Trademark License Agreement

This Trademark License Agreement is made on [EFFECTIVE DATE] (the "Effective Date") between [LICENSOR NAME] [whose principal place of residence is at/a [CORPORATE JURISDICTION] corporation with its principal place of business at] [LICENSOR ADDRESS] (the "Licensor") and [LICENSEE NAME], a [CORPORATE JURISDICTION] corporation with its principal place of business at [LICENSEE ADDRESS] (the "Licensee").

The parties agree as follows (the capitalized terms used in this agreement, in addition to those above, being defined in section 33 (Definitions)):

1. Grant of License. The Licensor grants to the Licensee, and the Licensee accepts, a limited, non-exclusive, non-transferable, and revocable licence to use the trademarks [and service marks] described in Schedule A (the "Licensed Marks") in [DESCRIPTION OF TERRITORY] (the "Territory") in accordance with the terms of this agreement.

2. Key Terms

2.1. Description: [SUMMARY DESCRIPTION]

2.2. Territory; [TERRITORY]

2.3. Initial Term: [INITIAL TERM]

2.4. Renewal Terms: [RENEWAL TERMS]

2.5. Start Date: [START DATE]

2.6. Annual License Fee: $[ANNUAL LICENSE FEE]

2.7. Quarterly Royalty Fee [ROYALTY RATE PERCENTAGE]% of net sales

3. Use of Marks. The Licensee shall use and display the Licensed Marks only

(a) in association with the[ manufacture,] distribution, and sale of the products and services described in Schedule B (the "Licensed Products and Services"),

(b) in the manner and form that they are registered under the US Trademark Act of 1946, and

(c) in accordance with the terms of this agreement.

4. [Licensor's Approval of Proposed Uses. The Licensee shall submit to the Licensee, for its approval, all representations of the Licensed Marks that it intends to use.]

5. Notice on Marks. The Licensee shall place the following notice (or any other notice that the Licensor may request[ in writing] on one or more occasions) in a legible manner on each licensed product that forms part of the Licensed Products and Services and on any packaging, advertising, promotional, or other [similar] materials that contain or depict the Licensed Marks and that the Licensee proposes to use in connection with the Licensed Products and Services, including any content posted on any Internet site (the "Promotional Materials"):

"Trademark(s) of [LICENSOR NAME]; used under license by [LICENSEE NAME]."

6. Actions in Licensor's Best Interests. The Licensee shall act in the best interests of the Licensor as owner of the Licensed Marks and in such a way as to preserve and protect the Licensor's interest in the Licensed Marks.

7. Trademark Use Policy. The Licensee shall abide strictly by the guidelines set out in Trademark Use Policy[, a copy of which is attached as Schedule C], in effect and as amended on one or more occasions ("Trademark Use Policy"). The Licensor shall give reasonable Notice to the Licensee of any changes to the Trademark Use Policy.

8. Protection of Marks

8.1. Prohibited Actions. The Licensee shall not directly or indirectly

(a) register or use any other trade name, trademark, or service mark incorporating or based in whole or in part on any of the Licensed Marks,

(b) use any Licensed Mark as part of any corporate or trade name, as part of prominent signage displaying its business name, or in connection with any unauthorized goods or services,

(c) use the Licensed Marks in combination with any other trademarks,

(d) debrand, rebrand, or private label any of the Licensed Marks,

(e) hold itself out as having any ownership interest in the Licensed Marks,

(f) engage in any conduct that would constitute Infringement of or otherwise affect either the Licensor's interest in the Licensed Marks or the goodwill associated with them,

(g) dispute the validity, ownership, or enforceability of any of the Licensed Marks,

(h) invalidate, dilute, or otherwise adversely affect the value of the goodwill associated with the Licensed Marks, or

(i) engage in any conduct that would constitute Infringement of, or otherwise harm, the intellectual property rights of any third parties.

8.2. Definition of "Infringement." In this agreement, "Infringement" means any infringement, deemed infringement, passing off, depreciation of goodwill, or other unauthorized use of or interference with any intellectual property rights, and the verb "infringe" has a comparable meaning.

9. Registrations of Marks. The Licensor shall, at its own expense, keep current all registrations necessary to maintain its rights in and to the Licensed Marks.

