving the naked licensing defense to trademark infringement. FreecycleSunnyvale is a member group of The Freecycle Network, an organization devoted to facilitating recycling. The Freecycle Network was formed in March 2003 as an Arizona non-profit corporation dedicated to “free cycling,” which is “the practice of giving an unwanted item to a stranger so that it can continue to be used for its intended purpose rather than disposing of it.” The Freecycle Network maintains its own website and provides a directory of member groups as well as resources for volunteers to create new groups. It’s website also includes a section of etiquette guidelines for its member groups.Continue Reading Naked Licensing and the Freecycle Case
Can It Still Be On Like Donkey Kong.
In early November, 2010 Nintendo of America filed a trademark registration application for the mark ITS ON LIKE DONKEY KONG for, among other items, video games. Nintendo filed its mark on an intent to use basis in preparation for the launch of its video game, Donkey Kong Country Returns, for the Wii game system. The fact that Nintendo filed a trademark registration application for the upcoming release of a video game is not necessarily newsworthy. The interesting thing about Nintendo’s application is that the mark is a phrase that has become well entrenched in the common lexicon. This raises the question, will the common use of the phrase have an effect on Nintendo’s ability to register the mark?Continue Reading Can It Still Be On Like Donkey Kong.
Trademark Infringement: Factors Considered in Consumer Confusion
By: Jeff Pietsch
Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often, the third party will use a similar mark in a way that confuses consumers as to the source of the goods and services. For example, a fast food restaurant named “Wendi’s” would likely cause confusion with “Wendy’s.” Trademark infringement can occur only when it is likely that consumers will be confused as to the source of the goods. The purpose of this article is to examine the test and factors that courts use to determine if such infringement exists.Continue Reading Trademark Infringement: Factors Considered in Consumer Confusion