Trademark Licensing

As with other intellectual properties, trademarks may be licensed or assigned to others.  However, trademarks are unique in that protection of the intellectual property of a registered trademark is restricted to the specific class of commerce claimed in the registration.  That is, a licensed or assigned trademark must be applied to the same class of goods or services listed in the registration in order to keep the protection of that registration.  Otherwise, the licensee or assignee must file a new trademark application to register the mark under the new class of goods or services.  For example, a hypothetical trademark for the phrase "Big Bucks," initially registered for use in relation to hunting goods, would not maintain the protection of the original registration if used by a licensee or assignee for payday loans.  In order to have a valid licensing or assignment agreement, it is important to have experienced attorneys who know and understand the necessary language and terms to be included.  Further, it is important to have an attorney who can advise you as to whether licensing or assigning your mark will be more advantageous to you.


Licensing: Trademark licenses are particularly useful when the trademark holder is an individual who wishes to allow a company to use the mark.  Often, the licensee company will be one to which the licensor has some ties.  This is due to the fact that, although the trademark is licensed to another entity, the licensor must still submit periodic statements with the United States Patent and Trademark Office (USPTO) in order to avoid abandonment of the mark.  In order to make such statements to the USPTO, the licensor must be able to monitor the quality of goods and/or services being sold under the mark.  For this reason, many trademark licensing agreements have provisions granting the licensor rights to inspect and monitor the goods and/or services and requiring the licensee to make warranties to the licensor regarding quality.  Licensing agreements, therefore, are most advantageous for those trademark holders who wish to retain ownership and maintain a level of control over the trademark.


Assignments: Assignments, on the other hand, involve the transfer of ownership of the mark.  This option is most advantageous for trademark holders who have built consumer good faith in their mark but for one reason or another no longer wish to use the trademark themselves.  By selling the trademark through assignment, the trademark holder can be compensated for the work and effort invested in building the public faith in the mark.  However, because the transaction is often in large part based upon the public's appreciation of the mark, US Code requires that the assignment of a trademark be accompanied by the sale of an underlying asset in order to avoid committing fraud upon the public.  Such assets can include the machinery used to produce the goods that bear the mark or the corporate entity that manufactures or produces the trademarked goods.


The attorneys of the Wilson Law Group have the experience and knowledge necessary to properly guide you through the process of licensing or assigning your trademark.  They will strive to ensure that your rights are protected and that you receive the compensation you are entitled to.


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