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Author Topic: Trademark Licensing  (Read 677 times)

itsme01

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Trademark Licensing
« on: 12-04-05 at 04:00 pm »

I am interested in licensing my trademark to be able to sell usage of my brand, collect a license fee and royalties on services provided.  

Fact: My state do not require franchise registration but govern according to business opportunity laws.

My Questions:

1) My firm provides technical services.  Is licensing my Trademark brand legal?
2) How is this different from franchising?
3) Is there any federal paperwork I must file, other than registering my trademark with the USPTO?
4) Any guidelines to watch out for to ensure that my trademark registration is clearly deferentiated from a franchise?
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JSonnabend

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Re: Trademark Licensing
« Reply #1 on: 12-05-05 at 08:28 am »

In very general terms, a franchise differs from a tm license in the degree of restrictions over the delivery of the product or services under the trademark.  Thus, if you are giving a party permission to use your tm with limited control of the method of delivery of the services under the mark (you can't give up all control, or the license becomes "naked", risking loss of the TM), you likely have a TM license and not a franchise.

Beyond that very general guidance, I urge you to discuss the issues with a TM  attorney who can guide you through the process and help you avoid any pitfalls.

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
 



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