10-2863 Eva’s Bridal, Ltd., v. Halanick Enterprises, Inc.

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Intellectual Property
Trademarks; naked licensing

Where the holder of a trademark exercised no control over the appearance and operations of a licensee’s business, the trademark is abandoned.

“How much control is enough? The licensor’s self-interest largely determines the answer. Courts are apt to ask whether ‘the control retained by the licensor [is] sufficient under the circumstances to insure that the licensee’s goods or services would meet the expectations created by the presence of the trademark.’ Restatement §33 comment a (summarizing doctrine); see also id. at Reporter’s Note comment c (collecting authority, which we need not set out). It isn’t necessary to be more specific here, because plaintiffs did not retain any control—not via the license agreement, not via course of performance. A person who visited Eva’s Bridal of Oak Lawn and then Eva’s Bridal of Orland Park might not have found a common ambiance or means of doing business. And though the shops may have had many designers in common, this would not distinguish an ‘Eva’s Bridal’ shop from any other bridal shop; the trademark would not be doing any work if identical dresses could be purchased at Macy’s or Nordstrom, and the ‘Eva’s Bridal’ shops were dissimilar except for some products that many retailers carried. Safeway could not license its marks to a corner grocery store, while retaining no control over inventory, appearance, or business methods, just because every grocery store is sure to have Coca-Cola and Wheaties on the shelf.”

Affirmed.

10-2863 Eva’s Bridal, Ltd., v. Halanick Enterprises, Inc.

Appeal from the United States District Court for the Northern District of Illinois, Darrah, J., Easterbrook, J.

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