The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Aug 20th, 2019, 8:00am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
   Other
   Trademark Forum
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Question regarding licensing aTM
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Question regarding licensing aTM  (Read 1206 times)
bigdaddy
Newbie
*




   


Posts: 39
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.
IP Logged
JSonnabend
Moderator
Senior Member
*****




   
Email

Posts: 2251
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
IP Logged

SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board