Overview

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:

Guidance
A Guidance has not been defined yet.
1. Overview

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:

2. Discussion A Guidance has not been defined yet.