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(Message started by: bigdaddy on Jan 2nd, 2008, 9:02pm)

Title: Question regarding licensing aTM
Post by bigdaddy on Jan 2nd, 2008, 9:02pm
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.

Title: Re: Question regarding licensing aTM
Post by JSonnabend on Jan 3rd, 2008, 8:08am
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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