Trademarks: Maintenance, Licensing, Assignment, Negotiation

You have selected a trademark and successfully registered it with the USPTO.  This registration will help you in foreign countries.

Congratulations, but you are not finished yet. Using your trademark profitably and without opposition requires that you conduct a number of activities.  You must keep in mind the following important aspects of Trademarks:                      

• Maintenance
• Licensing
• Assignment
• Negotiation

All of them are best implemented through the agency of a trademark attorney.

Trademark Maintenance

A trademark is not granted in perpetuity.  However, it may be used continuously as long as it is renewed according to the rules of the jurisdiction.  This will involve the submission of documents, statements of continuous use and payment of associated fees at specific times.  Failure to do so may cause the automatic expiration of your trademark or leave it open to challenge by others.

Another form of maintenance is an organized search of trademark use at regular intervals to preclude unauthorized use of your trademark.  If you do not challenge such use in a timely way, you may lose the right to do so in some jurisdictions.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.

Trademark Licensing

You can leverage the value of your trademark by licensing other companies to use your mark on their products.  For this you will be paid a royalty, in the form of a percentage of sales, or a flat fee.  As a manufacturer, you stand to gain in brand recognition by associating your product with a well know trademark.

Trademark licensing, while it can be the sought-after “win’win” must be conducted with various perils in mind:

• Licensee must maintain a level of quality in production, advertising, sales and distribution that matches the standard of the brand he is using.  Otherwise the value of the fee paid may be offset by damage to the reputation of the brand.
• The brand owner – licensor – should have the right to hear consumer response or complaints to the product and evaluate the effect on the brand.
• Licensee should be required to display the trademark designation, whether R or TM.
• Licensor must insist on the right to oversee, to some extent, the use of the mark.  If not, in some jurisdictions, it may be held to have been abandoned.
• The licensor will want protection against product liability.

Qualified legal advice and preparation of the license agreement is recommended.

Trademark Assignment

As the name implies, trademark assignment is the transfer of ownership and property rights that accompany a trademark.  If you are the purchaser, you will want to know that the mark has the value you associate with it.  You will also want to know that it has been properly registered and not subject to opposition.

Trademark Negotiation

Negotiation, by definition, involves two parties with at least partially divergent interests.  In the area of trademarks these could include:

• Disputes between two users of a similar trademark
• Potential license arrangement
• License arrangement that is not working well
• Drafting or interpreting a contract.

Of all the activities listed above, this one may need an attorney the most.  An understanding of the relative strength of your legal position is critical to choosing your trademark negotiating stance.

In summary, while a trademark can be exceedingly valuable, it can also be easily mishandled.  A trained trademark attorney should be consulted in the ongoing areas of trademark maintenance, licensing, assignment, trademark litigation and negotiation.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.