Publication Type

Journal Article

Version

Publisher’s Version

Publication Date

9-2005

Abstract

Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legislative context: trademark goodwill. Additionally, regardless of this rule, trading in trademarks has been a recurrent practice in the business world, and trademark practices have traditionally provided instruments to assist this trade. Unsurprisingly, the consequence has been inconsistent case law. More recently, the discrepancy between the rule and its enforcement has escalated, with the courts de facto drifting away from the goodwill requirement in assessing the validity of trademark assignments. Still, this trend has not established a clear path to what represents a valid assignment, and much confusion continues to surround the application of the rule. Arguing against this situation, this Article advocates for an amendment allowing free trademark transferability or assignment with or without goodwill. In support of this change, and despite common skepticism, this Article offers evidence that this amendment will not diminish but will likely foster consumer protection and competition in the marketplace.

Discipline

Intellectual Property Law | International Trade Law | Law

Research Areas

Intellectual Property and Technology-related Law

Publication

Florida Law Review

Volume

57

Issue

4

First Page

771

Last Page

842

ISSN

1045-4241

Identifier

10.2139/ssrn.676910

Publisher

Florida Law Review

Copyright Owner and License

Author

Creative Commons License

Creative Commons Attribution-Noncommercial-No Derivative Works 4.0 License
This work is licensed under a Creative Commons Attribution-Noncommercial-No Derivative Works 4.0 License.

Additional URL

http://www.floridalawreview.com/2010/irene-calboli-trademark-assignment-with-goodwill-a-concept-whose-time-has-gone/

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