John McAfee’s company could spoil the party for Intel’s new venture

John McAfee claims he is entitled to call his own security company after his name

20160127 intel superbowl city

A worker mounts an Intel sign on a pavilion at San Francisco's Super Bowl City attraction on Jan. 27, 2016.

Credit: Stephen Lawson

Intel’s plans to spin out its security business under the McAfee name could be clouded by the plans of security expert and businessman John McAfee, who claims he had not assigned the rights to his personal name.

The chip maker said Wednesday that it had signed an agreement with TPG for a deal that would see its Intel Security business as a separate cybersecurity company in which Intel shareholders would hold 49 percent of the equity with the balance held by the investment firm. Intel would also receive US$3.1 billion in cash. The new company would be named McAfee.

[ MORE: Intel sells off majority stake in McAfee unit ]

Earlier, Intel had written to MGT Capital Investments, a company of which John McAfee is executive chairman and CEO, of its plans to change its name to John McAfee Global Technologies.

In its letter, produced in court by John McAfee, Intel has asked for confirmation that MGT will not change its name “to one that includes the MCAFEE trademark or otherwise use the MCAFEE name as a trademark.” Intel, which acquired security company McAfee in 2011, warned that if MGT went ahead with its plans for a name change, it will take legal action to protect its trademark rights.

In the letter dated June 3, Intel said it had learned from MGT’s press releases that it was acquiring anti-spy software company D-Vasive. The use of the McAfee name would create confusion as to the origin of its products and suggest some affiliation with Intel and McAfee, which does not exist.

John McAfee and MGT have meanwhile filed a suit in the U.S. District Court for the Southern District of New York, asking the court for a judgment declaring that "their use of or reference to the personal name of John McAfee and/or McAfee in their business," particularly in the renaming of MGT,  does not infringe on Intel’s trademark rights or breach any agreement between the parties.

John McAfee states in the filing that he entered in 1991 into an agreement with McAfee Associates to transfer certain assets to it in exchange of stock and a promissory note, but at no point did he “assign the rights to his personal name, via assignment of trademark or otherwise, or agree to restrict his right to do business using his own name.”

At the time of the agreement, John McAfee had not filed for or registered the trademark to “John McAfee” or “McAfee” or any other variation of the name, according to the filing.  A review of the trademark database of the U.S. Patent and Trademark Office show eight marks involving the word McAfee in conjunction with computers. But none refer to John McAfee, who claims that Intel "never consulted, requested or otherwise obtained the permission of McAfee to use his last name as part of Defendants’ Marks on its products," according to the filing.

“In truth, when I formed McAfee Inc I signed over only the name ‘McAfee Antivirus,’” John McAfee told Newsweek this week. Intel could not be immediately reached for comment.

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