Page 2 - Intellectual Property

S2 | MONDAY, APRIL 4, 2016 | Intellectual Property
| NYLJ.COM

By Catherine Holland

Trademark Licensing:

Social Media and Quality Control

Trademark licensors are scrambling to

keep up with the evolving use of social
media as a tool for business advertis-
ing. As technology changes, so must the
provisions in a trademark license.
A fundamental tenet of trademark law is
that the trademark owner must control the
use of her mark. This is fairly simple when
the trademark owner sets up her own shop
and does her own advertising.

Quality control can become more chal-
lenging when the owner licenses others to
manufacture goods or offer services using
her mark. In those situations the owner must
have a licensing agreement which contains
quality control provisions and the right to
terminate the agreement if the licensee does
not comply with those provisions.
If there is no quality control, it is called

a “naked license.” As intriguing as this con-
cept sounds, it might be more appropriate
to call it a “kiss of death license.” A licensor
could lose all of her rights in a trademark
if she has not controlled her licensee’s use
of her trademark. This means that anyone,
including her licensee, can use the mark
freely without paying royalties to the former

trademark owner. Brrrrrr. No licensor wants
to be on that particular nude beach.
An equally serious problem is that a
licensee’s unsupervised use of a mark in

CATHERINE J. HOLLAND is a partner at Knobbe Mar-
tens in Orange County, Calif. She is experienced in all
aspects of domestic and international trademark,

unfair competition and copyright matters.

S4
S6 S8 S10

Breaking Down Head in the Cloud:
From Eficient Licensing
Post-Grant Proceedings
Four Big Changes The Insider Threat
To Eficient
Complicate Pharmaceutical

In Patent Litigation To a Company’s Trade Secrets Infringement
Litigation
by Michael A. Jacobs by Bradley A. Hoppe
by David Kappos, Richard Ludwin by A. Antony Pfeffer
and Richard S.J. Hung
and Heath J. Szymczak
and Marc Ehrlich
and Catrina Wanning Wang

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