by Traverse Legal, reviewed by Enrico Schaefer - March 27, 2012 - l. Trademark Licensing
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is attorney Brian Hall with Traverse Legal, PLC, a law firm representing licensors and licensees in trademark matters throughout the United States. Today, I will be answering the question of how to get a trademark license.
To start, a trademark license is when a trademark owner provides the right to use their trademark in return for a royalty or a payment. Oftentimes, trademark licensors are willing to do so because they want to increase the amount of money they generate based upon their trademark. On the flip side, licensees are the ones seeking to use the third party’s trademark who needs a license in order to be able to use the mark without risking a trademark infringement lawsuit or other liability. Moreover, it might make whatever that licensee’s product or service more likely to sell because of the use of the third party trademark.
So, the question becomes, “how do you go about getting a trademark license? The first thing that you need to do is determine who is the trademark owner. Put another way, who is the actual entity that you need to get in contact with in order to start the conversation and negotiate the actual license. Fortunately, today, the internet makes it a lot easier than it used to be to find out who the trademark owner is. However, one thing that I should caution about is oftentimes there are companies that represent trademark owners, and you have to go through that company as opposed to directly to the trademark owner. This is especially the case in collegiate licensing matters, as there is a couple major companies that represent most of the universities in handling all of their licensing issues.
Once you’ve identified who the actual trademark owner is, you need to come up with a strategy, and this is really where a trademark license attorney can help you. You may determine that it’s best for you to reach out directly or you may go through your trademark attorney in working towards that license. Regardless of which strategy you settle upon, it is critical that you have, indeed, a strategy because, ultimately, if your product or your service is dependent upon achieving a trademark license, your inability to get that trademark license will be detrimental to your business.
Finally, you need to secure a written license agreement, and there are various terms that are critical in any trademark license agreement. A trademark attorney can help you with those. However, you should know, that the terms of that license agreement should, at a minimum, include how much the royalty payment is going to be, and whether that’s going to be a lump sum up front with a continued percentage based upon sales. It should also specify how long a time period the actual license agreement will last. It should also specify whether or not this is an exclusive or nonexclusive license. Put another way, are you the only one that’s going to have rights to use the particular trademark in connection with your good or service or are there others that are going to be allowed to do the same thing. This particular language, whether it’s exclusive or nonexclusive, will also dictate how much the license is probably going to cost you.
Finally, there are various other terms that should be included as part of any trademark license agreement and, once again, a register and license trademark attorney should be able to guide you through that process.
So, ultimately, when you’re looking to acquire a trademark license, there’s much work to be done in investigation and strategy.
Once again, this has been Brian Hall answering your question, “How to get a trademark license.”
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
