Subject: RE: [DotGNU]proposal: DotGNU Trademark License
From: "Lawrence E. Rosen" <lrosen@rosenlaw.com>
Date: Sun, 14 Mar 2004 12:00:32 -0800

 Sun, 14 Mar 2004 12:00:32 -0800
James Michael DuPont wrote:
> Sorry for my late reply, I just noticed that today.
> Please excuse my ignorance, but what exactly do you mean by 
> "bare trademark license"? Can you give me some hints on what 
> to read up on?

Just a few hints. I don't have time to give comprehensive legal answers
about this topic now.

37 C.F.R. § 2.38(b-c) says:

   §2.38  Use by predecessor or by related companies.
   ....
   (b) If the mark is not in fact being used by the 
   applicant but is being used by one or more related 
   companies whose use inures to the benefit of the 
   applicant under §5 of the Act, such facts must be 
   indicated in the application.
   (c) The Office may require such details concerning 
   the nature of the relationship and such proofs as
   may be necessary and appropriate for the purpose 
   of showing that the use by related companies inures
   to the benefit of the applicant and does not affect
   the validity of the mark.

And 15 U.S.C. § 1127 says:

   Related company.  The term “related company” means 
   any person whose use of a mark is controlled by the
   owner of the mark with respect to the nature and 
   quality of the goods or services on or in connection
   with which the mark is used.

The problem for bare trademark licensing is the requirement that "the use by
related companies inures to the benefit of the applicant." The trademark
licensor must maintain control over the quality of the goods because it is
HIS trademark that brands those goods. A licensor cannot do that by simply
saying to a "related company" that "here is a license to my trademark." Will
the licensee apply the licensor's trademark on garbage (or crappy software)?
Would such a use of the trademark inure to the benefit of the trademark
licensor? Or is the bare trademark license a form of admission by the
licensor that the trademark doesn't matter much, and it doesn't serve a
proper trademark purpose?

/Larry Rosen

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