10. Discontinuing Use. If the Licensor chooses to modify or discontinue using any Licensed Mark or to use any substitute trademarks or service marks, the Licensee shall, at its own expense and within a reasonable time, change all items in its business bearing the Licensed Marks.

11. Payment Obligations

11.1. License Fees. The Licensee shall pay the Licensor an annual fee in the amount of $[ANNUAL FEE AMOUNT], payable annually on the anniversary of the Effective Date.

11.2. Royalties. The Licensee shall, in addition to the annual licence fees, pay the Licensor royalties at the rate of [ROYALTY RATE PERCENTAGE]% of net sales of the Licensed Products and Services, calculated and payable within [30] days of the end of each quarter.

11.3. Under- or Over-Payments. If an audit shows a deficiency in the amount of royalties due, the Licensee shall promptly pay to the Licensor the amount of the deficiency. If the audit shows that the Licensee paid more than due, the Licensor may either deduct the amount of the excess from the next payment amount due or reimburse the Licensee with the overpayment amount without undue delay.

11.4. Late Payments. Any amount not paid when due will bear interest from the due date until paid at a rate equal to [MONTHLY INTEREST RATE]% per month ([ANNUAL INTEREST RATE]% annually) or the maximum allowed by law, whichever is less.

12. Term

12.1. Initial Term. This agreement will begin on the Effective Date and end on [LICENSE AGREEMENT EXPIRATION DATE] (the "Term"), unless terminated earlier.

12.2. Renewal Terms. Following the initial term, this agreement will automatically renew for successive [RENEWAL TERM PERIODS] terms, unless terminated earlier. If a party elects not to renew this agreement, that party shall provide Notice of that intention to the other party at least [NON-RENEWAL NOTICE PERIOD] days before the renewal date.

13. Licensor's Representations

13.1. Ownership of Marks. The Licensor is the sole owner of the Licensed Marks.

13.2. Right to License. The Licensor has the[ exclusive] right to use and grant rights to use the Licensed Marks in the Territory.

13.3. No Conflicts. The Licensor is under no restriction or obligation that may affect the performance of its obligations under this agreement.

13.4. [No Assignment. The Licensor has not assigned, or agreed to assign, the Licensed Marks to any other Person in the Territory.]

13.5. No Breach. The Licensor's execution, delivery, and performance of its obligations under this agreement do not and will not breach or result in a default under

(a) [its articles, by-laws, or any unanimous shareholders agreement,

(b) any Law to which it is subject,

(c) any judgment, order, or decree of any Governmental Authority to which it is subject, or]

(d) any agreement to which it is a party or by which it is bound.

13.6. No Infringement by Licensor's Use. The Licensor's use of the Licensed Marks in the Territory does not infringe upon the intellectual property, contractual, or other proprietary or personal rights of any Person.

14. Licensee's Representations

14.1. No Conflicts. The Licensee is under no restriction or obligation that may affect the performance of its obligations under this agreement.

15.  Licensor's Warranties

15.1. No Infringement by Licensee's Use. The Licensee's use of the Licensed Marks in the Territory will not infringe upon the intellectual property or other proprietary or personal rights of any Person.

15.2. Disclaimer of Warranties. The Licensor makes no representation or warranty to the Licensee regarding any of the Licensed Marks other than those contained in this agreement.

16. Licensee's Acknowledgements

16.1. Right to Use Marks. The Licensee's right to use the Licensed Marks derives solely from this agreement.

16.2. Benefit of Goodwill. The Licensee's usage of the Licensed Marks and any resulting goodwill will accrue solely to the Licensor's benefit.

16.3. Limited Grant of Rights. The Licensee does not acquire any interest under this agreement other than the rights to the Licensed Marks granted here. Any rights not expressly granted to the Licensee are reserved to the Licensor.

16.4. [Acknowledgement of Contract Terms. The Licensee acknowledges that he or she

(a) has read the agreement,

(b) understands its terms,

(c) has had the opportunity to consult[ and has consulted] with independent legal counsel, and

(d) has signed this agreement voluntarily.]

17. Currency of Registrations. The Licensor shall, at its own expense, keep current all registrations necessary to maintain its interest in the Licensed Marks.

18. Compliance with Laws. The Licensee shall comply with all Laws and industry regulations relating to the [ manufacture,] sale, distribution, and advertising of the Licensed Products and Services.

