First Interstate Bancorp v. Stenquist
United States District Court for the Northern District of California
16 U.S.P.Q.2d 1704 (1990)
First Interstate Bancorp (Bancorp) (plaintiff) registered "First Interstate Banks" with California and later with the federal PTO. Stenquist (defendant) had independently used "First Interstate Realty" since 1981 without knowledge of Bancorp's use, and in 1988 licensed that name to Carson under an agreement requiring only that Carson be a broker in good standing, with no quality-control provisions, and emphasizing that the two businesses would remain separate; Stenquist never actually supervised or controlled Carson's use of the mark. Bancorp sued Stenquist for infringement, Stenquist counterclaimed for infringement of his own mark, and Bancorp moved for partial summary judgment that Stenquist had abandoned his trademark rights through the Carson license.
Whether a trademark holder who licenses the trademark without maintaining any control over the quality of the licensee's goods or services abandons rights to the trademark.