Trademark Assignment 'With Goodwill': A Concept Whose Time Has Gone

72 Pages Posted: 11 Mar 2005  

Irene Calboli

Texas A&M University School of Law; Singapore Management University - School of Law

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.

Keywords: Trademark, assignment, goodwill, intellectual property

JEL Classification: K00, K2

Suggested Citation

Calboli, Irene, Trademark Assignment 'With Goodwill': A Concept Whose Time Has Gone. Florida Law Review, Vol. 57, p. 771, 2005. Available at SSRN: https://ssrn.com/abstract=676910 or http://dx.doi.org/10.2139/ssrn.676910

Irene Calboli (Contact Author)

Texas A&M University School of Law

1515 Commerce St.
Fort Worth, TX 76102
United States

Singapore Management University - School of Law ( email )

55 Armenian Street
Singapore, 179943
Singapore

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