July 6, 2017
Antivirus software pioneer John McAfee agreed not to use his name in connection with cybersecurity products or services in order to settle a lawsuit against Intel Corporation, which purchased McAfee Associates in 2011 for $7.7 billion. McAfee and MGT Capital Investments, Inc., where McAfee serves as CEO, filed the suit last year seeking a declaration that the renaming of MGT Capital Investments to “John McAfee Global Technologies, Inc.” or the use of his name in connection with the company would not infringe any Intel trademarks.
According to the complaint, McAfee resigned from the company he founded in 1994 and sold his remaining shares in the company in 1997, but never sold his name to the company or otherwise forfeited his right to use his own name in a commercial context. Intel responded to the lawsuit with a battery of trademark infringement and dilution claims based on its ownership of the McAfee brand for cybersecurity products and services.
Intel, which rebranded the cybersecurity division as “Intel Security” in 2014, recently spun off the company as an independent business unit in conjunction with selling 51% of the company to a private equity firm. The new company, now known simply as “McAfee,” clearly had a stake in ensuring that consumers were not confused as to the source of competing cybersecurity products and services offered by “McAfee” and “John McAfee Global Technologies.”
Although McAfee surrendered certain rights to the use of his given name in the context of cybersecurity offerings, the settlement agreement expressly allows for the use of his full name (“John McAfee”) in promotional and advertising materials as long as “the name is used descriptively in the context of a complete sentence.”
RegitzMauck PLLC is an intellectual property boutique based in Dallas, Texas. The firm focuses on providing value-based legal services to cost-conscious clients seeking high quality legal representation in intellectual property, cybersecurity, and data privacy matters and disputes.