Trademark Licensing Agreement Example



(C) Non-exclusive – rights may be granted to other third party licensors and the licensor may also use the trademark. Goods or services, duration and territory – Identify the type of goods or services offered by the licensee under the trademark, the duration of the contract and the geographical area in which the marks are licensed. In addition to identifying goods or services, licensed uses are often indicated. For example, the agreement may state that the following uses are permitted: production, sale, promotion, distribution and/or advertising. In addition, the licensor may restrict or permit the following distribution channels, stationary retail, Internet sales, wholesale or retail trade or sale limited to certain transactions or categories of consumers. Definitions – There is often a definition section (key terms are defined in the agreement). Quality Control – A detailed quality control clause is essential for a trademark license. Control of the licensor is necessary, as the trademark constitutes the reputation and goodwill of the owner. For purchasing decisions, consumers rely on the reputation of a trademark owner with respect to the quality of goods or services. It is typical for the licensee to recite that “all goodwill acts for the benefit of the licensor”. Insurance – This provision requires the licensee to take out insurance in order to protect the licensor from liability for claims against the licensee and possibly a failure by the licensee to fulfill its obligations under the license agreement. Arbitration – In the event of a dispute under the license agreement, it is customary to provide that the dispute is settled by arbitration, as this is an inexpensive method.

The clause specifies whether the arbitration procedure is binding on the parties and what kind of remedy is obtained through the arbitration. Some provisions are found in most trademark licenses. The following points should be addressed in a license agreement: Trademark licensing agreements are very different in length and subtlety. While many licenses contain a similar structure, each license contains different details and clauses based on the goods or services being licensed. While it is more common to grant trademarks rather than service marks, licensing agreements may include goods or services. In addition, licensing agreements often involve federally registered trademarks, but unregistered trademarks can also be licensed. With regard to registration, some countries maintain the legal obligation to register licensing agreements. The United States does not require that a trademark license be registered with the United States Patent & Trademark Office. Choice of Law & Forum – Choice of law provisions are preferred because they provide some certainty as to the application of the license agreement.

In addition, courts often impose the choice of jurisdiction clauses as long as the forum has a reasonable and logical relationship with the parties and the license. Parties and Intellectual Property – Identify the parties to the agreement and the intellectual property (the marks) that is licensed (these issues may be described in the grant clause). These are some of the most common provisions contained in a trademark licensing agreement, if you need advice on more detailed matters, please contact our office for courtesy advice with one of our trademark attorneys…