19. Quality Control. The Licensee shall ensure that

19.1. the nature and quality of all services that the Licensee provides in connection with the Licensed Marks,

19.2. all goods that it sells under the Licensed Marks, and

19.3. all of its advertising, promotional, and other related uses of the Licensed Marks

conform to the Licensor's standards, as they may change during the Term.

20. Usage

20.1. Documenting Use of Marks. The Licensee shall assist the Licensor, if requested, in providing documentation of its use of the Licensed Marks in connection with any trademark application.

20.2. Evidence of Use in Territory. The Licensee shall, upon the Licensor's request, provide any declaration, or other document that the Licensor considers reasonably necessary to evidence use of the Licensed Marks in the Territory.

21. Confidentiality

21.1. Confidentiality Obligations. During the term of this agreement and for a period of [CONTINUING CONFIDENTIALITY PERIOD], the Licensee shall hold all Confidential Information in confidence in accordance with the terms of, and solely for the purpose of carrying out its obligations under, this agreement.

21.2. Permitted Disclosure. The Licensee may disclose Confidential Information to its representatives but only

(a) to the extent necessary to carry out the Licensee's obligations under this agreement,

(b) if the Licensee first informs them of, and directs them to maintain, its confidential nature in accordance with the terms of this agreement[, and

(c) upon the Licensor's request in connection with any of the Licensee's representatives[ other than a director, officer, shareholder, partner, or employee], if they each first enter into separate written agreements to that effect[ in a form acceptable to the Licensor].

21.3. Required Disclosure. The Licensee may disclose Confidential Information to a third party if it is required to do so by law but only if, before that disclosure, the Licensee, to the extent permitted by law,

(a) gives the Licensor Notice to allow it a reasonable opportunity to either seek a protective order or other appropriate remedy or waive the Licensee's compliance with this section 20 (Confidentiality),

(b) reasonably cooperates with the Licensor[, at the Licensor's expense,] in its reasonable efforts to obtain a protective order or other appropriate remedy,

(c) discloses only that portion of the Confidential Information that[, having consulted with its counsel,] it is legally required to disclose, and

(d) uses reasonable efforts to obtain reliable written assurance from the third party that the Confidential Information will be kept confidential.

21.4. Value and Nature of Confidential Information. The Licensee acknowledge that the Confidential Information is proprietary and has competitive value to the Licensor. Accordingly, any disclosure to the Licensor's competitors or to the public would be detrimental to the best interests of the Licensor, which may incur losses, costs, and damages as a result.

21.5. Burden of Proof. The Licensee will have the burden of proof relating to all exceptions to the definition of Confidential Information.[ The Licensee may rely on its own written records in support of its position.]

21.6. Definition of "Confidential Information." In this agreement, "Confidential Information" means all [material] [non-public] [business-related] information, written or oral[, whether or not it is marked as confidential], disclosed or made available to the Licensee,[ directly or indirectly,] through any means of communication [or observation] by the Licensor[ or any of its affiliates or representatives] relating to the Licensor or the Licensed Marks, and any derivative of that information, but does not include information that

(a) is or becomes publicly known through no wrongful act of the Licensee,

(b) the Licensee received in good faith on a non-confidential basis from a source other than the Licensor or its representatives,

(c) was in the Licensee's possession before its disclosure by the Licensor or its representatives,

(d) the Licensee developed independently without breach of this agreement, or

(e) the Licensor has explicitly approved, by Notice to the Licensee, for release to a third party.

22. Books and Records

22.1. Recordkeeping. The Licensee shall keep at its principal office complete, accurate, and commercially reasonable records of its operations showing the[ manufacture,] sale, and distribution of the Licensed Products and Services, together with all reasonably necessary related documents required to accurately calculate the fees due under this agreement.

22.2. Copies of Financial Statements. At the Licensor's request, the Licensee shall, at its own expense, provide to the Licensor either a reviewed or an audited profit-and-loss statement and balance sheet for the [Licensed Property] within [60] days of the end of each fiscal year.

22.3. Records Retention. The Licensee shall retain all related financial information for at least [RECORD PERIOD] following a given reporting period.

