Table of Contents

The Law and Practice of Trademark Transactions

The Law and Practice of Trademark Transactions

A Global and Local Outlook

Elgar Intellectual Property Law and Practice series

Edited by Irene Calboli and Jacques de Werra

The Law and Practice of Trademark Transactions is a comprehensive analysis of the law governing trademark transactions in a variety of legal and business contexts, and from a range of jurisdictional and cross-border perspectives. After mapping out the international legal framework applicable to trademark transactions, the book provides an analysis of important strategic considerations, including: tax strategies; valuation; portfolio splitting; registration of security interests; choice-of-law clauses; trademark coexistence agreements, and dispute resolution mechanisms. Key features include: • A comprehensive overview of legal and policy-related issues • A blend of approaches underpinning strategic considerations with analytical rigour • Regional coverage of the key characteristics of trademark transactions in a range of jurisdictions • Authorship from renowned trademark experts Practitioners advising trademark owners, including trademark attorneys, will find this book to be an invaluable resource for their practice, particularly where cross-border issues arise. It will also be a key reference point for scholars working in the field.


Jane C. Ginsburg

Subjects: law - academic, intellectual property law, law -professional, intellectual property law


Every U.S. intellectual property practitioner knows that copyright and trademarks often overlap, particularly in visual characters. The same figure may qualify as a pictorial, graphic or sculptural work on the one hand, and as a registered (or at least used) trademark on the other. The two rights, though resting on distinct foundations, tend to be licensed together. Trademarks symbolize the goodwill of the producer, and are protected insofar as copying that symbol is likely to confuse consumers as to the source or approval of the goods or services in connection with which the mark is used. For famous marks, the dilution action grants a right against uses of the mark that are likely to ‘blur’ or ‘tarnish’ the distinctiveness of the mark, even in the absence of confusion. In either event, the object of protection is the producer’s goodwill (in theory, as a proxy for consumer source identification), not (again, in theory) the mark per se. Copyright, by contrast, is a right ‘in gross’ allowing its owner to prohibit the copying of the work without regard to source confusion. Copyright protects the work of authorship itself, not the identification of that work with a single, if anonymous, source of origin. Pursuant to the Constitutional grant to Congress of power to secure authors’ exclusive rights ‘for limited times’, copyright lasts for a term of years; trademarks are protected for so long as they continue to represent a single producer’s goodwill. Subject to that prerequisite, registered trademarks may be renewed indefinitely.

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