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bigdaddy
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Question regarding licensing aTM
« on: Jan 2nd, 2008, 9:02pm »		 Quote Quote Modify Modify
I have a mark that is registered and another company is trying to register a nearly identical mark to mine in the same class.  Their mark was refused because of mine and recently I was contacted by them asking if I would sell my mark or license it to them.
 
Ex: Company A owns a beer company called Schmits and has the mark registered; Company B owns a beer company called Schmitz and their registration was refused.  
 
My question is: How should a TM licensing agreement be written between us?  Because our two marks are not identical, in drawing up a TM licensing agreement, should it be written that they are licensing my mark, even though they will be using a slight variation of it?  Or should it be written in the agreement that I am allowing them to use the mark as they have it written?
 
Any help will be appreciated.
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JSonnabend
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Re: Question regarding licensing aTM
« Reply #1 on: Jan 3rd, 2008, 8:08am »		 Quote Quote Modify Modify
That's an interesting question regarding licensing the use of a similar but not identical mark.  I've handled many "letters of consent" to address such circumstances, but never a license that I can recall.
 
In general, licensing is tricky because you have to maintain adequate "quality control" over the licensee or you risk losing your trademark rights.  How the similar-but-not-identical mark issue plays out I'd have to think through.
 
If there are sufficient resources, I'd suggest speaking directly to a TM attorney about this rather than risk a faulty license.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
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