23. Insurance

23.1. Coverage. The Licensee shall obtain and maintain

(a) workers' compensation insurance in the amount required by law,

(b) product liability insurance coverage appropriate to the risk involved in developing and marketing the Licensed Products and Services, which in no event will be less than $[MINIMUM INSURANCE AMOUNT], and

(c) comprehensive general liability insurance with coverage of at least $[INSURANCE COVERAGE] per occurrence for bodily injury, property damage, or other losses.

23.2. Additional Insured. The Licensee shall ensure that its insurance coverage will list the Licensor as an additional insured.

23.3. Proof of Insurance. At the Licensor's request, the Licensee shall provide it with

(a) certificates or other acceptable evidence of insurance evidencing its coverage, and

(b) at least [30] days' prior Notice of any change in or cancellation of the insurance coverage.

24. [Right to Sub-license

24.1. Sub-license to Affiliate. The Licensee may sublicense the Trade-marks to an affiliate, but only if the Licensee

(a) gives prior Notice to the Licensor of any such sub-license, and

(b) provides the Licensor with a copy of each sub-license agreement signed with the affiliate.

24.2. Sub-license Obligations. The Licensee shall ensure that all sublicensees comply with

(a) their obligations under their sub-licenses, and

(b) the Licensee's obligations under this agreement as if the sublicensees were themselves the Licensee.

24.3. Calculation of Royalties. The net sales of the Licensed Products and Services by sublicensees will be included in the calculation of the Licensee's royalty obligations.]

25. Inspection and Audit

25.1. Inspection. The Licensee shall, upon reasonable Notice from the Licensor, provide access to its offices during normal business hours for the purpose of conducting an inspection of all its books and records relating to the Licensed Products and Services. The Licensee shall cooperate with the Licensor in its inspection.

25.2. Conduct of Inspection. The Licensor shall conduct any inspection in a manner so as not to unreasonably disrupt the Licensee's business. The Licensor shall restrict the scope, manner, and duration of any inspection to that reasonably necessary to achieve its purpose.

25.3. Evidence of Usage. The Licensee shall, upon request by the Licensor, supplying the Licensor with specimens of all its uses of the Licensed Marks.

25.4. Audit. The Licensor may also, on one or more occasions and at its own expense, conduct an audit of the Licensee's records, upon the same terms as any inspection.

25.5. Confidentiality of Information. The Licensor shall keep confidential any information that it obtains from any inspection or audit, except as may be required to exercise its rights under this agreement.

26. Release of Claims. The Licensee waives and releases any right or claim it might otherwise have against the Licensor in connection with any of the Licensed Marks other than those relating to the rights expressly granted to it under this agreement.

27. Third Party Infringement

27.1. Notice to Licensor. The Licensee shall promptly give Notice to the Licensor when it becomes aware of any actual, suspected, or threatened Infringement of the Licensed Marks by a third party in the Territory. The Licensor may, in that case, take any steps it considers appropriate to enforce its rights in the Licensed Marks. The Licensee shall[, at its own expense,] cooperate with the Licensor to the fullest possible extent.

27.2. Licensee's Rights. If, within [10] business days of receipt of the Licensee's Notice, the Licensor either fails to respond to the Licensee's Notice or gives Notice to the Licensee that it elects not to take any steps to enforce its rights, the Licensee may, upon Notice to the Licensor, take any steps it considers appropriate in the circumstances in the name and on behalf of the Licensor. The Licensee may then keep any damages or proceeds of settlement it obtains as a result.

28. Claim of Infringement against Licensee

28.1. Notice to Licensor. The Licensee shall promptly give Notice to the Licensor of any action, claim, or demand brought or threatened by a third party against it arising out of its use of the Licensed Marks in accordance with this agreement. The Licensor shall, in that case, take all steps it considers appropriate, at its own expense, to defend the Licensee and the Licensed Marks (including settling any legal actions in the Licensee's name). The Licensee shall, at its own expense, cooperate with the Licensor to the fullest possible extent.

28.2. Claims Resulting from Licensee's Breach. If it is established that the third party's action, claim, or demand resulted from a material breach of the Licensee's obligations under this agreement, the Licensee shall reimburse the Licensor for all costs and expenses (including legal fees) incurred in defending the Licensee and the Licensed Marks.

