Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters, and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing, and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to create authoritative, trustworthy, & distinctive content. Usually, this content is featured as videos posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

As the authoritative force in Employment Law, it only seemed right to introduce one of the many upcoming series where we remain persistent in introducing a variety of topics, which will look to not only educate but also deliver in a sense that only Miletti Law® can. In this regard, this is a very short blog and Part XIII of our ongoing series on the “Fundamentals of Trademarks,” where a number of continuing blogs have been dedicated to exploring trademarks in detail & depth. In Part XII, we hammered on “Improper Assignment/Assignments in Gross – The Second Way through which Trademark Rights Could be Lost or Terminated,” where we have concluded our discussion on the four ways through which trademark rights can be lost or terminated. In the past three blogs under this series, we have hammered on “genericide,” “abandonment,” “improper assignment/assignments in gross,” respectively, and now comes “naked licensing,” the final in the list. In this regard, this blog is titled “Losing/Terminating Trademark Rights Through “Naked Licensing” and is a discussion of the concept of “naked licensing” and how it could lead to the loss or termination of trademark and ownership rights.

Naked Licensing – The Third Way through which Trademark Rights Could be Lost or Terminated

When licensing a mark, a licensor is supposed to make sure that sufficient quality control over the product(s) or good(s) sold under the mark has been retained. When this does not happen, then naked licensing occurs. The logic behind this notion is that the quality level expected from the product or good sold under a mark by consumers is not represented by the mark if the trademark owner is deficient in sufficient quality control. Just like in all the other ways discussed in the past three blogs under this series, a trademark owner may have to abandon their mark and forfeiture their trademark rights as a result of naked licensing.

Generally, when determining and evaluating the issue of naked licensing, courts consider whether the trademark owner has sufficient quality control. Thus, in order to defeat a naked licensing claim, a licensor must demonstrate sufficient quality control over all activities of the licensee relating to the mark by showing that they:

  • Had actual control over the quality of the use of the trademark
  • Maintained quality by reasonably relying on the licensee-and-
  • Controlled the quality of the trademark’s use by retaining contractual rights.

Having exhausted that list of ways through which trademark rights can be lost or terminated, we shall now switch gears and shift our attention to the issue of how the trademark law and issues related to trademark rights and infringement are enforced. To ensure that we keep you ahead of the game, we shall hammer on five key aspects of trademark enforcement, including “Dilution,” “Initial Interest Confusion,” “Reverse Confusion,” “Likelihood of Confusion,” and “Standing to Sue.” For the purposes of clarity and delivery of content, we shall discuss and hammer on each of these aspects of trademark enforcement in an individual blog. In this regard, we shall start with the first in the next blog titled “Dilution Law and its Role in Trademark Enforcement,” which will be Part XIV of the series.

Until then, stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!

Always rising above the bar,

Isaac T.,

Legal Writer & Author.