Tort Liability and Trademarks

It is worth remembering that one critical function of a trademark is to ‘‘guarantee’’ the quality of the products or services offered under the mark. As postulated by one group of authors:

[F]ew trademarks today function primarily as indicia of origin. Even where the maker is still known, a strong brand, today, is more a set of strong, favorable and unique associations, assuring an experience, than it is a reflection of a producer. A strong brand is a promise, an invisible contract with consumers, and a modern trademark is foremost a trustmark, not as to source but as to sensation.

To put this view in context, when a consumer hears about the wonderful service called ‘‘Uber’’ that is touted as more convenient and user-friendly than traditional taxi cabs, the consumer then will download and install the slick Uber app on his or her smartphone. The consumer then submits credit or debit card information to Uber, opens the app to see cartoon ‘‘uberX’’ cars circling the block in real time, and can request an uberX car (a privately owned car operated by a licensee of Uber). Upon its arrival (often within just a few minutes), the consumer enters the car and is driven to the desired destination. From this series of interactions and transactions, the consumer will associate the services being rendered (including the source and quality of those services) with Uber, not just with a private individual who happened to be driving the car and who is, in strict legal parlance, merely a licensee of Uber. While individual drivers can be rated by customers, the source-identifying function of the licensed trademark means that Uber, not the drivers, is ultimately reaping the primary benefits of that good will.

Accordingly, tort liability should extend to Uber without much legal ambivalence. Claims that these sharing platforms are too far removed to suffer liability seem to ignore the functions of the platforms’ marks and result in an inequitable distribution of risk and resources. One should ‘‘follow the money’’ and extend liability to the service licensor (Uber, etc.), which should then be ready, willing, and able to provide adequate compensation (directly or indirectly) for those harmed as a result of conduct of individuals providing its trademarkbearing services. While this may increase the cost of doing business for the platforms/licensors, they are in the best position (financially, administratively, etc.) to sustain liability and provide compensation in an efficient manner. And in a competitive environment, the good will of being a good corporate citizen will inure to the benefit of the platforms/licensors. This would have the added benefit to the licensors of helping to improve their reputation and good will for being responsible corporate citizens who will stand behind their services.

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Kenneth B. Germain

Kenneth B. Germain

Practice Areas: Categories: Trademarks and Trade Dress; Expert Witness Work

Ken Germain has more than 40 years of varied experience in the trademark/unfair competition field and is a former full-time law professor. He focuses his practice on trademark counseling, consulting and litigation. Ken is often retained as an expert witness on issues relating to trademarks and unfair competition, working on cases involving some of the nation’s largest companies in high-stakes, cutting-edge cases. For many years, Ken has been an active speaker on trademark and unfair competition, lecturing at national, regional and local conferences over 240 times.

In addition, in 1990 Ken founded, and until 2014 chaired, the All Ohio Annual Institute On Intellectual Property seminar. This seminar just completed its 25th year, providing two-city programming (Cincinnati, Cleveland) covering all aspects of IP, and is the largest (325 attendees per city), and most comprehensive full-day IP CLE program in and around Ohio.

Ken served as an Adjunct Professor at the University of Cincinnati College of Law for a number of years, teaching trademark/unfair competition courses. Later, Ken served as a Distinguished Professorial Practitioner in the University of Dayton Law School’s Program in Law and Technology. In 2013-14, Ken served as Distinguished Senior Fellow in connection with the Law + Informatics program of the NKU Chase School of Law. In January 2016, Ken will resume teaching at UDSL.

Bar Admissions:

  • Ohio, 1989
    California (inactive), 1970


  • New York University School of Law: J.D. (Associate Editor of the N.Y.U. Law Review)
    Rutgers College: A.B. magna cum laude (Elected to Membership in Phi Beta Kappa)


  • Who’s Who Legal, The International Who’s Who of Trademark Lawyers (2001- )
    Chambers USA, America’s Leading Lawyers for Business (2004- )
    Ohio Super Lawyers 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013
    World Trademark Review, The World’s Leading Trademark Professionals (2014- )
    Best Lawyers “Lawyer of the Year 2011” (Intellectual Property Law – Cincinnati)
    Best Lawyers “Lawyer of the Year 2012” (Trademark Law – Cincinnati)
    Best Lawyers “Lawyer of the Year 2014” (Litigation, IP and Trademark Law – Cincinnati)
    Best Lawyers “Lawyer of the Year 2015” (Litigation, IP and Trademark Law – Cincinnati)

Sean K. Owens

Sean K. Owens

Sean Owens is an Associate at Wood Herron & Evans LLP, where his practice focuses on trademarks, copyrights, and related soft-side intellectual property matters.  He has served as an adjunct professor at the University of Cincinnati College of Law, where he taught “Copyrights,” and he currently co-teaches “Media Law” at UC’s College Conservatory of Music.  Sean is also a Board Member and Chair of the Government Relations Committee for the Cincinnati chapter of the American Advertising Federation.  He has written and presented on a variety of intellectual property topics, and conducted peer review and editing of the book Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law (2d ed.), slated for publication by the American Bar Association. A native Cincinnatian, Sean now lives on Prospect Hill and spends much of his free time learning the joys and tribulations of owning a 19th Century house.

Practice Areas: Copyrights, Publishing/Media, Trademarks

Bar Admissions:

  • State of Ohio


  • University of Cincinnati College of Law:  J.D.
    University of Cincinnati College of Business: B.B.A., Marketing and Finance double major; minor in Management

Professional Affiliations:

  • Cincinnati Bar Association
    Ohio State Bar Association
    International Trademark Association
    AAF Cincinnati
    Cincinnati Intellectual Property Law Association

Representative Publications/Presentations:
Torts Uber Trademarks or Trademarks Uber Torts: That Is The Question – BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 3211 (09/18/2015)

Protect Yourself: Why Game Designers Need to Know Patents, Copyrights, and Trademarks – 2012-2015 Gen-Con Gaming Convention, Indianapolis, IN
Legal Issue in Mobile and Gamification – American Advertising Federation Cincinnati Digital Non-Conference - 2011

Community Involvement:
Vice President – Prospect Hill Neighborhood Association