The name McAfee is likely recognizable to even the most casual computer users, as the security software seems to be offered in conjunction with nearly every other downloadable software. This brand recognition has tremendous value and that value was calculated into the $7.68 billion price Intel paid for the anti-virus protection company in 2010. With such a hefty price tag, it’s no wonder Intel would be protective of its assets.
The software name is taken from its original creator’s last name, John McAfee, who now wants to use his surname as part of the title for his technology investment group, which until now has been called MGT Capital Investments. This name change has Intel concerned, claiming it has the trademark rights to the McAfee name and any use by John McAfee would be an infringement of its rights and lead to a likelihood of confusion among consumers.
McAfee, Inc. was included in the assets purchased by Intel in 2010. McAfee, Inc. owns several trademark registrations including the name McAfee in computer software or security related classes. The McAfee brand has become quite strong due to exposure and long term use. So when John McAfee announced plans to rename MGT Capital Investments to John McAfee Global Technologies, Intel’s trademark attorneys sent a cease-and-desist letter saying that he was infringing its trademark registrations. This prompted John McAfee to file a declaratory judgment suit against Intel claiming that he is not infringing and should be free to use his own name.
John McAfee argues that he never assigned over the complete rights to his name or ever agreed that he wouldn’t use his own name while doing business. He also points out that Intel isn’t even using the name anymore as it changed the name of the McAfee software line to Intel Security in 2014. He further argues that in order to maintain trademark rights, the marks must be actively used in commerce.
While John McAfee may have some valid points, Intel still has current trademark registrations on McAfee and this allows them to prevent others from using the same or a similar mark in an industry or market that is likely to cause confusion among consumers. Because McAfee software is a well-established brand, it may be natural for consumers to associate John McAfee Global Technologies with the McAfee software line now owned by Intel. On the other hand, one could argue that the goods or services are different and therefore not likely to be assumed by consumers to be associated.
If it seems unfair that a person can’t use their own last name to do business, the Trademark Office typically agrees. If a mark is primarily merely a surname it is rejected under trademark law, unless it has acquired distinctiveness. This reflects the fact that most surnames are shared among lots of people and to exclusively reserve any one name robs others of the chance to use their own last name in business. In this case, McAfee acquired distinctiveness through continued use in commerce and was ultimately awarded trademark registration after showing such distinctiveness.
It will be interesting to see what happens here and how hard each side will fight. It’s an interesting case of balancing trademark rights versus a person’s ability to use his own name to run a business. It may come down to how related MGT’s business is to security software.