29. Indemnification

29.1. Licensor's Indemnity. The Licensor shall indemnify the Licensee against all claims, liability, costs, and expenses (including legal fees) arising from any third party claim or proceeding alleging the infringement of the third party's intellectual property or other rights in the Territory brought against the Licensee arising from or relating to the Licensee's[ manufacture,] sale, and distribution of the Licensed Products and Services, but only if the Licensee acted in compliance with the terms of this agreement.

29.2. Mutual Indemnity. Each party shall indemnify the other party[ and its directors, officers, employees, shareholders, partners, agents, and affiliates,] against all claims, liability, and expenses (including legal fees) arising from any third party claim or proceeding brought against one party that alleges any [grossly] negligent act or omission or willful conduct of the other party[ or its directors, officers, employees, shareholders, partners, agents, or affiliates].

29.3. Notice of Claim. A party shall give prompt Notice to the other party of any claim or potential claim for indemnification under this section 28 (Indemnification).

29.4. Exclusive Remedies. The rights granted under this section 28 (Indemnification) are the exclusive remedies available under this agreement in connection with the claims and losses that this section addresses.

30. Liability

30.1. No Liability to Licensee. The Licensor assumes no liability to the Licensee or to any third party in connection with any of the Licensed Products and Services.

30.2. Damages. Neither party will be liable for breach-of-contract damages that the breaching party could not reasonably have foreseen on entering into this agreement.

30.3. Licensor's Maximum Liability. In no event will the Licensor's liability under this agreement exceed $[MAXIMUM LIABILITY]. The existence of more than one claim will not increase this limit.

31. Termination

31.1. Termination upon Notice. Either party may terminate this agreement for any reason upon [TERMINATION FOR CONVENIENCE NOTICE] days' Notice to the other party.

31.2. Termination upon Breach

(a) Immediate Termination. The Licensor may terminate this agreement, with immediate effect, by giving Notice to the Licensee if the Licensee

(i) fails to pay when due any amount owing under this agreement and that failure continues for [five] days,

(ii) challenges, or assists others to challenge, any of the Licensed Marks or Licensor's registrations of the Marks, or

(iii) registers or attempts to register any trademarks or trade names that are confusingly similar to the Licensed Marks.

31.3. Any Other Breach. If one party

(a) commits any material breach or material default in the performance of any obligation under this agreement (other than the Licensee's obligation to pay money), and

(i) the breach or default continues for a period of [CURE PERIOD] days after the other party delivers Notice to it reasonably detailing the breach or default,

(b) then the other party may terminate this agreement, with immediate effect, by giving Notice to the first party.

31.4. Termination upon Insolvency Event. This agreement will terminate immediately upon the occurrence of any of the following events:

(a) Insolvency. The Licensee admits in writing that it is insolvent or unable to pay its debts, or fails generally to pay its debts as they become due.

(b) Bankruptcy. The Licensee files a voluntary petition, or one or more of its creditors file a petition, seeking its rehabilitation, liquidation, or reorganization under any law relating to bankruptcy, insolvency, or other relief of debtors and the petition is not removed within [90] days of filing.

(c) Receivership. A receiver or other custodian is appointed to take possession of substantially all of the Licensee's assets.

(d) Dissolution. The Licensee takes any action toward the dissolution or winding up of its affairs or the cessation or suspension of its activities.

(e) Liquidation. A court of competent jurisdiction enters a decree or order directing the winding up or liquidation of the Licensee or of all or substantially all of its assets.

(f) General Assignment. The Licensee makes a general assignment for the benefit of its creditors.

(g) Attachment. Any attachment, execution, or other judicial seizure is levied against all or substantially all of the Licensee's assets.

32.  Effect of Termination. Upon the termination of this agreement, the Licensee shall

32.1. immediately cease to use the Licensed Marks, the Promotional Materials, the Confidential Information, and any other property belonging to, or received from, the Licensor that is in the Licensee's control,

32.2. return to the Licensor, or at the Licensor's request destroy, all copies of all information relating to the Licensed Marks, the Promotional Materials, the Confidential Information, and any other property belonging to, or received from, the Licensor that is under the Licensee's direct or indirect control, and

32.3. promptly pay to the Licensor all fees that are then due.

33. Definitions. In addition to the terms defined at the top of the first page, the following definitions apply:

33.1. "Confidential Information" is defined in section 20.6 (Definition of "Confidential Information").

