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Trademark Lawyer Blog, Part 4 |  License Agreement Checklist

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Trademark Licensing Agreement Checklist

     All Trademark License Agreements are ‘NOT CREATED EQUAL!"  There are important factors that influence the content necessary to create a comprehensive Trademark Licensing Agreement.

Trademark Licensing Agreement Issues.

To the extent possible, make sure the proposed Trademark Licensor/Owner has the right to license the Trademark and the right to License the Trademark, without limitations (e.g. does the licensor own the Trademark and if not, does the Licensor have the right to sublicense the Trademark?; has the Trademark Owner/Licensor licensed rights to others?; If the Trademark Licensor does not own the rights, obtain copies of license agreements back to the owner).

1. All Trademark License Agreements should include the full legal names and physical address of each party.

2. The Trademark Licensing Agreement should contain an accurate, concise, description of the licensed property.

3. Address ownership issues related to derivatives or inventions created by the licensee resulting from the use of the licensed property.

4. Clearly describe the Trademark License being granted, including issues of exclusivity, right to sublicense rights, etc.

5. Describe limitations, so as to avoid having the license fall within the scope of franchise law, which is highly regulated, calling for registration of the opportunity and other steps to become compliant.

6. Determine the Territory for use and marketing of the Trademark.

7. Include limitations or exclusions  on use of the Licensed Trademark by BOTH Licensor and Licensee. 

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8 Determine what is required in event of termination.

9. Include Confidentiality, non-disclosure provisions with special language for trade secret protection.

10. Include the representations and warranties of the parties that each party is relying upon in entering the Agreement (e.g. that the licensor actually has the right to license to you without limitations, etc.).

11. Determine the governing law.

12. Include other important issues that are unique to your particular situation.

 

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Related Info and Checklists:

More on Trademark

Licensing Agreement Checklist

Difference between Trademark, Copyrights and Patents

Non-Compete Agreement

Distributor Agreement

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