Center for Internet Law – Portland

Recent Legal Developments


TracFoneWireless v. Clear Channel Communications. U.S. District Court- Florida . 2015 WL 1954075 (2015).
Court holds no implied trademark license because no specifics, either express or implied, agreed upon regarding permitted use of trademarks.

Plaintiff TracFone is a large-scale provider of pre-paid wireless telephone services. Defendant Clear Choice markets TracFone products through five websites it maintains under six domain names. Court rejects Clear Choice is entitled to use TracFone’s trademarks under claimed “implied license” allegedly granted as part of Clear Choice’s dealer/distributor agreement with Cellucom, an agent for TracFone. Court finds no such implied license can be inferred from any specific conduct of Plaintiff.

Court holds that a license, either express or implied, is inherently a “limited grant of authority to use a trademark in a defined way” and no such specificity in the alleged implied license from TracFone to Clear Choice and therefore no indication Clear Choice’s use of TracFone’s trademark as domain name by Clear Choice was specifically licensed by TracFone. Places sharp boundaries upon asserted “implied licensing” of trademarks.

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