33.2. "Infringement" is defined in section 8.2 (Definition of "Infringement").

33.3. "Law" means 

(a) any law (including the common law), statute, by-law, rule, regulation, order, ordinance, treaty, decree, judgment, and

(b) any official directive, protocol, code, guideline, notice, approval, order, policy, or other requirement of any Governmental Authority having the force of law.

33.4. "Licensed Marks" is defined in section 1 (Grant of License).

33.5. "Licensed Products and Services" in section 3 (Use of Marks).

33.6. "Notice" means any notice, request, direction, or other document that a party can or must make or give under this agreement.

33.7. "Person" includes

(a) any corporation, company, limited liability company, partnership, Governmental Authority, joint venture, fund, trust, association, syndicate, organization, or other entity or group of persons, whether incorporated or not, and

(b) any individual.

33.8. "Promotional Materials" is defined in section 5 (Notice on Marks).

33.9. "Term" is defined in section 12.1 (Initial Term).

33.10. "Territory" is defined in section 1.1 (Grant to Licensor).

33.11. "Trademark Use Policy" is defined in section 7 (Trademark Use Policy).

34. General

34.1. Entire Agreement. This agreement contains all the terms agreed to by the parties relating to its subject matter. It replaces all previous discussions, understandings, and agreements.

34.2. Further Assurances. Each party, upon receipt of Notice from the other party, shall sign (or cause to be signed) all further documents, do (or cause to be done) all further acts, and provide all assurances as may reasonably be necessary or desirable to give effect to the terms of this agreement.

34.3. Amendment. This agreement may only be amended by a written document signed by both parties.

34.4. Assignment. The Licensee may not assign this agreement or any of its rights or obligations under this agreement without the Licensor's prior written consent. The Licensor may assign this agreement or any of its rights or obligations under this agreement, effective upon Notice to the Licensee.

34.5. No Partnership. Nothing contained in this agreement creates a partnership, joint venture, principal-and-agent, or any similar relationship between the parties.

34.6. Third Party Beneficiaries. The Indemnification terms of this agreement confer rights and remedies upon the parties' directors, officers, employees, shareholders, partners, agents or affiliates. No Person other than the parties themselves and those beneficiaries has any rights or remedies under this agreement.

34.7. Notices

(a) Form of Notice. All notices and other communications between the parties must be in writing.

(b) Method of Notice. Notices must be given by (i) personal delivery, (ii) a nationally-recognized, next-day courier service, (iii) first-class registered or certified mail, postage prepaid[, (iv) fax][ or (v) electronic mail] to the party's address specified in this agreement, or to the address that a party has notified to be that party's address for the purposes of this section.

(c) Receipt of Notice. A notice given in accordance with this agreement will be effective upon receipt by the party to which it is given or, if mailed, upon the earlier of receipt and the fifth day following mailing.

34.8. Remedies Cumulative. Except as provided in section 28.4 (Exclusive Remedies), the rights and remedies available to a party under this agreement are cumulative and in addition to, not exclusive of or in substitution for, any rights or remedies otherwise available to that party.

34.9. Survival. Sections 20 (Confidentiality), 28 (Indemnification), and 31 (Effect of Termination) survive the termination of this agreement.

34.10. Severability. If any part of this agreement is declared unenforceable or invalid, the remainder will continue to be valid and enforceable.

34.11. Waiver. A party's failure or neglect to enforce any of rights under this agreement will not be deemed to be a waiver of that party's rights.

34.12. Equitable Relief. The Licensee acknowledges that its breach or threatened breach of any its obligations under section 20 (Confidentiality) would not be susceptible to adequate relief by way of monetary damages only. Accordingly, the Licensor may, in that case, apply to court for any applicable equitable remedies (including injunctive relief), without the need to post any security.

34.13. Governing Law. This agreement will be governed by and construed in accordance with the laws of the State of [GOVERNING LAW STATE], without regard to its conflict of laws rules.

34.14. Waiver of Jury Trial. Each party irrevocably waives its rights to trial by jury in any action or proceeding arising out of or relating to this agreement or the transactions relating to its subject matter.

34.15. Attorney Fees. If either party brings an action to enforce any of its rights under this agreement, the prevailing party will be entitled to recover its costs and expenses (including reasonable attorneys' fees) incurred in connection with the action and any appeal.

