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Derek Roller publishes “A Trademark Licensor's Dilemma”

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Bloomberg IP Law Report
Derek Roller, a member of the firm's Intellectual Property practice group, published “A Trademark Licensor's Dilemma” in Bloomberg IP Law Report on March 21. The article discusses two cases from the Ninth Circuit that illustrate the dangers of naked licensing.

The author points out that a trademark license that does not contain adequate quality control provisions is called a “naked license.” The consequence to the licensor of a naked license can be loss of the licensed trademark. But while the careful trademark owner is taking pains to clothe her trademark with adequate quality control provisions, these same provisions, involving the licensor as they do in the licensee's operations, may be the basis for successful assertion of liability against the licensor for the licensee's torts.

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