August 25, 2009

Green Car Battles: Toyota and GM Jockeying for Pole Position in IP Licensing (Part 2 of 2)

Volt_logo_web.jpg The Volt can run on electricity alone, but requires lots of charging so who knows if such mileage results are remotely attainable for the average driver. The Volt’s range on electric-only propulsion is 40 miles when it is completely charged. Theoretically, you could get infinite mileage for as long as the battery pack has enough power.

I think that potential licensees and car buyers should be wary of such lofty projections and also consider the fact that the development time of the Volt was considerably shortened, while the Prius is tried and true and has been around for nearly a decade!

I am skeptical that the quality and reliability of the Volt will be adequate as its creation appears to be a knee-jerk reaction to the giant spike in gas prices. Unless the Volt ends up being bulletproof and achieves insane fuel economy, Toyota will likely be the victor in this fight.

Do you think the Volt will pan out? Please post your comments or contact me to discuss!

November 12, 2008

Don't Get Caught Naked: Losing Trademark Rights Through "Naked Licenses"

Trademark rights continue as long as the owner continues to use it consistently to identify goods or services. A trademark owner can lose rights to the trademark through abandonment of the mark, non-use of the mark, or by granting naked licenses. Tally-Ho Inc. v. Coast Community College District, 889 F.2d 1018, Footnote 6 (11th Cir. 1989).

Getting our minds out of the gutter, "naked licenses" have nothing to do with nudity. Naked licenses are when a trademark owner licenses the use of a trademark without controlling the quality of the goods or services provided by the licensee. If consumers cannot expect consistency of goods or services associated with a trademark, in effect, consumers will cease to attribute those products with that mark. This is essentially the same as non-use of a trademark.

Quality control is vital in trademarks and licensing, which is why many franchises thrive. The intolerance for anomalies assures consumers that they can depend on the goods and services to be exactly as they expect. This high level of predictability is the secret to many franchises' success.

So trademark owners, don't be caught with your pants down when licensing the your rights. Ensure that your licensees are delivering the same quality of goods and services that you have originally attached to your trademark.

Labels: , , , ,

November 10, 2008

Is Monogamy Right for your Patent or Trademark License?

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

Labels: , , , , ,