34.16. Interpretation

(a) Currency. Unless otherwise specified, all dollar amounts expressed in this agreement refer to American currency.

(b) Statutes, etc. Unless specified otherwise, any reference in this agreement to a statute includes the rules and policies made under that statute and any provision that amends, supplements, supersedes, or replaces that statute or those rules or policies.

(c) Number and Gender. Unless the context requires otherwise, words importing the singular number include the plural and vice versa; words importing gender include all genders.

(d) Headings. The headings used in this agreement and its division into sections, schedules, and other subdivisions do not affect its interpretation.

(e) Internal References. References in this agreement to sections and other subdivisions are to those parts of this agreement.

(f) Construction of Terms. The parties have each participated in settling the terms of this agreement. Any rule of legal interpretation to the effect that any ambiguity is to be resolved against the drafting party will not apply in interpreting this agreement.

34.17. Schedules. The following are attached to and form part of this agreement:

(a) Schedule A: List of Licensed Marks

(b) Schedule B; Licensed Products and Services

(c) Schedule C: Trademark Use Policy

34.18. Counterparts. This agreement may be signed in any number of counterparts, each of which is an original and all of which taken together form one single document.

34.19. Effectiveness of Agreement. This agreement is effective as of the Effective Date, even if any signatures are made after that date.

This agreement has been signed by the parties.















A Trademark License Agreement is a contract between a trademark owner, the licensor, and another, the licensee, by which the licensee gets the right to use licensor’s trademark in ways that, without the license, would infringe the trademark owner’s rights—that is, the licensor’s right to exclusive use of the trademark in commerce. Lanham Act §32(1), 15 U.S.C. § 1114(1) (2006). A license is not a sale, and the trademark owner retains ownership over the mark. Gilson on Trademarks and Unfair Competition, § 6.01(1). A trademark owner can license the use of its mark to manufacturers, expanding their brand into new markets to maximize the financial benefits of that come from a strong brand with consumer goodwill.

For example, a movie studio could license with a cereal company to make a line of cereal with the characters and trademarks of a popular TV series, and also license with a clothing manufacturer to make a line of t-shirts bearing the studio’s famous trademarks. Neither the cereal company or clothing manufacturer owns the trademark; the movie studio still owns the make, but the cereal company and clothing manufacturer have the limited right to put the studio’s mark on certain goods and services.

The Trademark License Agreement governs the relationship between the licensor and licensee: it establishes the scope of the rights granted to the licensee, including what goods and services the licensee can use the mark with, the fees due to the Licensor in return, and the term and the conditions for terminating the relationship. A Trademark License Agreement is governed by contract and trademark law, and by State, Federal, and perhaps even international law.

A trademark license is not always necessary to use another’s trademark. A trademark owner can only stop others from using its trademark in commerce. There are non-trademark uses—for example, descriptive use, nominative use, and fair use—which are not protected by trademark law; anyone can use a trademark in these ways even without a license.

Key things to consider when drafting a Trademark License Agreement include:

  • Definite Term: Courts are split as to how to deal with indefinite, or perpetual, licenses. Some say they can be terminated at will by either party, while others hold that a perpetual license amounts to an outright assignment of all rights to the licensee. Neither or these options are appealing, and easily avoided by including a definite term.
  • Attachments: Use Attachments to define the trademarks, licensed goods, and royalty schemes. This helps keep the Agreement itself as clean and concise as possible, while still being explicit regarding what is being licensed.
  • Quality Control: the Trademark License Agreement should establish both (1) a clear standard of quality for the licensee’s goods, consistent with the rest of the goods bearing the licensor’s mark, and (2) the licensor’s right to inspect or otherwise monitor the licensee’s facilities and products to ensure this standard is met. Failure to maintain quality control can result in the licensor losing their trademark. See Quality Control Clause for more information.
  • Trademark Use Policy: Similar to ensuring quality control, the licensor should have a robust Trademark Use Policy, and incorporate it into the Agreement by reference. The Trademark Use Policy proscribes the way in which the licensee can use licensor’s mark on the licensed goods, and is important for maintaining the strength of the licensor’s brand, and the distinctiveness of the licensor’s trademarks in the eyes of the consuming public.