The Law and Practice of Trademark Transactions
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The Law and Practice of Trademark Transactions

A Global and Local Outlook

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.
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Irene Calboli


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.

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