What's in a Name? Establishing and Maintaining Trademark and Service Mark Rights
David A. Westenberg, 42(1): 65–89 (Nov. 1986)
A trademark or service mark is a unique proprietary right for several reasons. A mark never wears out; a mark becomes more valuable with use; and a mark is a reasonably liquid asset. Used properly, a trademark or service mark can become an intangible asset of incalculable value, but careless usage can result in the loss of all rights. This Article presents guidelines for establishing and maintaining registrable and protectible rights in trademarks and service marks.
The Effect of Corporate Acquisitions on the Target Company's License Rights
Elaine D. Ziff, 57(2): 767 (Feb. 2002)
Mergers and acquisitions are increasingly driven by the desire to obtain the target company's intellectual property rights-namely, patents, copyrights, and trademarks. Where, however, such rights are merely licensed to the target company, the acquirer must consider whether such rights will survive the transaction intact. The transferability of intellectual property license rights is not is not governed solely by general contract principles, due to federal policies that support authors and inventors. This Article examines the specialized body of precedent dealing with the assignability of intellectual property license rights under a variety of acquisition structures, including asset sales, mergers, and stock purchases. Understanding the factors that have influenced courts in this area will assist practitioners in assessing the risk of whether the target company's license rights will be adversely affected by the consummation of the transaction.
Trademark Licensing in the Shadow of Bankruptcy
James M. Wilton and Andrew G. Devore, 68(3): 739-780 (July 2013)
When a business licenses a trademark, transactional lawyers regularly advise that if the trademark licensor files for bankruptcy, the licensee could be left without a right to use the mark and with only a bankruptcy claim for money damages against the licensor. Indeed, the ability of a trademark licensor to reject a trademark license and to limit a licensee’s remedies to a dischargeable claim for money damages has been a significant risk for licensees for twenty-five years based on the Fourth Circuit case, Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc. This result is grounded in the Bankruptcy Code prohibition on remedies of specific performance for non-debtor parties to rejected contracts and is in accord with Bankruptcy Code policy of affording debtors an opportunity to reorganize free of burdensome contracts. In the summer of 2012, however, the Seventh Circuit, in its decision Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, held that a non-debtor trademark licensee retains rights to use licensed trademarks following rejection of the contract by the debtor-licensor. The decision, derived from a pre-Bankruptcy Code paradigm for understanding the rights of non-debtors under rejected executory contracts that convey interests in property, creates a circuit split over the implications of trademark license rejection. This article asserts that the Sunbeam Products case misconstrues the rights of a trademark licensee as a vested property right and is therefore incorrect under both the holding of the Lubrizol case and the pre-Bankruptcy Code paradigm on which the Sunbeam Products case relies.