What If, After All, Trademarks Were ‘Traded in Gross’?

The conditions upon which trademarks should be traded - that is, assigned and licensed in the marketplace - have traditionally been at the center of the trademark debate. Historically, based upon the assumption that trademarks can be protected only as conveyers of commercial information and as symbols of business goodwill, trademark law has prohibited trading in trademarks in gross and has required that trademarks be assigned with their goodwill and licensed only as long as licensors control the quality of the products. Yet, these criteria have been proven controversial and difficult to enforce because they hinge on two concepts that are ambiguous and difficult to frame in a legislative context: trademark goodwill and quality control. Not surprisingly, the result of such uncertainty has been inconsistent case law and much ambiguity as to what currently represents a valid assignment and a valid license. This Symposium Essay summarizes my previous scholarship arguing against these inconsistencies and advocating for a change in the current standards. Specifically, this Essay repeats, in a shorter format, the proposal of the adoption of new rules that would allow trading of trademarks in gross - that is, assignment with or without goodwill and licensing with or without control. In support of these changes, this Essay reiterates that the current rules are negatively affecting market competition and promoting unnecessary legal actions. Building upon the recent judicial trend, this Essay concludes repeating my previous positions that the courts should assess the validity of assignments and licensing by focusing directly on the result of the agreements at issue-whether the use of the assigned or licensed marks will confuse or deceive the public