McAfee Has Gone From Securing Our Cyberspace….to his Name

  John McAfee, known for his global presence in the computer industry and cyber-security field, has recently filed action against Intel Corporation for the right to use his name. The suit was filed September 2, 2016 in the United States District Court in the Southern District of New York.

For those of you who may not be familiar with McAfee’s relationship with Intel, I will summarize. Around the end of September 1991, Mr. McAfee entered into an Asset Acquisition Agreement (“Agreement”) with McAfee Associates, L.P., (“L.P.”) whereby he would sell, convey, assign, and transfer all of his rights, title, and interest in and to the assets. The purchased assets include title to the trademarks, tradenames, and goodwill associated with his name that was used and beneficial in the conduct of his business. Having resigned from L.P. in 1994, Mr. McAfee currently has no interest in his former company. In 2010, Intel acquired L.P. after several merges and renaming, and continued to operate L.P. under its name until January 2014, where it stopped using McAfee’s name and reorganized itself as Intel Security.

MGT Capital Investments, a corporation heavily involved in the online and mobile gaming sector, is currently in the process of acquiring a diverse portfolio of cyber security technologies. Specifically, they are looking at bringing former cyber-security pioneer, John McAfee into their company as CEO. As of May of this summer, MGT also announced its intention to change its corporate name to John McAfee Global Technologies, Inc. As you can assume, Intel did not like this and has claimed that Mr. McAfee has breached their Agreement and is starting a pathway in causing consumer confusion.

Under the Lanham Act[1], a trademark owner is entitled to protection of his federally registered mark against the use of that same or similar mark that is likely to cause consumer confusion or dilution. To prevail on a claim for trademark infringement, an owner must establish that they had a (1) valid mark entitled to protection under the Act and the (2) Defendant used the mark (3) in commerce (4) in connection with the sale…or advertising of goods or services (5) without their permission[2]. Additionally, the trademark owner must show that the Defendant’s use of that mark is likely to cause confusion as to the Defendant’s association, origin, or endorsement of the goods or services[3].

There is no question that the McAfee name is a well-known, registered mark. There is also no doubt that he is famous. Intel claims that the change of name would cause consumer confusion.

Mr. McAfee claims there would be no such confusion because it’s fair use in the idea that he’s fully entitled to use his full legal name as part of his business services and as a famous international individual resulting from his past and continued success. Intel argues that while he is attempting to use his full name, the use of his name as part of an ever-growing national technologies company, this would cause confusion that people would assume he is associated with their ventures. However, there has never been such endorsement or association between the two companies since the departure of Mr. McAfee. In my opinion, this is a topic far more interesting than any other trademark infringement suit brought forth thus far, because both sides present very logical arguments. However, a person has the right to use their full name as part of a business and should not be able to be prevented from doing so. But what happens when a name becomes ever so famous that any use of it in the originating industry of its fame could very well cause confusion? Essentially, by that logic, Mr. McAfee would be precluded from associating his name with any company in the computer and technology sector. This seems wholly unfair and seems almost as if it were a “Taking” under the 5th Amendment. I would like to think that a person’s identity, their name, their sense of self is considered a property right, but as it is associated with a business venture, could be more than a personal property right.

The second argument, I believe to be the most important, is that Intel abandoned the use of his name/mark back in January 2014. Under the Lanham Act, abandonment is established by showing non-use and an intent to abandon[4]. Indeed, Intel had stopped using the McAfee mark back in 2014 and renamed it Intel Security. It has gone by that name ever since. This in my opinion, is sufficient to establish Intel’s abandonment of the McAfee mark.

The third argument is that the change of name would also cause dilution and blurring. However, I believe this argument to be moot because of my strong belief that Intel had chosen to abandon the McAfee mark. Before further exploring an analysis that would serve only to waste you, the reader’s time, I patiently wait for the next round in the pleadings of this suit.

I’m not sure why this hasn’t made more headlines, but I find this to be an intriguing lawsuit in the world of intellectual property and the future of cyber-security.

[1] The Lanham Act, U.S.C.S. §1051, et seq.

[2] Id.

[3] Id.

[4] Birthright v. Birthright, Inc., 827 F.Supp 1114, 1119 (D. N.J. 1993)