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   Author  Topic: co-branding  (Read 1899 times)
eddiespin
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co-branding
« on: Oct 28th, 2007, 8:38am »
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Co-branding agreement. X and Y go on a t-shirt with their marks. Each owns their mark. X is a licensee from Y to use Y's mark on the co-branded product. X's use of its mark on the co-branded product inures to the benefit of X, and X's use of Y's mark on the co-branded product inures to the benefit of Y. Neither party can assert a trademark or attempt to register a trademark in the other party's mark. Does it make sense to ask who owns these co-branded products? I don't suppose it does. I suppose it only makes sense to ask, what are the rights of the parties in the co-branded products (which, again, are set forth in the co-branding agreement). Does that make sense?  
Eddie
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JSonnabend
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Re: co-branding
« Reply #1 on: Oct 30th, 2007, 10:42am »
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The question actually doesn't make a lot of sense.  The purchasers of the shirts own the shirts, and the respective mark holders own rights in their respective marks.  As for the rights to the marks in connection with shirts, that's a bit trickier, the answer to which is likely to hinge on the terms of the agreement.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
eddiespin
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Re: co-branding
« Reply #2 on: Oct 30th, 2007, 2:06pm »
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Thanks again Jeff. I of course was hoping the question didn't make sense, because, actually, that makes sense. At least, to the extent the IP rights are set forth in the agreement, that should settle the question on the IP rights in the co-branded product.
 
One more question? I'm concerned about, if we TM one mark, we'd probably want to TM the other mark. Then again (these are common law marks), we could omit the TMs on both marks. Supposing we later had other, smaller co-branded products, and, as a practical matter, we wouldn't want to have to TM a 1 centimeter charm on a charm bracelet, for example, or a ring. Question is, are we unreasonably assuming risk if, to remain consistent, we just didn't TM anything, anywhere, on any co-branded product? Assume neither X nor Y are the Shell pecten. In other words, these are obscure marks (but marks, nonetheless). Or, would be the best practice be, TM where we can (wherever practical/feasible)? Thanks.  
Eddie
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JSonnabend
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Re: co-branding
« Reply #3 on: Nov 1st, 2007, 1:05pm »
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As a general rule, use "tm" wherever practicable.  Your TM attorney might have a different view on "practicable" than your marketing people, of course.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
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